USPTO Update: Recap of Trademark Public Advisory Committee (TPAC) Quarterly Meeting
Nehal Madhani | August 18, 2021
Nehal Madhani is the founder and CEO of Alt Legal, whose software makes it easy for law firms to create and manage IP filings. Before starting Alt Legal, Nehal practiced as an attorney at Kirkland & Ellis, LLP. He is a self-taught Python/Django programmer, and he served as a CodeX fellow at Stanford Law School. Nehal has a J.D. from the University of Pennsylvania Law School, a Certificate in Business and Public Policy from the Wharton School of Business, and a B.A. from Northwestern University.
On July 30, 2021, the USPTO held the Trademark Public Advisory Committee (TPAC) Quarterly Meeting, providing a review of policies, goals, performance, budget, and user fees. During the session Trademarks FY2021 Priorities, Commissioner for Trademarks David Gooder along with Deputy Commissioner for Trademark Operations Dan Vavonese, Deputy Commissioner for Trademark Examination Policy Amy Cotton, and Deputy Commissioner for Trademark Administration Greg Dodson, discussed:
- The increase in trademark applications along with statistics to explain the growth.
- How the USPTO is combatting the surge in new applications with staffing and technology.
- An update on implementation of the Trademark Modernization Act.
How great is the surge in new USPTO trademark applications?
The panel began by discussing the scope of the surge in USPTO trademark applications. At Alt Legal, we recently reported that trademark filings across the globe have increased throughout 2020 and 2021, despite the unlikely circumstances surrounding the COVID-19 pandemic.
The USPTO reports that trademark filing levels continue to increase in the United States. FY 2020 saw 738,112 classes filed (up 9.5% over prior year filings) while FY 2021 (currently) saw 785,109 classes filed (up 44%), and filings are projected to reach 940,000.
What and who is driving the surge in trademark applications with the USPTO?
The USPTO reports that 59% of filings are from US-based filers, while 25% are from China, 5% are from the EU, and 11% are from the rest of the world.
In terms of the type of applicants filing, the USPTO reports that 76% of filings are coming from small filers with less than 10 applications. 28% of these filers are individuals and are mostly from the US and China. They are primarily filing use-based applications.
What is driving the surge in trademark applications with the USPTO?
At Alt Legal, we identified several reasons why trademark applications have increased across the globe. During the TPAC Quarterly Meeting, the USPTO echoed many of these reasons and attributed them to the surge in newly-filed USPTO applications.
- Growth of online sales
- Government stimulus (direct checks and subsidies, namely in China’s Guangdong province)
- Anticipation of USPTO fee increase in FY 2021
- Chinese/US/firms/lawyers – marketing filings directly to Chinese small and medium enterprises (SMEs)
- Entrepreneurialism – 6,714,318 new businesses started since March 2020 and likely people having more time to create new businesses/products and money to file applications
How has the increase in applications affected the USPTO?
To help manage the increase in applications before the USPTO, USPTO trademark staffing has increased by 58 individuals since July 2020, taking the total to 1,014 employees handling trademark matters at the USPTO. There are 674 Examining Attorneys, up 48 since July 2020. The USPTO is pleased to report that 100% of USPTO employees may work remotely during the pandemic.
Nevertheless, despite the hiring increases, the USPTO has seen a processing backlog as a result of the filing surge. The USPTO has been able to process new applications in a timely manner and is back on track in processing amendments and responses to office actions, which is typically processed within 14 days. However, the USPTO is still having difficulty keeping up with first action pendency, which typically occurs between 2.5-4.5 months from filing, but is now taking 6 nearly months.
To help keep up with the increase in filings, the USPTO has reorganized workloads among staff and has additional hiring plans in place. Additionally, the USPTO is working on IT solutions and process improvements as well as notices on the external site. To provide greater transparency, the USPTO launched the Trademark Dashboard, which provides regular processing timeframes. On the Dashboard, you can see the pendency target as well as the current pendency.
What steps are being taken to implement the Trademark Modernization Act (TMA)?
Flexible Response Period – 23 comments received, supporting different approaches.
Attorney Recognition – 12 comments received, supporting different approaches.
Nonuse Cancellation – Expungement/reexamination response period, different approaches.
Final Rule – Anticipate publication and rulemaking requires publication 30 days prior to implementation (November 2021) unless good cause. Implementation for nonuse cancellation is required by December 27, 2021.