Category Archives: Trademarks and Brands

How long does it take to get a patent or trademark? (2018 update)

At the end of each fiscal year, the USPTO releases a Performance and Accountability Report, with statistics about patent and trademark allowance rates, average pendency, and other details. The USPTO recently released its Performance and Accountability Report for Fiscal Year 2018. This means that it’s time for IP Spotlight’s annual review of the question:  “how long does it take to receive a patent or register a trademark?”

To answer that question, here are a few highlights from the USPTO’s FY 2018 report:

Patents:  The USPTO continued a seven-year trend of reducing overall patent application pendency in FY 2017. The average time between filing and first office action was 15.8 months, which is down a few week’s from last year’s measure. Average total pendency (time from start to grant or abandonment) also dipped to 23.8 months.

The report did not discuss the effect of the USPTO’s “Track 1” expedited examination option on the overall timeline. Applicants who pay the additional fee for Track 1 processing typically receive a first action within 4-6 months of filing, and allowance or final action within 12 months of filing.

The wait times vary depending on the technology involved. Patent applications for computer architecture and mechanical engineering inventions generally experienced the longest waits, while applications for communications and semiconductor technologies moved relatively quickly. The breakdown by technology included:

  • biotechnology and organic chemistry (USPTO Technology Center 1600) had an average wait time of 12.5 months to first action, and an average total pendency of 22.9 months;
  • chemical and materials engineering (USPTO Technology Center 1700) had an average wait time of 18.0 months to first action, and an average total pendency of 27.3 months;
  • computer architecture (USPTO Technology Center 2100) had an average wait time of 19.4 months to first action, and an average total pendency of 28.4 months;
  • networks, multiplexing, cable and security (USPTO Technology Center 2400) generally waited 15.9 months to first action, and have an average total pendency of 25.3 months;
  • communications technologies (USPTO Technology Center 2600) had some of the shortest average wait times — 11.0 months to first action, and an average total pendency of 19.9 months;
  • semiconductors, electrical systems and optical systems (USPTO Technology Center 2700) had an average wait time of 12.7 months to first action, and an average total pendency of 21.6 months;
  • methods relating to transportation, construction, agriculture and e-commerce (USPTO Technology Center 3600, in which the e-commerce inventions are often considered to involve “business methods”) had an average wait time of 18.2 months to first action, and an average total pendency of 25.5 months; and
  • mechanical engineering products (USPTO Technology Center 3700) had an average wait time of 19.0 months to first action, and an average total pendency of 28.4 months.

339,534 patents issued in FY 2018 — a 2.3% decrease from last year’s all-time high. The overall patent allowance rate was 56.3% – a dip from last year’s 59.4% allowance rate.

The number of patent applications filed in FY 2017 was 647,349 — a slight (1% decrease from last year’s number. Of these applications, approximately 596,000 were utility filings and 169,000 were provisional filings. The other patent applications were design, plant, or reissue filings.

Trademarks:  In FY 2018 the average time from filing to first Office Action in a trademark application increased to 3.5 months, up from 2.7 months in 2017. Average total pendency remained about the same as last year: 9.6 months as compared to 2017’s 9.5 months.

The total number of trademark applications filed was 638,647, an all-time high and the third consecutive year of double-digit growth. The total number of registrations granted was 367,382, also an all-time high and a 12.2% increase over last year’s grant rate.

How long does it take to get a patent or trademark registration? (2017 update)

At the end of each fiscal year, the USPTO releases a Performance and Accountability Report, with statistics about patent and trademark allowance rates, average pendency, and other details. The USPTO recently released its Performance and Accountability Report for Fiscal Year 2017. This means that it’s time for IP Spotlight’s annual review of the question:  “how long does it take to receive a patent or register a trademark?”

To answer that question, here are a few highlights from the USPTO’s FY 2017 report:

Patents:  The USPTO continued a six-year trend of reducing overall patent application pendency in FY 2017. The average time between filing and first office action was 16.3 months, which is about the same as last year. However, average total pendency decreased to 24.2 months (down from last year’s 24.2-month average pendency, and down from a high of 33.7 months in 2012).

The report did not discuss the effect of the USPTO’s “Track 1” expedited examination option on the overall timeline. Applicants who pay the additional fee for Track 1 processing typically receive a first action within 4-6 months of filing, and allowance or final action within 12 months of filing.

The wait times vary depending on the technology involved. Patent applications for computer architecture and mechanical engineering inventions generally experienced the longest waits, while applications in the biotech and organic chemistry fields moved relatively quickly. The breakdown by technology included: Continue reading

Beware trademark renewal notice scams

At some point in time, most trademark registrants will receive an official-looking invoice from a so-called “trademark registration service” that purports to require payment of a fee to maintain the trademark registration.

My colleague Erika Koster recently published an alert about scams like this.  For Erika’s article on the Fox Rothschild “Above the Fold” blog, click here.

In the meantime, if you receive a trademark renewal notice and it is not from the law firm that is helping you apply for or maintain the registration, you can be fairly certain that it’s a fraud. If you are unsure, simply send it to your trademark attorney for a quick review and confirmation.

Are you using your trademark with ALL of the goods and services listed in your trademark application?

USPTO sealOn January 19, 2017, the USPTO published a final rule that would allow the USPTO to verify whether trademark holders are using a trademark with all of the goods and services listed in the trademark application or registration. However, the White House’s recent regulatory freeze calls into question whether and when the USPTO will implement the new rule.

Before the USPTO will issue a trademark registration, trademark applicants are required to submit proof that they using the mark in commerce. In addition, in order to maintain a trademark registration, trademark owners must periodically submit affidavits of continued use to the USPTO.

Under the new rule, when a trademark holder or applicant submits evidence of use in commerce, the USPTO “may require the owner to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the affidavit or declaration under section 8 of the Act or for the Office to assess and promote the accuracy and integrity of the register.” The USPTO explained the reasoning for the new rule as: “A register that does not accurately reflect marks in use in commerce in the United States for the goods/services identified in registrations imposes costs and burdens on the public.”

On February 10, 2017 the USPTO issued a notice stating that implementation of the new rule would be delayed to March 21, 2017 in accordance with the White House’s January 20, 2017 “Regulatory Freeze Pending Review” memorandum, which placed a 60-day freeze on implementation of all new regulations.

USPTO Power Outage Affects Patent and Trademark Filing Deadlines

The U.S. Patent and Trademark Office experienced a serious power outage on December 22, 2015. According to the USPTO, the outage  “damaged equipment that required the subsequent shutdown of many of our online and IT systems,” including the USPTO’s online filing systems.”

The outage came at a particularly problematic time for the many patent and trademark applicants who are trying to complete filings via the USPTO’s electronic filing systems before the Christmas holiday.

Fortunately, the USPTO is now treating December 22-24, 2015 as a Federal holiday when it receives responses or fees that were due on those days. This means that any fees or responses due on December 22-24 will be considered to be timely if filed by the USPTO’s next business day (Monday, December 28).

Note that this notice does not mean that newly filed patent or trademark applications will receive a filing date of December 22 if filed on Monday, December 28. If applicants want an earlier filing date (i.e., December 24), they must file the application by other means, such as a paper filing via USPS Priority Mail Express.

Stay tuned to the USPTO website or Twitter feed for future updates, especially if systems are not operational by December 28.

New Supreme Court Decision Expected To Influence Trademark Opposition Strategy

A recent United States Supreme Court decision is likely to affect the way that parties approach trademark opposition proceedings before the Trademark Trial and Appeal Board (TTAB).

My colleagues Bill Hansen and Suzi Morales recently published an article describing the decision and its potential effects. For more details about the Court’s decision in B&B Hardware, Inc. v. Hargis Industries, Inc. follow this link for the full article.

The trademark balancing act: Protecting your rights without enraging your customers

Trademarks symbolize the character and reputation of their owners and the quality of those finished products offered to the consumer. It typically takes years of careful cultivation to build a valuable trademark. This cultivation can include registering the mark with the U.S. Patent and Trademark Office, using the mark in a consistent and continuous manner, and taking action to prevent others from using the mark without permission. However, trademark owners often need to walk a thin line between strong enforcement and overly aggressive enforcement tactics (sometimes called “trademark  bullying”). One mis-step (or overstep) can quickly tarnish a mark’s goodwill and inflame consumers. Within days, the reputation of a strong brand built over decades can be destroyed by one over-zealous demand letter or lawsuit that finds its way from the recipient or courtroom to the Twittersphere.

AnLagunitas IPA example of this is the recent case of Lagunitas Brewing Co. v. Sierra Nevada Brewing Co.  In the case, Lagunitas alleged that Sierra Nevada’s new Hop Hunter IPA used a label that infringed on Lagunitas’ family of registered trademarks that each incorporate a stylized image of the acronym “IPA.” The complaint asserted that Sierra Nevada’s label used similar fonts to those of the Lagunitas mark, with the phrase “IPA” appearing in “prominent all-capital, large, bold, black, centralized” letters. The case included Continue reading