Common Law Rights Are An Important Consideration In Trademark Clearance

Recently I had the opportunity to virtually meet with David Gooder, the Commissioner for Trademarks of the United States Patent & Trademark Office. It was a unique opportunity and it afforded me the time to discuss an issue with the Commissioner that I believe has caused many of my clients to misunderstand the Examining Attorneys’ role at the Trademark Office. There is a lack of information on the USPTO website pertaining to common law rights. I find myself time and time again explaining to my clients why it is so important to conduct full U.S. clearance searches (comprehensive trademark research) in advance of filing a trademark application.

Many prospective trademark applicants wrongly assume that the Examining Attorneys at the Trademark Office when conducting trademark searches for the applicant’s proposed mark will search common law rights (use rights/unregistered rights) in addition to the registered and pending marks. This is not true. The Examining Attorneys at the USPTO do not have the resources to conduct common law searching. Therefore, if an applicant does not conduct comprehensive research in advance of the trademark filing, it’s possible to invest the time and resources to register one’s mark on the federal level, but still be infringing on a third party’s trademark rights and thus be vulnerable to being a named defendant in litigation.

The United States has a first to use trademark system, not a first to file system like many other countries. This means that common law rights (use rights) matter and cannot be ignored. If a third party possesses senior common law rights, a proceeding can be brought at the Trademark Trial and Appeal Board to either oppose a pending application during the publication period or cancel a trademark registration. The owner of common law rights may NOT have filed or registered its trademark but has simply used the mark in commerce before the applicant filed its trademark application with the United States Patent & Trademark Office.

Clients are very surprised to hear this information. During my discussion with the Commissioner for Trademarks, I conveyed that it would be helpful if the Trademark Office would provide information on its website that explains that trademark Examining Attorneys do not search common law (use rights). Therefore, it is extremely important for applicants to conduct common law searching in advance of application filing at the USPTO. Mr. Gooder sincerely appreciated hearing this perspective and communicated that he would bring the information back to the appropriate personnel. Other news from the Trademark Office is that if you have filed an application recently, you will have noted a significant delay in response times.

The Trademark Office is experiencing a surge of trademark applications. Due partly because of an increase in e-commerce during the pandemic. The increase of filings started in the fall of 2020 and have continued to trend upward. For example, in December 2020, the USPTO received 92,608 trademark applications, an increase of 172% over December 2019. This has resulted in unexamined trademark application inventory. In other words, many of the processing times have been delayed at various stages of trademark prosecution.

For example, typically it would take approximately 3 to 3.5 months for an Examining Attorney to be assigned and to issue an Office Action. In recent times, it has been taking about 5.5 to 6 months for review of the trademark application and for issuance of an Office Action. Other delays have occurred with Responses to Offices Actions, review of Statements of Use and even with post registration review. Post registration processing typically takes on average about thirty days for review by the Examining Attorney (prior to the pandemic). However, it is now taking 60-90 days for post registration review. For more information on this topic, review the USPTO’s current projected timeline for responses These delays can negatively impact an applicant, especially one that is continuing to spend money and time investing in the company’s proposed brand, while waiting on the determination from the Examining Attorney as to registration. It is more important than ever, to conduct the proper trademark clearance prior to filing an application. To delve deeper into this topic please read the firm page entitled, Why It Is Critical To Conduct A Clearance Search Prior To Registering A Trademark. If you still have questions, please contact my office for a courtesy consultation.