[E-trademarks] Delay in Design Code Assignment

Sun Feb 23 17:31:48 UTC 2025

It is true that both tasks (assigning design codes and examining 
trademark applications) are unacceptably backlogged.

But the way I look at it, they are not (or at least should not be) related.

"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.)

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.

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.

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.

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.

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.

On 2/23/2025 8:53 AM, Jessica R Murray wrote:
> 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
>
> ------------------------------------------------------------------------
> *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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