How to Mitigate Trademark Processing Delays at the USPTO

For trademark practitioners, we've all see processing time creep from three months, to six, and now to sometimes eight months. This is due to two events -- first USPTO staffing issues resulting from the USPTO's COVID-induced office closure, and then a 60% increase in filing volume. This means that from the day of filing, an applicant can expect to wait eight months before an examiner puts eyeballs on the application. Delays also are occurring in reviewing responses to Office Actions

This is super frustrating for clients and lawyers, and requires trademark attorneys to incorporate some new strategies into the filing process.

I'm making these recommendations to clients:

1. Be extra diligent in the the search process. Sometimes a client was happy to wait three months before committing to a new mark to see how the USPTO was going to respond to the application. It's usually not feasible to wait eight months. We are doing more full searches, and taking more cautious approaches sometimes to avoid any unpleasant surprises almost a year down the road, when we really can't afford to switch to a new mark.

2. Don't forget international strategy.  Prior to the COVID delays, the USPTO would review the application before the six-month priority filing deadline. Now, the six-month deadline comes before the U.S. application is reviewed. Clients now have to commit to international strategy without knowing if the U.S. mark will be approved. This again means that aggressive clearance in the U.S. is really important.

3. Consider examiner's amendments. If anything can be resolved over the phone, do it. It will get processed immediately and avoid getting stuck in another long queue of matters the examiner has to resolve.

4. Consider resolving inevitable issues at the application stage. It may make sense to go ahead and disclaim certain words, or to insist that the client use one of the USPTO's acceptable IDs from the manual to avoid any avoidable office actions.

5. Make special. It's rare, but sometimes an application may qualify if extenuating circumstances exist, such as infringement of the mark. If the petition is granted, the application will be processed about two and half months faster.