[E-trademarks] Delay in Design Code Assignment

Sun Feb 23 15:53:26 UTC 2025

My guess is that it is related to this backlog in Pre-Exam:

Trademark Processing Times
Average
Target
Pre-Examination Unit
TEAS
196 days
10 days

https://www.uspto.gov/trademarks/application-timeline

Jessica R. Murray
(pronouns she/her/hers)
Director, Transactional Law Clinic
Associate Teaching Professor
Syracuse University College of Law

Zoom Link  https://syracuseuniversity.zoom.us/my/jessica.r.murray

T 315.443.4582  F 315.443.3636
jrmurray at syr.edu

Dineen Hall, 950 Irving Ave., Syracuse, NY 13244
law.syr.edu

Syracuse University
________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Sunday, February 23, 2025 10:33 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: Re: [E-trademarks] Delay in Design Code Assignment

Thank you Scott and thank you Ken for posting.

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.

  *   Guess A.  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.
  *   Guess B.  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.
  *   Guess C.  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.
  *   Guess D.  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.

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.

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.

On 2/23/2025 8:08 AM, Ken Boone via E-trademarks wrote:
From my Some Quality Control Checks/Suggestions Using Trademark Search posting yesterday, the search SN:( /<79000000-79399439>/ ) AND MD:unknown AND LD:true  retrieved 456 Madrid applications received at the USPTO prior to 9 July 2024 that 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, some of which are likely already under examination.  Similarly, the search FD:[* TO 20240708] AND MD:unknown AND LD:true NOT (SN:79* SN:89* ) retrieves 41 US applications filed prior to 9 July 2024 that still have not been processed by Pre-Exam.

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.

Maybe now you now see some significance for that QC Search posting?

Ken Boone
________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com><mailto:e-trademarks-bounces at oppedahl-lists.com> on behalf of Keller, Scott via E-trademarks <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Sent: Sunday, February 23, 2025 6:50 AM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com> <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Cc: Keller, Scott <SKeller at wnj.com><mailto:SKeller at wnj.com>
Subject: [E-trademarks] Delay in Design Code Assignment

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.

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