Ask the Commish
Q: I hear a lot about the patent backlog, but what about trademarks? What policies, if any, has the USPTO put into place to improve trademark processing? Has the hiring freeze had any effect on how long it takes to get a trademark approved? How long does it take, anyway?
The trademark operation strives to maintain relatively constant pendency for our applicants. Our goal is to complete the initial review of a new application within 2.5 to 3.5 months after filing. (Compared with about 35 months for a utility patent.)
Maintaining average first action pendency within a consistent range provides greater predictability for applicants, while also allowing us to maintain optimal staffing levels to ensure efficiency and minimize costs. Average first action pendency for all applications filed in fiscal year (FY) 2009 was 2.7 months and pendency this year remains at the same level.
The total time to registration is usually about a year or less, unless 1) the application is opposed by a member of the public during the opposition period; or 2) the original application is based on the applicant’s intent to use the mark and the applicant uses most or all of the three-year period authorized by the Trademark Act to file the statement of use averring that the mark is in commercial use.
Trademark application filings are sensitive to changes in the economy. Since the third and fourth quarter of FY 2008, trademark filings have declined significantly. The application filings in FY 2009 were 12.3 percent less than in FY 2008. However, although we have been impacted by a decrease in filing levels, we have successfully managed the impact, and approached the situation as an opportunity to engage the workforce in some important projects to improve organizational performance.
• We reviewed the USPTO Web site to identify areas where additional information on the application process would be useful, and to create new information resources for those areas.
• We began development of several informational video presentations about the application process to post on the Web site.
• We conducted a study using USPTO staff not assigned to the trademark operation to provide feedback on how our office actions and electronic forms could be improved for applicants unfamiliar with the trademark registration process.
• We also began customer outreach on office action quality by engaging various user groups in reviewing and providing feedback on actual office actions.
During the past year, the USPTO has enhanced its electronic systems to better assist users and increase process efficiency. Now that nearly 98 percent of trademark applications are filed electronically, we have turned our focus toward increasing full electronic workflow and file management. To this end, the office has implemented the following changes:
• Electronic notices: The USPTO has begun sending electronic Notices of Publication to trademark applicants who authorize e-mail communication with the USPTO. The new e-mailed Notices of Publication have clickable hyperlinks to allow applicants to access the online version of the Trademark Official Gazette. This new approach permits applicants to receive information more quickly and eliminates the cost of paper mailings for the USPTO. The office will be sending additional notices via e-mail in the near future.
• Electronic forms: In an effort to provide customers the option to use the Trademark Electronic Application System (TEAS) for all trademark filings, we have introduced a new “global” form to provide a means to submit electronic filings of documents that previously did not have a TEAS form. The new form allows for the electronic filing of virtually any trademark documents for which a traditional TEAS form is not currently available and allows trademark customers to identify the type of document being filed by selecting from a drop-down list. This approach provides the same benefits of a “regular” TEAS filing, namely, electronic confirmation of receipt at the USPTO; automatic entry into USPTO databases; and automatic routing to the proper work unit
• Registration certificates: For purposes of cost containment, modernization and efficiency, the USPTO has streamlined the issuance of registration certificates by reformatting the registration data and issuing a single page document on standard 8½ by 11 inch paper rather than a multi-page certificate on non-standard sized paper.
During the past year we have focused to improve the quality of examination, to maintain appropriate pendency, to manage resources wisely, and to provide more online forms to ensure efficiency in trademark processing. We’re confident that these changes will help ensure continued high-quality, cost-efficient service to our users.