USPTO Should Address Risks to Its Pendency Reduction Efforts for Trademark Applications

• Pages: 43-44
• Date: 01 June 2025
• Published date: 01 June 2025
• Author: Twinkle Dutta

LANDSLIDE June/July 2025

Published in Landslide, Volume 17, Number 4, 2025. © 2025 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion

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43

Twinkle Dutta

USPTO Should Address

Risks to Its Pendency

Reduction Eorts for

Trademark Applications

OIG Objective

In October 2024, the U.S. Department of Commerce Oce of

Inspector General (OIG) issued its f‌inal report following its audit of

the United States Patent and Trademark Oce’s (USPTO’s) manage-

ment of trademark pendency. In order to determine whether the

USPTO exercised eective oversight and management of trademark

pendency, the OIG conducted an assessment of the USPTO’s devel-

opment, monitoring, and reporting of pendency measures, as well

as the eectiveness of selected pendency reduction eorts.1

The USPTO tracks and annually reports the average time that

trademark applications are pending examination. Two pendency

measures are examined: f‌irst action pendency and total pendency.

First action pendency measures the average number of months

from the date of application f‌iling to the examining attorney’s f‌irst

oce action, and total pendency measures the average number of

months from the date of f‌iling to either notice of abandonment or

allowance, or registration for applications.2

OIG Findings

The OIG found that despite some forward movement in reducing

pendency from its highest levels, the USPTO must still improve

its oversight of trademark application pendency. The OIG found,

specif‌ically, that (1) the USPTO missed its pendency targets for

multiple years and failed to provide sucient information in its

reporting of pendency goals and results, and (2) the USPTO’s projec-

tions of future pendency reduction may be unachievable.

3

The OIG

added that weaknesses in the USPTO’s procedures for establishing

pendency targets and in some of its pendency reduction initiatives

create the risk that trademark application pendency will continue

at high levels longer than projected.4 Notably, the USPTO’s lack of

adequate long-term strategic objectives and workforce plans makes

it vulnerable to changes in application f‌iling trends. Without further

action, the USPTO may not meet applicants’ needs for pendency

levels that contribute to their making timely business decisions.

USPTO Missed Pendency Targets

Since at least f‌iscal year (FY) 2007, the USPTO had set f‌irst action

pendency goals at less than 3.5 months. In FY 2019, the USPTO

exceeded this goal with an actual f‌irst action pendency of 2.6

months. Similarly, in FY 2020, the f‌irst action pendency target

was set for 3.5 months, and the USPTO exceeded this goal with

an actual f‌irst action pendency of 3.0 months.5

In 2020, as the COVID-19 pandemic began, the USPTO

expected trademark f‌ilings to drop in number. Instead, what

followed was a surge in applications, leading to unexpected

and signif‌icant increases in pendency. In FY 2021, trademark

f‌ilings increased by 28% compared with FY 2020, exceeding the

USPTO’s projection by 20%.

6

By FYs 2022 and 2023, f‌irst action

pendency was more than twice the USPTO’s long-standing f‌irst

action pendency goal of less than 3.5 months.

7

Despite having

raised f‌irst action pendency targets for FYs 2022 and 2023 to 4.5

and 6.5 months, respectively, actual f‌irst action pendency in FY

2022 was 8.3 months and increased to 8.5 months in FY 2023. In

FYs 2022 and 2023, total pendency targets were missed as well.8

The OIG reported that although the USPTO raised its pendency

targets repeatedly in response to the increase in applications

received, it did so without a clear explanation for the changes

to those targets. The OIG commented that this practice makes

it dicult for interested parties and the public to understand the

USPTO’s performance relative to its targets, its progress in attain-

ing pendency goals, and how it is managing its workload.9

Future USPTO Pendency Projections May Not Be

Achievable

The OIG found that the USPTO has taken actions to decrease

pendency in future years and assessed the eectiveness of the

tools used by the USPTO to adjust production capacity, namely,

overtime, production incentive awards, and hiring.

10

The OIG

determined that the USPTO’s production model likely overstates

the number of hours the USPTO’s attorneys will work in the future

and that the overall usefulness of overtime to increase production

may be limited due to salary caps and attorneys’ desire to maintain

a work-life balance.

11

In addition, the USPTO’s overestimation of

overtime hours may lead to the underestimation of the number of

new attorney hires needed to achieve pendency targets.

12

Further,

the OIG determined that production incentive awards are unlikely

to cause a signif‌icant contribution to higher production.13

The OIG examined eciency gains and found that additional

assumptions pertaining to production may not materialize. The

OIG assessed the USPTO’s estimation of an eciency gain among

examining attorneys from 1.5% to 3.1% between 2025 and 2029,

which the USPTO anticipated attributing to factors such as a

greater proportion of simplif‌ied applications and enhancements

to IT tools.

14

However, the OIG concluded that the eciency gains

cited by the USPTO are not estimated and validated with a clearly

def‌ined methodology, that there is internal disagreement regard-

ing the validity of the values assumed in the model, and that the

facts bear out that, in actuality, drags on productivity have been

reported and attributed to, among other near-term challenges,

new IT systems and increases in leave usage.15

In addition, according to the OIG’s study, the USPTO has not

met its trademark examining attorney hiring goals in recent years

Twinkle Dutta is [BIO].

OIG REPORTS IN BRIEF