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<p>It is true that both tasks (assigning design codes and examining
trademark applications) are unacceptably backlogged.</p>
<p>But the way I look at it, they are not (or at least should not
be) related.</p>
<p>"Related" in the sense of "caused by the same cause" I guess I
could imagine being so. If management at the Trademark Office is
doing its work poorly, then yes poor quality management could turn
out to be the direct cause of not one but two distinct categories
of backlog. (Actually given the lapses that Ken is tracking, we
are probably looking at a dozen distinct categories of backlog,
perhaps all due to poor management.)</p>
<p>But "related" in the sense of "the things that happen when a
trademark application is getting examined" and "the things that
ought to happen within days of the filing of a trademark
application", no, I do not want to acknowledge that it would be
somehow okay (on the part of Trademark Office management) to let
the latter slip in time given that the former has slipped in time.</p>
<p>When an EA carries out the work of examining a trademark
application, the EA does a search of Office records (the
son-of-TESS database) to see whether any previous trademark filing
might be a reason to refuse the application being examined. At
the risk of stating the obvious, any defects and gaps in the
database will inevitably lead to search failures. This situation
will inevitably lead to situations where the search carried out by
the EA overlooks important trademark filings. This is not because
the EA did not do the search well. It is because the database has
defects and gaps in it. Again stating the obvious, this harms the
public and the trademark community because marks get registered
that ought not to have gotten registered. Third parties get
forced to carry out expensive opposition proceedings for marks
that ought not to have been approved for publication for
opposition. And we end up with registered cases where data fields
continue to be wrong or missing, perhaps in perpetuity.<br>
</p>
<p>So circling back to my comment above about "related". Yes, if
some wrong allocation of resources or bad planning were to lead to
a long backlog for examining trademark applications, of course
that is unfortunate. Applicants who would have benefited from a
grant of a registration end up having to wait longer for those
benefits. Yes it harms particular applicants.<br>
</p>
<p>But as for the pre-exam quality steps that are failing to get
carried out at all (consistency between database fields, failure
to handle unicode versus ascii coding correctly, failure to assign
design codes), this harms just about every member of public as
well as just about every member of the trademark community,
whether applicant or not.<br>
</p>
<p>And the failure to assign design codes causes particular harm to
applicants (most based in the US, by the way) who find themselves
unable to do Madrid Protocol filings, as noted by Scott.</p>
<div class="moz-cite-prefix">On 2/23/2025 8:53 AM, Jessica R Murray
wrote:<br>
</div>
<blockquote type="cite"
cite="mid:DM6PR01MB487362ED13E51F27815FE851C0C12@DM6PR01MB4873.prod.exchangelabs.com">
<div class="elementToProof">
My guess is that it is related to this backlog in Pre-Exam:</div>
<div class="elementToProof">
<br>
</div>
<table class="elementToProof">
<tbody>
<tr>
<th>
<div>
Trademark Processing Times</div>
</th>
<th>
<div>
Average</div>
</th>
<th>
<div>
Target</div>
</th>
</tr>
<tr>
<td colspan="3">
<div>
<span>Pre-Examination Unit</span></div>
</td>
</tr>
<tr>
<td>
<div>
TEAS</div>
</td>
<td>
<div>
196 days</div>
</td>
<td>
<div>
10 days</div>
</td>
</tr>
</tbody>
</table>
<div class="elementToProof">
<br>
</div>
<div class="elementToProof">
<a href="https://www.uspto.gov/trademarks/application-timeline"
id="LPlnk" moz-do-not-send="true"
class="moz-txt-link-freetext">https://www.uspto.gov/trademarks/application-timeline</a></div>
<div>
<br>
</div>
<div id="Signature">
<div>Jessica R. Murray<br>
(pronouns she/her/hers)<br>
Director, Transactional Law Clinic<br>
Associate Teaching Professor<br>
Syracuse University College of Law</div>
<br>
</div>
<hr tabindex="-1">
<div id="divRplyFwdMsg" dir="ltr"><b>From:</b> E-trademarks
<a class="moz-txt-link-rfc2396E" href="mailto:e-trademarks-bounces@oppedahl-lists.com"><e-trademarks-bounces@oppedahl-lists.com></a> on behalf of
Carl Oppedahl via E-trademarks
<a class="moz-txt-link-rfc2396E" href="mailto:e-trademarks@oppedahl-lists.com"><e-trademarks@oppedahl-lists.com></a><br>
<b>Sent:</b> Sunday, February 23, 2025 10:33 AM<br>
<b>To:</b> For trademark practitioners. This is not for
laypersons to seek legal advice.
<a class="moz-txt-link-rfc2396E" href="mailto:e-trademarks@oppedahl-lists.com"><e-trademarks@oppedahl-lists.com></a><br>
<b>Cc:</b> Carl Oppedahl <a class="moz-txt-link-rfc2396E" href="mailto:carl@oppedahl.com"><carl@oppedahl.com></a><br>
<b>Subject:</b> Re: [E-trademarks] Delay in Design Code
Assignment
<div> </div>
</div>
<div>
<p>Thank you Scott and thank you Ken for posting.</p>
<p>I don't know enough about the internal workflow on this to
make a confident guess as to the mechanism of action here for
each of the various quality failures that Ken has been
tracking (one of which Scott highlighted for us). For example
consider the quality failure that Scott bemoaned -- failure to
assign design codes promptly.<br>
</p>
<ul>
<li><i><b>Guess A. </b></i>Maybe the workflow for assignment
of design codes has for years gone to some particular
workgroup within the Trademark Office, and maybe starting a
year ago or so, that workgroup got starved of resources. So
the work is just not getting done and is now backlogged
worse than half a year.</li>
<li><i><b>Guess B. </b></i>Maybe the workflow for assignment
of design codes has for years gone to some particular
workgroup within the Trademark Office, and maybe starting a
year ago or so, that task got reassigned to a contractor,
and the contractor is failing to do the job promptly.
Meaning, among other things, the Trademark Office is not
competently administering the contract. So the work is just
not getting done and is now backlogged worse than half a
year.</li>
<li><i><b>Guess C. </b></i>Maybe the workflow for assignment
of design codes has for years gone to some contractor, and
maybe a year ago or so the Trademark Office decided to bring
the task back in-house, and the Trademark Office is failing
to handle this well. So the work is just not getting done
and is now backlogged worse than half a year.</li>
<li><i><b>Guess D. </b></i>Maybe the team of workers is
pretty small, let's say five workers. And design-code cases
with a last digit of 0 and 1 go to worker 1, and design-code
cases with a last digit of 2 or 3 go to worker 2, and so
on. And a year ago or so, workers 2 and 4 retired or got
promoted or something, and very little attention has been
given to the docket for those two workers.</li>
</ul>
<div class="x_moz-cite-prefix">
<div class="x_moz-cite-prefix">
<p>For no reason other than guessing, I point to Guess C.
Recall that there was the big push at the USPTO maybe five
years ago to cut off some of Reed Publishing's most
lucrative contracts, namely the contracts for typesetting
and printing physical patents and physical trademark
registration certificates. The likely souring of the
relationship with Reed probably had knock-on effects. For
example the handling of incoming faxes at the patent
central fax number had been outsourced to Reed and now
there is a three-month backlog on the patent side with
handling of incoming faxes. <br>
</p>
<p>So what if Reed had, until say a year ago, been the
outsourced contractor for assignment of design codes? And
maybe now that has soured and maybe has been
(unsuccessfully) been brought back in-house.<br>
</p>
<br>
</div>
On 2/23/2025 8:08 AM, Ken Boone via E-trademarks wrote:<br>
</div>
<blockquote type="cite">
<div class="x_elementToProof"><span>From my </span><span>Some
Quality Control Checks/Suggestions Using Trademark Search</span><span> posting
yesterday, the search
</span><span><b>SN:( /<79000000-79399439>/ ) AND
MD:unknown AND LD:true</b></span><span>\u2002\u2002retrieved\u2002</span><span><b>456
</b></span><span>Madrid applications received at the USPTO
prior to 9 July 2024 that
<b><u>still have the UNKNOWN mark drawing code - that
Pre-Exam has yet to provide the appropriate mark
drawing code (and design codes) to those trademarks</u></b>,
some of which are likely already under examination.
Similarly, the search
</span><span><b>FD:[* TO 20240708] AND MD:unknown AND
LD:true NOT (SN:79* SN:89* )\u2002</b></span><span>retrieves
</span><span><b>41</b></span><span> US applications filed
prior to 9 July 2024 that still have not been processed by
Pre-Exam.</span></div>
<div class="x_elementToProof"><br>
</div>
<div class="x_elementToProof">It has been my experience that
if an EA gets assigned an application that Pre-Exam has
skipped, the EA may not bother to update the mark drawing
code or add appropriate design codes, as that is not their
job. Instead, the EA will often just look at the raw
application. I saw an application recently where the EA did
NOT notice that the GS entries from the application were
missing on TM Search and TSDR status listing and approved
the trademark for publication. The application then was now
stalled for further review, likely because the publication
review noticed the GS text was missing and could not be
printed in the OG. I dare say that application was one of
the applications that was retrieved by one of the QC
searches in my posting yesterday. </div>
<div class="x_elementToProof">\u2002\u2002\u2002</div>
<div class="x_elementToProof">Maybe now you now see some
significance for that QC Search posting?</div>
<div id="x_Signature" class="x_elementToProof">
<div><br>
</div>
<div>Ken Boone</div>
</div>
<hr tabindex="-1">
<div id="x_divRplyFwdMsg" dir="ltr"><b>From:</b> E-trademarks
<a class="x_moz-txt-link-rfc2396E"
href="mailto:e-trademarks-bounces@oppedahl-lists.com"
moz-do-not-send="true">
<e-trademarks-bounces@oppedahl-lists.com></a> on
behalf of Keller, Scott via E-trademarks
<a class="x_moz-txt-link-rfc2396E"
href="mailto:e-trademarks@oppedahl-lists.com"
moz-do-not-send="true">
<e-trademarks@oppedahl-lists.com></a><br>
<b>Sent:</b> Sunday, February 23, 2025 6:50 AM<br>
<b>To:</b> <a
class="x_moz-txt-link-abbreviated moz-txt-link-freetext"
href="mailto:e-trademarks@oppedahl-lists.com"
moz-do-not-send="true">
e-trademarks@oppedahl-lists.com</a> <a
class="x_moz-txt-link-rfc2396E"
href="mailto:e-trademarks@oppedahl-lists.com"
moz-do-not-send="true">
<e-trademarks@oppedahl-lists.com></a><br>
<b>Cc:</b> Keller, Scott <a class="x_moz-txt-link-rfc2396E"
href="mailto:SKeller@wnj.com" moz-do-not-send="true">
<SKeller@wnj.com></a><br>
<b>Subject:</b> [E-trademarks] Delay in Design Code
Assignment
<div> </div>
</div>
<div lang="EN-US">
<div class="x_x_WordSection1"><span>Has anyone else noticed
that it is taking a long time for design codes to be
assigned. I just got a design code email on an
application I filed August 1, 2025. It seems to me this
used to happen within days or at least a week of
filing. This had an effect on other applications I
filed because I found with two other applications that,
while the application was in TSDR, I could not
prepopulate a Madrid application. I sent emails to
Trademark assistance and after I received the design
code designation email, the Madrid would prepopulate.
It is going to be an issue for Madrid applications if
this is the standard practice now to wait over 6 months
before issuing the design code designations and
prepopulation cannot occur until then. I know I can
just fill in the whole Madrid application, but that is
time consuming and can lead to errors that would not
occur with pre-population.</span>
<p class="x_x_MsoNormal"><span> </span></p>
</div>
</div>
<br>
<fieldset class="x_moz-mime-attachment-header"></fieldset>
</blockquote>
</div>
</blockquote>
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