Rise in Trademark Pendency Causes New Challenges for Practitioners

US trademark practitioners in 2022 saw some tremendous changes in matters of timing related to the prosecution of trademark applications.

One was increased pendency for first review and issuance of an initial US Patent and Trademark Office action.

The change is impactful because it alters the USPTO’s long-standing time frames for review and issuance of initial USPTO actions. The average initial review time now extends beyond the six-month priority foreign filing time frame.

Impact on Branding/Re-Branding

Previously, when launching a new brand or re-brand, it was helpful for applicants to know—when crafting their marketing strategy—that an initial response to an application would be received in three to five months.

The typical time frame for the branding/rebranding process is 12-18 months. Trademark application approval for publication is just one of many timelines involved in the process. With the pendency averages increasing to 8.4 months, rebranding timing calculations need to be reexamined.

Foreign Filings

With respect to the six-month foreign priority filing deadline under the Paris Convention, an applicant normally received an initial USPTO action during the three-to-five-month average pendency rate.

This allowed the applicant to assess whether the application would mature to issuance of registration for the subject mark before the priority foreign filing deadline would expire. This is no longer the case.

The increased initial pendency rate means the decision to file a foreign application with a claim of priority is often made without knowledge of the likelihood of successful registration of the mark in the US.

The decision to file should now balance additional costs for each foreign filing—both legal fees and Trademark Office filing fees—against the risk the US application may not mature to registration and the loss of priority date if the filing is not made.

Communications From Practitioners

The increase in initial pendency rates may come as a surprise with the historically faster turnaround times at the USPTO. For in-house counsel or outside counsel, communication about the increased rates can be an effective strategy for managing applicant/client expectations and alerting business decision-makers about the new circumstances.

Disclosing and discussing that there may be no updates on a newly filed application for at least eight to nine months may help focus further discussions around branding and re-branding timelines and priority foreign filing considerations.

In addition, with the requirement for representation by a licensed US attorney for non-US domiciled applicants, a US practitioner may want to inform foreign counsel with whom they work about increased pendency rates.

Many foreign jurisdictions trademark offices have pendency rates longer than the increased USPTO rates, but foreign counsel might not know about the change at the USPTO. When managing and coordinating international portfolios, timing considerations in branding and re-branding marketing campaigns only become more complex, as well as foreign priority filing considerations.

Therefore, it’s important to update foreign counsel and clients on the pendency increase.

Petition to Make Special

Communication is critical for any attorney-client relationship. But questions arise, like what can be done considering the pendency increase.

If the circumstances warrant, the answer may be to file a Petition to Make Special to the Director of the USPTO. An applicant may file such a petition seeking advancement of the initial examination of an application out of its regular order in processing based on filing date.

However, there are specific timing and fee requirements for filing these petitions. Also, these petitions are only granted based on showing of special circumstances.

Special circumstances can include several things, including:

• Pending litigation involving the mark
• Threatened litigation involving the mark
• Government regulations requiring trademark registration for government approval, which may include the need to facilitate foreign registration in first-to-file jurisdictions
• Registration with the US Customs and Border Protection to stop counterfeit goods
• Filing under the Uniform Domain-Name Dispute-Resolution Policy

If an applicant’s factual circumstances would support such a showing, a successful petition granting the advance in initial examination would dramatically reduce the pendency time for initial examination. This will have the greatest reduction in time if the petition was filed as soon as possible after the new application was filed and a serial number issued.

With the potential reduction in pendency time to initial examination, there may be great benefit to discussing whether the grounds for filing a petition exist. To maximize the possible benefits, this conversation should happen before filing a new application.

The increased pendency to initial examination appears to be the new normal. For practitioners in this arena, being knowledgeable of the current pendency times, learning about the option for a Petition to Make Special, and communicating to the potential applicant are vital for adjusting to these changed circumstances.

(The headline and summary were changed to reflect that pendency rates have been increasing over the past year and presenting challenges for practitioners.)

This article does not necessarily reflect the opinion of The Bureau of National Affairs, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.

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Candace Lynn Bell is a member with Eckert Seamans Cherin & Mellott. She has more than 30 years of experience working with clients to develop and manage trademark and domain name portfolios nationally and internationally.