Expediting a Trademark Application

Clients commonly ask how long it takes for a trademark registration to issue after filing a trademark application. Of course, the answer is that it depends, because each trademark application will have its own unique issues. What is more, each examining attorney from the U.S. Patent and Trademark Office will have his or her own personality and so it may be more or less difficult to convince one examining attorney that your client’s mark should be allowed for registration than another examining attorney. The classic example is when arguing that a mark is suggestive rather than descriptive, an oft subjective determination upon which reasonable minds may disagree.

Nonetheless, there are some general timelines that may be seen. For example, an examining attorney is usually not assigned to examine a trademark application for at least three months. It is common to receive an office action or to see some other action taken on the application between about four and six months after the filing date for the application. The time from filing a trademark application until issuance of a trademark registration, except in particularly challenging cases, is commonly between about eight and twelve months.

But to a business driven by a competitive market, eight to twelve month to obtain a trademark registration may seem like an eternity. Abraham Lincoln, playing off an old English maxim, once stated “Good things come to those who wait, but only the things left over by those who hustle.” In today’s competitive business world, Lincoln’s words could not be truer; and, when it comes to securing a brand, businesses often want assurance today, not in eight to twelve month. So, one might ask “is there anything that can be done to expedite a trademark application?”

The answer is yes, but only in limited circumstances. The USPTO usually examines trademark applications in the order in which they are received. However, under 37 C.F.R. § 2.146, an applicant may file a petition invoking the supervisory authority of the Director to make an application “special.” “A petition to make ‘special’ is a request to advance the initial examination of an application out of its regular order.” See TMEP § 1710. Accordingly, if the petition to make special is granted, then initial examination of the trademark application is expedited.

A request for expedited examination of a trademark application is an extraordinary remedy; consequently, a petition to make “special” will only be granted when very special circumstances exist. Circumstances that merit expediting a trademark application include “the existence of actual or threatened infringement, pending litigation, or the need for a registration as a basis for securing a foreign registration.” See TMEP § 1710.01. The applicant should provide evidence of a possibility that the applicant will suffer loss of substantial rights if the petition is not granted. This is commonly done by way of declaration, which is provided for in the online form provided by the USPTO.

It is important to note when submitting evidence that “[a] petition to make ‘special’ is denied when the circumstances would apply equally to a large number of other applicants.” See TMEP § 1710.01. For example, embarking on an advertising campaign is not considered extraordinary circumstances that justify expediting examination, because the same circumstances apply to a substantial number of other applicants. See Id.

A trademark attorney evaluating whether or not to file a petition to make special should consider not only whether its client has “extraordinary circumstances,” but also whether or not it would be advantageous in light of other factors. Other factors to consider may include whether litigation has already been commenced, whether and to what degree the mark is descriptive, how long the mark has been in use, burdens of proof and potential judicial biases in respective forums, etc. Even if your client’s circumstances would permit expediting the trademark application, an evaluation of other factors may suggest that filing a petition to make special is not in your client’s best interest.

A good trademark attorney should always do a thorough analysis and look beyond the simple delight of having a trademark application expedited. In the end, what is most important is your client’s best interest. Expediting a trademark application may not always serve that interest or be the best solution for protecting your client’s brand.