April 8, 2023
The USPTO has been deluged by trademark applications since the onset of the pandemic. There are two reasons for this that I can see. Firstly, with unexpected time on their hands, a lot of people seem to have come up with business ideas and decided to go ahead and apply to register a trademark for their new business. This is appealing for entrepreneurs because it's one of the first tangible things a new business can do. Secondly, Amazon requires a pending trademark application in order to "gate" a business, meaning a lot of Amazon sellers that wouldn't have previously seen the need to trademark a brand, suddenly began coming up with new words to trademark, in an effort to increase their visibiltiy on Amazon.
At the same time, the USPTO has made a few changes - both published and unpublished. For the former, the time to respond to an "Office Action" (which equates to an initial refusal that an applicant can rebut) is down from 6 months to 3 months. An applicant can request a further 3 months to respond, but this must be done before the 3 month deadline expires, and costs $150. This serves to sweep the primary register of applications that are ultimately bound for a denial, and so is generally a positive development.
The second change - which is appears to be more subtle and has not been announced - is that trademark applications seem to be subject to heightened scrutiny. Some borderline applications that would previously have been approved are now being subject to non-final refusals on the basis of mere descriptiveness or a likelihood of confusion with an existing registration. This places the burden on the applicant to rebut the reasons for initial refusal. As these non-final refusals are being issued almost a year after the application was filed, presumably many applicants that are no longer pursuing the business that was the basis for the application, simply let the deadline expire without responding. This serves to "sweep" the register of applications that are no longer being actively pursued.
Ultimately if these changes help to sweep stale applications from the register, the above changes are generally a positive development. On the other hand, an applicant who applies without the aid of a lawyer may find it difficult to respond to a non-final refusal without the aid of an attorney, which can be costly. This may serve to dissuade individuals from pursuing their applications through to registration.
