Category Archives: Pendency

2022 Year in Review – USPTO Performance and Trademark Application Refusals

With 2022 concluded, we’re taking a look back at how the USPTO performed in terms of its throughput, and examination trends in the types of refusals it has issued over time.

I. Trademark Office Examination — Volume and Throughput

Let’s look at sheer volume — how is the USPTO keeping up? Not well! Per the USPTO’s own data in the Trademarks Data Q1 2023 snapshot, first actions are taking in excess of 8.4 months and total pendency has exceeded 14.3 months.

We took a slightly different approach to see how the Office is coping — two approaches, in fact. Overall, application volume was down — in 2020 and 2021, applications exceeded 660,000; in 2022, those dropped a bit to just shy of 550,000. Filing rates remain above the 500,000 filings from 2019. A slowing economy and inflation probably contributed to the drop.

Despite this, the Office is slipping further and further behind. Rates for two indicators of “quick examination” both plummeted — applications that were (a) both filed and given an Office Action in the same calendar year and (b) both filed and published in the same calendar year. Very, very few applications were dealt with quickly in 2022.

II. Refusal Breakdown – What is Blocking Applications in 2022?

We also took a look at what sorts of issues applications were running into over the same 2019-2022 time frame. First, we examined the most common refusals: likelihood of confusion refusals, descriptiveness/disclaimer requests, description of goods and services changes, and specimen refusals. Each of those issues impact an average of 15%+ of applications examined each calendar year. Acquired distinctiveness-related refusals account for around 6% annually, and messed up the scale of either chart, so it’s been left off entirely.

All of the rest of refusals together are a comparative pittance. Some of these refusals are highly clustered — the weed-related CSA and FDA refusals in the cosmetic/pharma/edible classes, ornamental refusals in clothing, etc., and almost never occur outside of those core classes. Others, like suspensions while waiting for foreign registrations to issue, are as evenly dispersed as applications generally.

IV. A Detailed Look at 2(d) Refusals

Between 50% and 60% of 2(d) refusals each year cite to a single prior filing as the cause of the refusal, with about 20-25% each of 2 or 3+ citations. In 2022, more than 40% of the refusals predicated on a single mark had a direct class overlap. Between these, it suggests that a large number of 2(d) refusals are pretty straightforward.

IV. Doing Better – How the Office Can Change

What can the Office do to help reduce its work backlog? Better tools on the front end of the application process might go a long way in ensuring that the Office has less that it needs to examine.

Automated screening of descriptions of goods and services to show applicants (particularly those self-filed or less familiar with the Office process) where the IDs are likely falling short of the acceptable standards would go a long way to addressing an extremely common cause for refusals. Similarly, automatically suggesting disclaimers for terms that are very often disclaimed for the filed-for goods could avoid a lot of the Office Actions around that issue. Finally, some basic screening of identical-mark / identical-class filings would remove a lot of “low-hanging fruit” from getting 2(d) refusals by pushing those applicants to an alternative mark that isn’t immediately and obviously non-viable.

We don’t especially expect any of this to happen, and we are not seeing many promising signs that the Office is likely to catch back up and return to the 3-4 month examination window that most trademark professionals had grown accustomed to.

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.