Patexia Insight 138: Trademark Applications Remain High Post-Pandemic

Tomorrow we will release our second annual Trademark Prosecution Intelligence Report. The report focuses on trademarks filed in the last five years, from January 1, 2017 through December 31, 2021. During this period, a total of 2,848,988 trademarks were filed. The USPTO examined a total of 2,391,624 trademark applications, which resulted in the registration of 1,491,634 and abandonment of 899,990 trademarks. 33,578 attorneys from 28,217 law firms, worked on one or more of these applications that came from 201,467 applicants.

Since there is no requirement to pass the USPTO bar exam, more attorneys are able to file trademark applications, which makes data collection a more intensive process compared to the other reports. To ensure the accuracy of the data and perform better entity name resolution (which remains our top priority), we had to use AI and natural language processing. But still the lack of enough information, especially for many Chinese entities, made this process very difficult and required more manual review compared to our other reports.

The following bar chart shows the number of filings by year for the last five years.

The filing activity has only slightly declined in 2021, where 678,923 trademark applications were filed, after its significant growth in 2020 with 691,825 applications.

The USPTO has done several studies about this increase and the numbers of the last two years, as it directly impacts their workflow starting from the initial processing of an application, office actions, processing of responses to these office actions and overall reviewing of filings validity.

According to our data, the growth in trademark applications is driven by both foreign and domestic applicants. As for the foreign entities, Chinese originating entities have been unusually active during the last two years, increasing their filing activity up to the point that one in four applications came from China in 2021. The reasons behind this rise deserved a deep dive that we covered last week in Patexia 137. As for the rise in the domestic filings, the USPTO has explained that in part this comes from the increase of e-commerce which was boosted by the pandemic with online sales higher than ever before.

The chart above illustrates the average number of months per application for three different scenarios during the past five years: registered, abandoned and overall. As we have analyzed, abandoned applications usually may face more challenges before being abandoned and that means more time as well.

For all five years we reviewed, the abandoned applications took longer than the registered ones, which means they also cost more even though there was zero benefit at the end. On average, trademark applications take about 13.6 months from filing to a decision and this continued even during 2020-2021, despite the increase in filings. It seems that the implementation of technology solutions and the overall distribution of workflow among USPTO attorneys and staff, has helped manage the overall processing times around normal levels. However, as reported by the USPTO, the increase in filings has impacted the waiting times for the first action which as of March 2022 is estimated to be 7.7 months, above the USPTO’s target. This was true even throughout 2020. Some IP experts expected the new filings to drop significantly in 2021 due to the longer wait time. But as shown above, a decline of only 1.86 percent was observed.

The full Trademark Prosecution Intelligence Report further analyzes different trends related to trademark filings, and uncovers some anomalies such as the Chinese originating applications. Furthermore, we have evaluated all attorneys and law firms, and the report covers the top 2,000 most active attorneys, law firms and companies with their Activity and Performance using our data and ranking methodology. For the first time this year, we have also included a list of lateral moves that happened since the publication of last report.

Stay tuned as in the following weeks we will continue to cover some of the highlights of this report as well as analyzing some of the most active and best performing entities during the period of our study.