Commissioner for Trademarks David Gooder oversees initiatives as filings soar since COVID-19

If anyone knows how to adjust to dramatic change in a hurry, it’s David Gooder.

One month after his Feb. 5, 2020, appointment as USPTO commissioner for trademarks, concerns about the COVID-19 pandemic and the safety of employees forced the USPTO to shutdown its campus in Alexandria, Virginia.

Many American businesses and agencies floundered. 2020 was essentially a lost year for them. Many did not survive.

But December 2020 was one of the trademark office’s strongest filing months on record. As the pandemic persisted through early 2021, April was another healthy month—which required the Office to continue its aggressive campaign to address filing backlogs that started in late 2020. “At first, filings were declining, but since last summer the growth in filings has been unprecedented,” said Gooder. 

As of June 4 this year, the office’s fiscal year-to-date application class filing levels were up 52 percent.

“Our takeaway is that companies continued to innovate even during the pandemic, and trademarks became even more valuable as much of the economy moved online,” Gooder said.

To encourage that innovation—particularly with respect to COVID-19-related goods and services, as well as responding to the increasing number of applications—the USPTO took these actions:

  • On June 15, 2020, the USPTO announced the COVID-19 Prioritized Examination Program for certain trademark and service mark applications so that important COVID-19-related trademark applications could be expedited out of turn and immediately assigned for examination. 
  • This April, the USPTO hired 47 new examining attorneys to help address its pendency concerns.
  • In early Spring, the office launched a new webpage that provides current processing wait times. This information allows attorneys to provide appropriate expectations regarding processing times to their clients. Another goal is to bolster trademark support staffing.
  • The Office of Liaison and Petitions recently hired five new attorney advisors and two new paralegals.
  • Workloads have been reorganized among staff, and Information Technology (IT) solutions and process improvements have been implemented. These include translating foreign language marks before assigning applications to examining attorneys, in addition to developing bots to automate some administrative tasks.

When asked which categories have recently seen the most application activity, Gooder had a surprise.

“The one anecdotal thing we learned as a result of the pandemic is that we Americans love our pets,” he said. “We have seen the most growth in this field over all other categories.

“As we know, many families brought new pets into their lives over the past year and a half, and folks working from home spent significantly more time with their four-legged friends as a result of the pandemic. So we have surmised that entrepreneurs, manufacturers, and retailers noticed this trend, and an uptick of trademark applications in this category soon followed.”

He said the second-biggest growth category has been electronic goods. “This makes sense, as so many workers and businesses were forced to transition to telework and online retail environments. This required consumers to acquire goods that would support them being as efficient as possible in this virtual environment.”

Gooder said that with total filings increasing, so did fraudulent filings and others that violated USPTO rules. Register protection became even more important.

His office looks forward to the implementation of the Trademark Modernization Act (TMA) by the end of the calendar year. “The TMA was designed to provide trademark owners better means of getting rid of deadwood that blocks their own entry onto the register, and to allow owners to clear trademarks more quickly,” he said.

In particular, the TMA will provide the USPTO and stakeholders with new non-use cancellation mechanisms before the director, rather than the Trademark Trial and Appeal Board (TTAB), as well as a new claim for cancellation before the TTAB for a mark that has never been used in commerce.

“The TMA will also allow us to increase examination efficiency once we are able to implement flexible response periods to office actions by the middle of 2022. Also, we are dialing up our investigations and sanction process to fight inaccurate or improper-use claims, the unauthorized practice of law, and fraud and abuse in the filing of applications—which all diminish the trust we have in our register.”

The Special Task Force on Improper Activities (STF)—a relatively new but integral part of register protection initiatives—is tasked with investigating and developing strategies to address suspicious activities and scams. 

“This has already had a number of successes,” Gooder said. “In May alone, our Special Task Force stopped bad actors in China and Vietnam from continuing to file applications.” 

The trademark office is working more closely than ever with the Department of Commerce inspector general, the Department of Justice, the Postal Service inspector general, and the Federal Trade Commission. It is also using IT to spot patterns and trends, which includes continuing to study the effectiveness of Artificial Intelligence technology to address issues surrounding fraud.

“We will not stop until we explore and investigate every tool at our disposal to guard the register from bad actors,” Gooder said.