Trademark Applications Can Be Expedited or “Special”

The US Patent and Trademark Office processes trademark applications in the order in which they are received. Before 2020, that led to wait time of about 3 months before an application would be substantively reviewed by a trademark Examiner. This year, examination has slowed a bit, and Examiners are taking about 4 months to initially review a trademark application.

This 3 to 4 month delay right from the outset can feel like an eternity (though it doesn’t even compare to the delays for patent applications, which can sit 1-2 years after filing before receiving examination). But you are usually stuck with it. There are only two procedures in which an application can be made “special,” so that initial examination will be expedited: requests to make special and petitions to make special.  Detailed information is below, and official USPTO information is available at TMEP 702.02.

Request to Make Special

A new 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 the request of the applicant. However, the applicant must be the prior registrant or the assignee of the prior registrant, the mark must be the same as the one in the cancelled or expired registration, and the goods/services in the new application must be identical to or narrower than the goods/services in the cancelled or expired registration. Because the request to make special is just a request and not a formal petition, there is no petition fee or other fee associated with the filing.

A request to make special must reference the trademark application serial number, so it can’t be filed contemporaneously with a new application. Instead, we file the application and then, after being award an application number, file the request. The electronic TEAS filing system has a form for these requests. This allows the designated office to receive and review the request, which improves processing time.

When completing the form, you must provide sworn statements regarding the new application and the old registration. For instance, you must provide: (1) the registration number for the prior registration; and (2) a specific statement explaining that: (a) the mark in the new application is identical to the mark in the cancelled or expired registration; (b) the goods/services in the new application are identical to, or narrower than, the goods/services in the cancelled or expired registration; and (c) the owner of the prior registration is the same as the owner of the new application.

Petition to Make Special

A Petition to Make Special can only be used when you need to expedite initial examination of an application because there is pending litigation, actual or threatened infringement, or the need for a registration as a basis for securing a foreign registration. There are special requirements, and these petitions require a great deal of care and attention when preparing. They also have a small filing fee associated with them ($100 at the time of this writing).