Trademark wait time high now.

Trademark wait times at the USPTO are at an all-time high, with the backlog being blamed variously on the pandemic, a shrinking federal government workforce or rampant fraud committed by opportunistic filers.

While this is naturally a point of stress for practitioners and applicants alike, it can be leveraged with smart, strategic thinking.

WTR has gathered perspectives from several thought leaders in the trademark world, due to be featured in WTR’s annual Global Leaders, to reveal how they manage these long pendency times. All of our global leaders agree that if attorneys can successfully manage client expectations and applicants can use the delays to their advantage, all could emerge in a better position.

Applicants could suffer – or thrive

Whatever the reason behind the drastically lengthening pendency times, Max Vern of Amster Rothstein and Ebenstein insists that the issue must not be overlooked. Instead, applicants should make sure to factor it in when devising their trademark protection approach. “Trademark rights are created in the United States through use and in its absence, securing the early filing date may make or break a trademark conflict’s outcome,” he warns. “If the United States remains a globally attractive market, the sound answer in times of growing pendency is to clear the brand for availability and file soon.”

While Michael Kelber of Neal Gerber Eisenberg worries for clients’ enforcement efforts – which can be seriously hampered by delays in registration – he remains optimistic. Reassuringly, “since priority in the United States is based on use or filing dates, the delay rarely impairs their underlying rights”, he assures. Adopting an alternative perspective, he points out that the wait can actually benefit applicants in some cases. “For clients who are still early in the planning stages of product launches, the delay can even reduce costs for extensions of time for claiming use.”Advice for practitioners

Given the backlog, it is critical to manage client expectations, according to DLA Piper’s Keith Medansky. Equally, it is vital to “conduct thorough availability searches and anticipate any grounds that may give rise to the refusal of an application”. Compounded by the growing pendency times, discovering a problematic reference months after filing an application may mean that it is too late to easily make changes.