Tips for Navigating the Current Landscape at the USPTO

If you recently filed a trademark application with the U.S. Patent and Trademark Office, you may have noticed that the average time to first action (initial examination) is about six months from the application’s filing date – double that compared to applications filed in late 2019 and early 2020.1 This increase in time to first action is directly tied to an increase in trademark application filings. For example, in December 2020 alone, the USPTO received 92,608 trademark applications, an increase of 172% over December 2019.2 This surge in filings comes from both foreign and domestic applicants. It is believed to be due to (1) a pandemic-fueled boom in ecommerce, (2) online marketplace tools designed to protect brands, which require a U.S. trademark application or registration, and (3) foreign governments offering financial incentives and subsidies to its citizens and businesses to file new applications with the USPTO. Many of these foreign-subsidized applications appear to be based on fraudulent claims of use, or filed without any intention to use the mark in commerce, and can stand in the way of legitimate, later-filed applications.

So what can you do to navigate your way more quickly and effectively through the USPTO? There are several options for shortening the pendency of a trademark application.

• Petition to Make Special – If you have an immediate need for a trademark registration, e.g., to sue an infringer, or to record your rights with Customs to have confirmed counterfeit goods seized, consider filing a Petition to Make Special to jump the line of applications currently awaiting examination. A Petition to Make Special cuts the time to initial examination from several months to several weeks, and requires payment of a $250.00 fee and a statement of facts showing why special action is justified. ​

• File a TEAS Plus application – A TEAS Plus application is designed to be easier for both the applicant and the USPTO, and comes with a reduced filing fee. While TEAS Plus applications are not examined before TEAS Standard applications, they tend to register about two months sooner, because the applicant is required to identify the goods and services of the application from a manual of pre-approved goods and services, reducing the possibility of an Office Action objecting to the classification or definiteness of the goods and services. If your goods and services are common or standard in commercial terms, this may be a good filing option for you.

• Avoid the kitchen sink approach – If you need a registration to protect your mark for only a “genus” of goods, avoid the temptation to protect the mark for a number of “species” within the genus, which may delay your ability to file a use-based application, or a Statement of Use, because both require specimens and attestations to actual use for all. E.g., instead of identifying the goods as baseball caps and bucket hats, opt for the broader, yet still USPTO-approved identification of “ headwear.” In addition to decreasing the time to registration, this may improve your ability to show use of the mark years later for a Declaration of Use filing, which is required to maintain your federally-registered rights.

• Use versus Intent To Use – While it may be less expensive to combine the goods and services with which a mark is used or intended for use in a single application, applications with combined use and intent to use claims tend to have a longer pendency. Consider, instead, filing the use-based goods and services in one application, and the intent to use-based goods and services in another, to permit the use-based application to proceed to registration immediately after the Opposition period. This way, any delay in bringing the intent to use-based goods and services to market, or in the processing of a Notice of Allowance or Statement of Use for such goods and services at the USPTO, will not impact registration of the separate use-based application.

If registration of your pending application has been refused based on what appears to be a fraudulently filed application or registration, consider (1) filing a Letter of Protest in applications based on suspicious-looking specimens or other fraudulent claims, or (2) taking advantage of existing Opposition and Cancellation procedures, as well as the soon-to-be-available Reexamination and Expungement procedures under the Trademark Modernization Act (TMA). We’ll report more on the TMA after the rules are promulgated. But, suffice it to say for now that the Reexamination and Expungement procedures were specifically enacted to give brand owners new tools to rid the federal register of unused registered marks, clearing the way for brand owners to register their own.

[1] www.uspto.gov/dashboard/trademarks/application-timeline.html

[2] www.uspto.gov/subscription-center/2021/what-huge-surge-trademark-filings-means-applicants