Trademark Risk Assessment

If you own or run a business, you understand clearly that consumers expect fast delivery. Customers can order food online and have it delivered to their door within an hour or less. A package from Amazon can arrive the same day as the order is placed. Click online and groceries are waiting at the store for curbside pickup.

The speed of delivering services in the business space is also accelerating. These expectations have prompted the legal industry to adopt new technology designed to meet these needs. However, such changes may not meet consumer expectations, especially with respect to government-run services.

Turn of the Century PTO Changes

The U.S. Patent & Trademark Office (PTO) made changes to deliver its services faster, and with more accuracy, as well. Prior to 2000, applications were filed on paper (yes, really), through the U.S. Mail. The information was submitted to the PTO for manual entry, and then returned to verify accuracy. Human beings were behind the entire registration process, and that process could take anywhere from 18 months to a few years to reach fruition, depending on complications.

Around the year 2000, the PTO made the leap to online filing of applications, and later updated the entire website to make it easier for applicants to file online. This was part of a huge evolution in the area of law in general, and very much an historic change for the PTO. While humans were still behind the review and approval process, the actual data entry time for applications was reduced dramatically. With no objections, a mark could register in about a year. That is nothing less than lightning speed for the U.S. Government.

However, the PTO has now become a victim of its own success. The ease and speed of the online application process has led to record numbers of new applications. While the digital systems speed up the entry of the data and filing responses and other required documents, processing applications is still handled by human beings. Conducting proper review and analysis still requires time. Today, the PTO is more backlogged than before. 

Currently, an application is taking about 5 months for initial review by an Examining Attorney. That’s a long time, even by the PTO’s own standards. And the number of new applications doesn’t show signs of decreasing. Even after that review, more steps may be needed, which doesn’t shorten the cycle for registration.

Business Risks & PTO Registration Timelines

This leaves a big question for a business – does an applicant have to wait for initial review to find out if their application will be accepted? 

Asking a business to wait almost 6 months before launching its product or services is unacceptable. Therefore, before we file an application for trademark registration, we conduct a risk assessment for the potential mark. 

Using online databases as well as our knowledge of trends and current case law, we can determine the likelihood of a mark’s acceptance by the PTO, and the risk of objection by a third party who might own prior rights to a mark. With this information, a client can increase the chances of successfully registering the mark, and avoiding a cease and desist letter down the road.

Of course, there are no guarantees. The examining attorneys are people just like us, with good days and bad, great decisions and poor ones. However, our assessment is based on over 20 years of experience. We stay up to date on the latest decisions by the PTO, and can craft the best strategy to minimize risks.. 

While the PTO website makes it easy for anyone to file their own application, no business wants to wait six months before moving forward with their goals.

Considering registering a trademark? Avoid much of the uncertainty of waiting for your application to be examined by reaching out to us.