Since Fall 2020, the U.S. Patent and Trademark Office (“USPTO”) has experienced an unprecedented surge in trademark filings from both U.S. and foreign applicants. The USPTO released a report in June 2021 stating that trademark filings at the USPTO increased roughly 63% over 2020, which translates to about 211,000 more applications. See:Director’s Blog.
This surge has DOUBLED the number of trademark applications waiting for initial processing. As a result, timelines have drastically increased for initial examination of responses to office actions, and examination of declarations of use and renewal applications. In July 2021, the USPTO reported that first actions on new applications were taking 6 months to issue, in contrast with the USPTO’s usual target of 2.5 to 4.5 months.
What is causing the delay?
The delays at the USPTO can at least partially be attributed to the USPTO’s increase in fees in January 2021, the reliance on e-commerce due to COVID, and a surge in filings from Chinese applicants.
The USPTO’s announcement of a January 2, 2021, fee increase led to a surge in trademark application filings in late 2020. In December 2020 alone, the USPTO received 92,608 trademark applications – representing an increase of 172% over applications filed in December 2019.
In addition, due to COVID, shoppers around the world chose to make an increasing amount of purchases online rather than in-person in 2020. Eager to take advantage of benefits offered by the Amazon Brand Registry to owners of registered marks, applicants (many from China) rushed to file new U.S. trademark applications. See: Amazon Brand Registry. Of the 72,869 trademarks filed in September 2020, more than 31,517 were filed by Chinese applicants, in contrast to fewer than 2,854 Chinese applications filed in September 2019.
Consequences of the backlog at the USPTO
(1): Madrid Applications
If a foreign application is filed within six months of the filing date of the U.S. application, many foreign countries will allow the applicant to claim its U.S. filing date for priority purposes. Previously, applications were examined well within the six-month priority filing deadline. As such, applicants could file Madrid applications and rely upon the fact that the U.S. application was in a position to proceed to publication. This is no longer the case.
As a result, applicants must now either take a risk that the US application will be approved for publication or wait to file a Madrid application until the U.S. application is examined, and thus forfeit the priority filing date.
(2): Trademark Clearance
Trademark clearance searches are more important than ever due to delays in examination. If you conduct a comprehensive clearance search, you will have a much better idea of your chances to successfully register and use the trademark in commerce.
(3): Reduced Costs for Intent to Use Applications
For Intent-to-Use applicants, the longer initial pendency provides more time to commence use before the notice of allowance issues. Accordingly, Applicants can potentially avoid the additional fees related to filing multiple extensions of time.
Nath, Goldberg & Meyer is available to assist in protecting your valuable trademark rights. Please do not hesitate to contact us should you have any questions regarding consequences of the surge in trademark filings at the USPTO on your applications and registrations.