In a recent interview with Tim Lince of WorldTradeMarkReview.com, USPTO Trademark Commissioner David Gooder shared his reflections of the past year and what to expect for 2022. Here are the highlights of that interview.
Reflecting on 2021
There was a surge in trademark applications. Gooder cited reasons including:
- The rise in entrepreneurialism: Numerous new businesses created during the pandemic sought patents and trademarks.
- Seller trademark requirements: E-commerce sites opened up programs to sellers that often required having a trademark registration.
The surge created pendency issues. First action pendency measures the average number of months from the date of application filing to the examining attorney’s first office action. The USTPO had set a target of between 2.5 and 4.5 months from filing. At its height in 2021, first action pendency took an average of 5.5 months.
To address pendency, the USPTO hired a large number of examining attorneys. By the end of the last fiscal year, the agency had hired over 50 new examiners. In 2022, that number will double.
COVID changed how applications are considered. If you have a trademark application that covers anything to do with fighting COVID – for example, a product regulated by the FDA – you can obtain expedited examination, which shaves a couple of months off the process. If the deadline was missed for a COVID-related reason, you can still petition for additional time.
What to expect in 2022
Access to trademark records will change. To increase security and integrity around the trademark database, applicants will need to perform new identity verification steps for electronic access to trademark records. It will be mandatory by late spring.
The primary provisions of the Trademark Modernization Act will take effect. Over the next year, the USPTO will change the time that people have to respond to office actions. Vendors will need that year to modify their systems.
Expect electronic certificates only. As of spring 2022, the USPTO will move to electronic trademark registration certificates. There will not be paper certificates unless a registrant orders one.
Anti-fraud developments will continue. The USPTO is committed to being more capable of addressing fraud and wants to get to the point where they are proactive, not reactive.
Bottom line: I’m glad to see that progress is being made to modernize and expedite filings as well as proactively prevent fraud. If 2022 is the year you plan to submit your trademark application, let’s make sure it has a good chance of getting over any hurdles. My role as a trademark and patent attorney is to provide legal perspective for your business. I can conduct searches and advise on what I find, and also file on your behalf. I can enhance and elevate any work that you’ve done, which will help you refine and succeed with your business plan.