The following is an edited transcript of my video, Why Are US Trademark Applications Taking Longer Than Ever?
This year, one of the questions I’ve been fielding more often than ever before is “When? When can I expect my application to get completed? When can I expect it to get reviewed? When? When? When?”
And one of my favorite, favorite videos and items that I’ve worked on in the past is called The Long and Winding Road of Trademark Registration for a couple of reasons. It’s a great visual that my friend Chad Barr put together. It’s a spin on the Beatles, which, I love all different types of music and hundreds of bands and artists, but none of them top the Beatles for me. And it just perfectly expresses the fact that a trademark application, in good times, takes about a year and goes through many, many steps and obstacles along the way. And now, in 2021, it takes even longer than ever before. And I want to explain why and what that means for trademark filers.
The why is because there’s been a tremendous influx in new application filings. Filings have grown every year for the last decade by 3, 4, 5%. And in the last two years, they’ve grown by a multiple of that. So it’s been explosive growth combined with the pandemic and the USPTO initially having concerns that there would be significant recession when the pandemic struck, and so they cut back on some things investment-wise for a few months. The result is a giant backlog – the backlog is larger than I’ve ever seen before in the last 25 years.
Before the last year or so, it used to take a little bit over three months to get a review from an examiner once an application was filed. As of mid-2021, we’re seeing that take six or seven months, and given the backlog and given the fact that the explosive filing growth really hasn’t slowed down, I’m actually predicting that the backlog will grow further before it improves. Hopefully, it won’t grow that much larger before it improves because the USPTO has been aware of this and trying to work on it for several months now. But it’s quite likely that the average application is going to take seven months or more to get reviewed for the rest of 2021 and perhaps beyond.
These backlogs are now not only affecting those new applications, but they’re also affecting what happens when you file a response or when you file a renewal or when you file evidence of use. All of these things are seeing delays. In fact, even fairly routine administrative things at the USPTO are seeing delays because of the tremendous volume having a ripple effect.
The most important thing is that an initial application filing date is always of tremendous significance, and that’s not affected. It’s always better to file right away – get your filing date. And in many respects, whether it takes six months or a year or two years to get a registration, doesn’t matter so much. My friends in Canada will tell you that even taking a year or a year and a half to get a registration – they would give anything for that, because they’re currently looking at about two and a half to three years on average to get a registration in Canada. So it’s all a matter of perspective, so to speak.
But there are some things you can do to help mitigate the effects of this backlog and delays.
- As always, you want to search before filing. And as always, when you’re searching, you’re looking for possible conflicts or obstacles and crafting the application to try to get around it.
- File applications as soon as possible. Don’t wait. The longer you wait, the further back in line you’re going to be.
- File renewals as soon as possible. Just today, I answered an email from someone, “Hey, if we get a year to file the renewal, can’t they just wait until the end of that period?” And the answer is you can, but if there’s a problem with the renewal and if more information or more evidence is required, you now run into problems because you get beyond the renewal period – the original renewal period – and that can lead to additional expenses and government fees. So you want to file the renewals early so that they get reviewed while it’s still eligible to renew.
- Use software to monitor the status. I’ve got a free product called softmware.com where you can check out free monitoring tools. There are other tools available. If you use software, that way you’ll know exactly when something happens and you can monitor the status day by day, event by event, at the Patent and Trademark Office.
- Finally, of course, on this now very, very long and winding road, it’s even more important to have an expert help navigate the way to get over or around those obstacles, through those tunnels, and to the finish line at the end of the road.
There’s one other thing that I didn’t mention in terms of this filing increase and the backlog. And I was discussing with a colleague of mine recently and we were talking about the large increase that has come from China. That’s not the only reason for the increase, but a very, very sizable amount of the increase comes from filings originating from China. And there has been speculation, or even more than speculation that some of it is because the government in China has been providing subsidies to applicants to file in the U.S. And my friend brought up a great point that this could in fact be a form of economic terrorism, that they are intentionally clogging our system to cause problems, to cause problems for the government, to cause problems for business owners, to cause problems for brands.
If that is the case, that’s a real, tremendous concern and a perhaps new and unique way of international conflict and something that I hope the USPTO is paying a lot of attention to. I know that they’re working on upgrading their security and login credentials and things like that, but the broader questions about why this is happening and how it might be mitigated are very important, serious questions.
To come back to the opening here, though, the long and winding road is even longer and more windy right now due to this backlog.