Registration of a trademark can be a tricky business, especially given recent USPTO delays.

At Peyton Law, about 50% of our work for entrepreneurs and small business owners (ESBOs) is general counsel and business law, but the other half of our time is spent in intellectual property protection – and much of that work is in trademark registration and renewal.

As all entrepreneurs know, a great idea is an important asset, and it must be treated as such. You wouldn’t leave your front door unlocked, just as you wouldn’t leave your brand unprotected; and you wouldn’t hand over the keys to your house without compensation, so why would you share your intellectual property without a royalty?

We spend a great deal of time in the intellectual property world, focusing primarily on protecting proprietary processes, trade secret protection, licensing, copyrights, and trademarks. Last year, we helped many businesses trademark their names, taglines, and logos by leading them carefully through the process with the United States Patent and Trademark Office to achieve a certified trademark registration for their brand.

In our experience, the USPTO has taken an average of 3 months from the date the trademark application is filed, until we hear a response from the USPTO Examiner assigned to the application. To achieve complete registration, the entire process used to take an average of 8-12 months, depending on the individual circumstances.

However, recent delays in the government offices have resulted in an over 6-month wait just to hear from the assigned USPTO Examiner. This pushes our average registration timeline to a year or more. As attorneys, we are curious, so we decided to do a little research to find out why.

As it turns out, according to a World Trademark Review article (written in April 2021 by Tim Lince), over the last couple of years, there has been an influx of trademark applications based out of China. The USPTO has addressed this issue, changing the regulations to state that a “home base” for an application must be in the United States. After these rules went into effect, it was noted by the USPTO that many similar applications to those seen from China and seemingly based in the United States were still flooding in. To circumvent the new regulations, foreign applications would use a Unites States address for the submission, and quickly update the point of contact to an address in China or other foreign companies.

It was also discovered that many of the United States addresses either did not exist, or worse, was the theft of the identity of actual U.S.-based attorneys – just to avoid further examination into their applications. This deeper sophistication of China-based trademarks has resulted in fraudulent applications becoming more difficult to flush out. In turn, the USPTO has become severely backlogged.

Closures and work-from-home requirements due to the pandemic have also contributed to the delays. Currently, processing time of initial applications has increased upwards of three months. This increased wait time is damaging to entrepreneurs and business owners who rely on and expect a quicker turnaround time. With market trends always changing, entrepreneurs and business owners have to decide to risk launching a next new product or service without waiting for the name, tagline, or logo to be protected; or wait and risk losing the market opportunity.

At Peyton Law, we understand that risks must be weighed against the availability of your resources. We start each new client and matter with a strategy session to explore the opportunity at hand and to collaborate on the best avenue for growth and development. With increase waiting times on trademark registration, and no certain end in sight, we suggest moving quickly to do a preliminary search and file your trademark application as soon as possible (at the point in time your trademark application is submitted electronically to the USPTO, you have priority status over future applications). Email us, give us a call, or click here to schedule your complementary consultation today.

Next Steps

If you would like to learn more about any of the topics mentioned here, please call or text 484-801-0021 or reach out to Cassandra Ortner at cassandra.ortner@peytonlaw.com. We proudly support the nation’s business owners.

*Janelle Peyton is the CEO and Managing Partner of Peyton Law, a leading boutique law firm designed to provide the highest quality branding, business, and legal services to companies via quarterly subscription called Strategic Legal Solution. Peyton Law offers brand building strategies through corporate and intellectual property law, including business entity formation, buy+sell, contracts, joint ventures, trademarks, patents, licensing, and other growth-related transactions.