The USPTO issued an alert earlier this week reporting that as of June 17, 2021, U.S. trademark application filings had increased 63% over the prior year, translating into about 211,000 more applications. And, while this sounds like great news for the economy, it is not necessarily good news for trademark applicants. The number of applications waiting to be examined this year has doubled, resulting in longer wait times for processing applications at all stages of prosecution. Examination of post registration filings has also been delayed. The USPTO maintains a dashboard of current processing times here.

The USPTO explains that the surge in filings appears to be from both foreign and domestic filers, and believes it to be in part attributable to a change in consumer behavior and purchasing patterns necessitated by the pandemic.

While the USPTO is taking steps to address the backlog – including hiring more examining attorneys and staff, brand owners need to be mindful of the increased time to examination when making branding decisions. For example, the time it takes for the USPTO to make its initial registrability assessment can be critical to decision making for products such as pharmaceutical names, where it is common industry practice to apply for several potential marks at the same time. It can also impact foreign filing decisions, which can be based in part on U.S. examination results. The prosecution timeline can also have serious business consequences when it comes to online or Customs enforcement, where an official registration certificate is often needed to stop counterfeiters.

Brands looking to manage the risk posed by these extended timelines can help manage the uncertainty by building more time into the branding life cycle – selecting and filing for new marks 6-9 months earlier than in previous years. For those anticipating issues with counterfeits and knockoffs, consider other forms of IP protection, such as copyrights, to protect unique designs. And, for those looking to clear marks, it is a good reminder to look closely at whether “live” registrations comply with maintenance requirements. Given the expected delays in examination for maintenance filings, it would follow that the population of “zombie” registrations (marks that are technically dead, but appear as “live” on the register) will similarly grow.

This article appeared in the June 2021 issue of MarkIt to Market®. To view our past issues, as well as other firm newsletters, please click here.