A typical trademark application takes about 7 months from filing to the issuing of a registration certificate (as of 2011) if the application does not run into any problems. An application with any issues is likely to take longer, more like 12-18 months, which is the estimate the Trademark Office gives.
Compared to patent applications, where applicants will sometimes have to wait four years for anything to happen, this is lightning quick action. However, it is still a long time for many business owners who would like some certainty before entering the marketplace with a new brand. Wouldn't it be great if there was a way to speed up the examination of your trademark applications? Well there is, but it can be taken advantage of only in limited situations.
Trademark Application Request to Make Special
Sometimes a trademark owner or trademark attorney slips up and allows a registration to expire inadvertently, by failing to file a declaration of continued use or renewal by a deadline. In those circumstances, the only remedy is to file a new application for the expired trademark registration.
However, while the application is pending, the expired mark will not be registered. The owner will be unable to use the ® symbol or take advantage of the other benefits of registration, such as federal court. An owner of an established brand would really like to have that registration back now, not in 7 months or more.
Fortunately, new applications for registrations that have expired inadvertently will be made special at the request of the applicant under TMEP § 702.02
. After the application is filed, a request to make special can be filed electronically at no cost and the application will be accelerated to the front of the line automatically. This reduces the time to registration by at least about three months.
Trademark Application Petition to Make Special
A petition to make special under TMEP § 1710
can be filed for any trademark application after it has been filed. A petition to make special must be accompanied by a $100 fee (as of the date of this post), an explanation of why special action is requested, and a statement of facts supported by an affidavit or declaration that shows that special action is justified.
Essentially, you have to show that you have a real need to get a registration quickly beyond the need that every trademark owner has to get on with business. Reasons that are typically accepted include the existence of actual or threatened trademark infringement, pending litigation, or the need for a registration as a basis for securing a foreign trademark registration.
While these will not apply to every applicant, they are common enough that brand managers and trademark attorneys should be aware of the option and requirements.
A granted petition to make special will accelerate a trademark application just like a request to make special, reducing the time to registration substantially.