Trademark Application Pendency – Jan. 2018

The USPTO’s trademark dashboard has a high-level summary of the status of its overall performance on examinations. The Office aims for an average of under 12 months from filing to abandonment/allowance/registration, and less than 3.5 months from filing to the first examination action. The latter has crept up from a low of about 2.5 months until average first examination in Q3 2017 to 3.5 months until average first examination in Q4 2018 and Q1 2019. The “inventory” of applications awaiting examination also has risen over that same time frame, although is starting to drop again in January 2019.

These figures just look at the averages, though – this blog post will focus on outliers: those applications that are really slow to get their first review from the Office.

Filing Date “New” status “Examined” status Total
2017 22  
Jan.-Jun. 2018 2,429  
July 2018 775 35,566 38,341
Aug. 2018 550 38,600 39,150
Sept. 2018 683 34,386 35,069
Oct. 2018 18,414 18,414 36,828
Nov. 2018 30,028 2,907 32,935
Dec. 2018 29,836 982 30,818
Jan. 2019 (partial) 25,204 20 (largely express abandonments) 27,224

The 2017 filings were especially interesting – it looks like a lot of these were rather intentionally avoided because they could be hairy to prosecute. One is a color scheme related to hospital sanitary tracking, several raise 2(a) issues both of the garden variety (WITCH AS FUCK and MANIFEST THAT SHIT and #ALLGRATEFULANDSHIT and a couple more) and the truly unpleasant (a swastika). Some had no obvious reason for basically getting ignored, like DIOR GENESE (which seems to have been picked up recently, and just got its XSearch review) and DICSSIN (which also got its search summary). This seems to be a concerted effort from the USPTO – it matches scuttlebutt on the Oppendahl E-Trademarks listserv that some senior lawyers from the Petitions and Assistant Commissioners’ office have been loaned out internally to help deal with deep backlog.

Among the first-half-of-2018 stragglers, there is a similar mix – lots that are slow to get examined for no immediately obvious reason, and some where it feel like there is more intent from the Office. CBD and hemp applications, which accounted for nearly 1/5th of the not-yet-examined applications from early 2018. The Office is also examining plenty of CBD/hemp applications, although slightly fewer applications than have not been examined – definitely weird for 6+ month old applications. This does not feel like it is an informal Office policy; it’s at least as likely that, given some discretion, Examiners are leaning towards dealing with applications that are likely to yield simpler examinations and quicker pendency times. There does not appear to be any other easy to identify pattern in “delayed examinations” based on mark or goods, nor any pattern about counsel of record.

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