June 2021
As you will see below, this month’s newsletter focuses on the continued growth in USPTO trademark application filings, and the resulting lengthening of the application process.

But first, I recently came across a great article about the new Margaritaville®-themed hotel from Jimmy Buffet opening in Manhattan’s Times Square. The article from Bloomberg talks about how the hotel fits into the trend of branding, and features this great quote: “the branding bacchanalia puts Buffett at the cutting edge of so-called experiential marketing” (emphasis added). Buffet has long been a branding guru, taking a music career and turning into a brand empire with alcohol, resorts, and much more; Buffet’s Margaritaville Enterprises owns more than 250 current registrations at the USPTO!
Why are Trademark Applications Taking Longer than Ever Before?
Explosive growth combined with the pandemic are two main reasons contributing to the trademark applications backlog. But what can you do to mitigate this? In this episode, Erik reveals several tips to help navigate the long and winding road that is the USPTO trademark application process.

Tips to mitigate the effects of record delays for USPTO trademark filers
The USPTO has received record numbers of filings in the last few months and the last few years. And the numbers continue to climb. This has led to record backlogs and delays. The delays are not only impacting new applications getting reviewed (what used to take approximately 3 months is currently taking 5-6 months) — but also responses, evidence of use filings, renewal filings, and much more. Essentially, everything the USPTO does and every step of the process for applicants is being impacted by the enormous ‘weight’ of the increased filings.

Much of this is out of the hands of trademark filers — and obtaining a filing date is still the most important part of the application process, and that remains unchanged.

However, these delays highlight several actions that applicants can take to help maximize the odds—and the speed—for navigating this very long and winding road at the USPTO:
  • Search before filing to assess strategies for reducing the odds of a substantive refusal.
  • File applications ASAP based on ‘intent to use’ if needed, to obtaining filing date and Serial Number, and to begin the process.
  • File renewals ASAP: don’t wait until the end of the renewal period as it may lead to increased costs if the renewal documents are not accepted.
  • Use software to automatically monitor the status of a USPTO filing (see, for example, sofTMware®).
  • Use an expert to help navigate the process; someone with experience can spot the trends and the flows based on handling a larger number of cases from a ten thousand foot view.
Date on trademark filing surge
USPTO trademark application filings in first 5 months of 2021 blew away prior filing records by 40%. Even without the influx of filings from China, the filing rates still show significant growth at record levels. As discussed above, this means delays in processing for applicants, but it is generally a good sign for the overall economy.
  • First 5 months of 2021: 290,644
  • First 5 months of 2020: 199,256
  • First 5 months of 2019: 208,681
  • First 5 months of 2018: 203,654
We are excited to to announce that we are hiring an Associate Attorney in our trademark firm! Details and application information here.
If there are any topics or issues you would like to see covered here, let us know!
This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.

© 2021 Erik M. Pelton & Associates, PLLC.