Current Position: Home > IP News > Trademark backlog: a perfect storm is threatening us trademark applications

Recently, David gooder, trademark Commissioner of USPTO, wrote on the USPTO director's Forum blog that the number of trademark registrations in the United States has increased by 63% over the same period in 2020.

In December 2020 alone, USPTO received more than 92600 trademark applications. This has led to delays in many stages of the trademark approval process. Compared with the previous 10 day pending period, the pre-trial stage of the trademark electronic application system (TEAS) has a 75 day pending period (as of July 5, 2021). USPTO also reached a milestone to be determined in the fourth quarter of 2020, and the pending applications exceeded the 1 million mark, with a total of 1002, 768 applications are in the queue. This has affected registered trademark applicants at the beginning of the application procedure.

The waiting period for receiving the first review comments in the first quarter of 2020 is 2.8 months. In the first quarter of 2021, the waiting period is up to 4 months, and the period for receiving the first review opinions in the second quarter is close to 5 months. Such delays will affect the ability of trademark owners to protect their brands, may increase consumer confusion and affect the value of legitimate trademarks.


What caused the surge in trademark applications?

USPTO acknowledges that the number of applications from both domestic and foreign countries has increased, partly due to the increase in e-commerce activities during the epidemic. People at home use more food takeout and life shopping apps, watch more streaming video content, and use video conferencing software to attend meetings. The above actions have increased trademark applications for these services and related industries.

The number of markers associated with the new coronavirus (covid-19) pneumonia has also increased significantly, as seen in previous years, such as the terrorist attack on September 11, 2001 and the word "covfefe" in Donald Trump's tweets.

Trademark, by its nature, will be highly affected by real events. People always hope to have the opportunity to take advantage of existing hot spots, even if it may be relatively short. Many trademark applications submitted contain the word covid, ranging from the obvious words "coronavirus" and "covid-19" to more creative application words such as "even hats hate corona virus", "covid pro quo" and "covid kid".


Changes in Amazon brand filing

To make matters worse, in November 2020, Amazon relaxed the requirements for its approved brand registry. Amazon now no longer requires sellers to register federal trademarks, but (for some sellers) only requires that brand names have submitted federal trademark applications to be eligible for Amazon brand filing.

With sales exceeding $386 billion in 2020, any move by the e-retail giant will affect the industry. About two-thirds of Amazon's sales are completed by third-party sellers, who and their brands are making every effort to take advantage of the growth of online shopping.

Amazon brand filing brings benefits to the filers on the list and provides listing tools based on access. Once the seller enters the Amazon brand filing system, the optimized brand content, store, sponsored brand and background data of the brand will be provided to the Amazon seller.

Some people say that Amazon brand filing and registration is a "key" factor for success on Amazon, which drives sellers selling on Amazon to have filing pressure and increases the possibility of fraudulent registration.


Impact of global applications

USPTO data show that almost all foreign trademark application data have increased“ The number of application documents - foreign (category) "increased from 53151 in the fourth quarter of 2019 to 83011 in the fourth quarter of 2020, a year-on-year increase of 56%.

Then, by the first quarter of 2021, the number of foreign trademark applications increased to 106025, maintaining the momentum of this surge. Compared with the fourth quarter of 2019, it has increased by almost 100%.

By the first quarter of 2021, "application documents - total amount (category)" had increased by 71.3% over the previous fiscal year“ The total number of active registrations of foreign applications also increased significantly. As of the second quarter of 2021, the total number of registrations was 532700, while the total number of registrations in the first quarter of 2021 was 510373, which means that USPTO has more than 22000 foreign registrations in the second quarter of this year, exceeding the first quarter, although the data in the second quarter has not been completed.

USPTO has received an increasing number of Chinese patent and trademark applications over the years. A USPTO report said that these growth included some non market factors. China has set up more than 70 subsidy schemes in various provinces to encourage citizens to register trademarks at home and abroad.

Usually, the amount of these subsidies is greater than the registration cost, resulting in the need to register trademarks to generate income even if there is no actual intention of commercial use. Since Shenzhen and other cities in China began to provide subsidies for international trademark applications, USPTO has found an increase in fraudulent trademark applications from China.

In January 2020, China's State Intellectual Property Office (cnipa) announced that it would strive to eliminate these fraudulent applications. However, three months later, in March 2020, China pointed out that the number of trademark applications submitted by its state-owned enterprises under the Madeley protocol had increased by 50%.

Recent data show that 38.47% of U.S. trademark applications in the fourth quarter of 2020 came from Chinese applicants. Obviously, Chinese applicants are likely to account for an increasing proportion of trademark registration in the future.

Another latest trend hindering the development of USPTO is the large number of fraudulent "low-cost" trademark agency websites, especially those from Pakistan, where users can apply for registration at a price as low as $45.

Related entities such as digital labs and trademark terminal, trademark axis and trademark falcon, as well as more than 200 websites such as "trademarkterminal. Com", "logoterminal. Com", "designterminal. Com" and most notably "usptotrademarks. Com", have been responsible for submitting thousands of trademark applications to USPTO.

Fortunately, most of these applications were initially rejected because they had no personal e-mail address and phone number, but were being reused“ ”Such a general mailbox and use the company telephone number instead of the applicant's telephone number.

Although the examiner requested the applicant's personal e-mail in the examination notice, the agents of these entities seemed to ignore this request in the follow-up reply, resulting in many applications being rejected. In nearly 75% of applications, these entities provide customers with "false or forged" certificates. Not surprisingly, these applications are part of the USPTO application backlog.

On August 5, Goodall wrote another blog post, in which he announced that the purpose of USPTO's trademark registration of the Bureau's logo was to try to curb these frauds. Goode said that "misleading temptation and trademark application fraud are an increasingly serious problem", and the bureau "requires additional legal protection for itself in view of the rapidly increasing complexity of illegally posing as USPTO logo".


What happens next?

USPTO is taking a number of other measures to offset these challenges. They are committed to focusing on improving the duration of the approval process through "implementation of technical solutions" and "system optimization", are working with law enforcement agencies to prevent fraudulent activities leading to the backlog of applications, and they are also recruiting more agents and staff.

Interestingly, they did not mention the specific measures taken to address the surge in applications from China. USPTO intends to return the approval duration to the usual level, and people should see how they achieve this goal in the next few months. But before that, trademark owners must show patience while waiting for their applications to be processed, because people do not know how long the surge in applications will last and whether it will subside.

[warm tips] source: China intellectual property protection network. The copyright belongs to the original author. If there is anything wrong, please contact us to modify or delete it. Thank you.

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