Do You Need to Expedite a Trademark Application?

Can a trademark application be expedited?

Trademark applications take, on average, 12 months from filing to registration. For most businesses, this feels like an eternity, but it is generally the amount of time needed to get a trademark registered.

In some limited circumstances, though, a trademark application can be expedited so that registration completes significantly faster. The U.S. Patent and Trademark Office (USPTO) usually examines trademark applications in the order in which they are received. Special circumstances must exist to get the USPTO to expedite an application.

How to accelerate examination of your trademark application

To expedite examination of your trademark application, you must file a petition with the USPTO requesting special treatment of your application.  This Petition to Make Special must be filed after you file your trademark application but before the initial examination.  A petition to make “special” must be accompanied by: (1) the fee required by 37 C.F.R. §2.6; (2) an explanation of why special action is requested; and (3) a statement of facts that shows that special action is justified. The statement of facts should be supported by an affidavit or declaration under 37 C.F.R. §2.20.

The explanation of why special action is requested should include:

• The statement should include facts that demonstrate actual or threatened trademark infringement, pending litigation, or the need for a U.S. registration as a basis for securing a foreign trademark registration;  (TMEP 1710.01)
• Evidence of possibility that the applicant will suffer loss of substantial rights if the petition is not granted.

The most common reasons for granting petitions to make “special” are the existence of actual or threatened infringement, pending litigation, or the need for a registration as a basis for securing a foreign registration.

The fact that the applicant is about to embark on an advertising campaign is not considered a circumstance that justifies advancement of an application out of the normal order of examination, because this situation applies to a substantial number of applicants.

An application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired will be made “special” upon applicant’s request. No petition is required in this situation.

If you or your business receive a cease-and-desist letter or a demand letter, for example, from another party asserting trademark rights and that trademark is a common-law, unregistered mark, then filing the Petition to Make Special in order to expedite the application is the right step to take.