Pryor Cashman Partner Dyan Finguerra-DuCharme, co-chair of the Trademark Practice, spoke with Managing IP about the impacts of US Patent and Trademark Office (USPTO) delays in examining trademark applications.
In "Firms advise client caution amid USPTO examination delays," Dyan discusses how the delays are changing her advice to clients:
Because of the wait times, some firms are advising clients to steer clear of a 'wait-and-see' approach, even if they recommended that approach in the past.
Dyan Finguerra-DuCharme, co-chair of Pryor Cashman's trademark group in New York, says clients who were not in a rush to go market quickly used to be able to file for a mark that could potentially face registration difficulties and see whether the USPTO would object.
If the USPTO rejected the application then they could opt for a different mark.
"Now you can no longer take a 'wait-and-see-approach'," she says. "The advice I'm giving to clients now is definitely tempered by the delay."
She notes that she might sometimes advise clients that they're unlikely to get sued if they use an applied-for mark in the marketplace but that the USPTO is likely to reject it.
She also notes that the USPTO delays are changing how she pitches to new clients:
In fact, wait times are actually becoming part of early-stage conversations – even when they're not such a good thing for clients.
Finguerra-DuCharme at Pryor Cashman says this is especially important when pitching work to start-ups because advice often centres around coming up with a name for their new companies.
"It does affect how I'm pitching for business because I have to give them the reality of how things have changed to get a registration in the US," she says.
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