Impact of COVID delays on examination of trademark applications

February 7, 2022 - Prior to the COVID-19 pandemic, the U.S. Patent and Trademark Office typically examined and took first action on new trademark applications within approximately three months of their filing. These substantive initial examinations are important to any trademark applicant because they form a primary basis for the Trademark Office's opinion on registrability. In particular, for example, the Trademark Office's examining attorneys search the availability of marks and raise citations to potentially conflicting prior filings in office actions. Initial examinations also assess the acceptability of the identifications of goods and services claimed in applications.

Like a number of other federal government offices, the Trademark Office went almost fully remote when COVID hit in March 2020. Now, the time it is taking the Trademark Office to conduct and report on these examinations is about 7.5 months. This creates a number of issues that trademark applicants and brand owners should consider as they prosecute and enforce their marks.

Once the most severe period of pandemic-induced lockdowns and business disruptions eased in late 2020 and early 2021, the U.S. Trademark Office faced what it describes as an extraordinary surge in applications. The immediate impact was a substantial increase in the time it took the Trademark Office to conduct its pre-examination processing of new applications, which ballooned to nearly three months, as compared to the office's target of 10 days.

The filing boom has now propagated through the application and post-registration processes at the Trademark Office, and it continues to cause significant processing delays. As the Trademark Office now notes, applicants currently are likely to experience longer than normal wait times in several key areas, including trademark filings appearing in the electronic records system, new applications being assigned to examining attorneys, applicants' responses to office actions being processed and acted upon, and the Trademark Office processing post-registration filings.

Practice considerations

Until these delays subside, trademark applicants, brand owners, and their counsel should take the current situation into consideration when approaching their filings and enforcement activity in the Trademark Office. To help adjust to the present delays, these groups may wish to keep the following practices in mind:

File early and give greater consideration to potentially conflicting marks: Applicants currently are unlikely to receive their first substantive feedback from the Trademark Office on a new application for well over half a year. This increases the likelihood that an applicant will have adopted and begun using — and thus may, at a practical level, be locked into — a mark for several months before the Trademark Office raises a potentially conflicting prior filing.

This means applicants should consider filing applications for intended marks as early in their development process as possible. Similarly, applicants may wish to give additional consideration to commissioning comprehensive clearance searching before filing for or adopting new marks, and giving relevant hits uncovered in such searches a wider berth than normal to reduce the likelihood of drawing citations to prior filings.

As ever, applicants adopting new marks should also consider potential contingencies for next steps they might take if a prior-filed mark ultimately is cited against their proposed mark (e.g., rebranding, making common law use, etc.), as this can inform the risk calculus associated with new filings.

Evaluate strategies for international filings: U.S.-based applicants may extend their U.S. trademark application filings to other jurisdictions by filing an international registration under the Madrid Protocol, provided the international filing is made within six months of an initial U.S. priority filing. This approach can be more cost-effective than filing directly in each foreign jurisdiction. If, however, the base U.S. filing for a subsequent international registration is rejected, the viability of downstream foreign filings can be jeopardized.

When the Trademark Office examined applications within three months, as it did before the pandemic, applicants could make decisions about international filings with the benefit of having the Trademark Office's initial examination in hand. Now that initial examinations routinely take longer than six months to occur, however, applicants should give meaningful consideration to whether to extend their rights abroad through international registrations or direct foreign filings, realizing that the Trademark Office may reject a U.S. priority filing after the deadline to make international filings.

Resolve issues directly with examiners: A related consequence of the Trademark Office's current processing delays is that the Trademark Office now takes far longer to act on formally filed responses to office actions, including on ministerial changes.

One way to avoid these delays is to resolve issues with applications directly with examining attorneys by examiner's amendments where possible. Instead of filing written responses to office actions, in appropriate instances, Applicants may correspond with examining attorneys by phone or email to request they enter certain amendments to applications to resolve identified issues and advance applications. These include amendments to descriptions of goods and services, accepting disclaimers, and changing mark descriptions. This approach was available before the current situation developed; however, it is particularly useful now to hasten an examiner's approval of an application.

Consider challenging new filings: Brand owners now have additional time to raise certain challenges to new applications. For example, owners of prior-filed applications and registrations may submit letters of protest to the Trademark Office's Office of the Deputy Commissioner for Trademark Examination Policy.

A letter of protest is a procedure whereby third parties may submit, for consideration and entry in the record of a trademark application, objective evidence bearing on the registrability of a mark. 37 C.F.R. § 2.149(a). Typically, this entails a senior mark owner flagging its prior rights as a proposed basis for the examining attorney to cite the protestor's applications and/or registrations against a junior filing.

If the Deputy Commissioner accepts the mark owner's letter of protest, the basis for the potential refusal (e.g., the mark owner's prior filings) will be sent to the examining attorney for consideration during examination. The letter of protest procedure applies only to pending applications and is intended to aid in examination without causing undue delay and without compromising the integrity and objectivity of the ex parte examination process. T.M.E.P. § 1715.

The Deputy Commissioner typically takes about two months to consider and act on a letter of protest, so the current increase in application pendency time allows mark owners additional time to consider and file letters of protest so these challenges may be included in an application file before examination occurs. Although examining attorneys are not required to issue office actions based on the Deputy Commissioner's referral of a letter of protest, examining attorneys tend to give them weight in their examinations and often include at least some of a protestor's asserted basis for refusal in an initial office action.

Conclusion

All stakeholders involved in the trademark application and registration process are best served by remaining attuned to prevailing trends in the Trademark Office's examination practices and procedures to maximize their likelihood of securing favorable outcomes.