Making Trademark Applications “Special”


We tend to think that trademarks, in general, are pretty special.

However, a “special” trademark application has a … well … special meaning to the PTO.  The PTO normally examines applications in the order it receives them, which can take about three to four months.  That said, there are two ways to make an application “special” so that the PTO will pull the application out of order and expedite its initial examination.

A quick caveat:  Just because the PTO examines an application quickly doesn’t mean it has a better chance of getting registered.

Scenario 1:  You realize that your trademark registration inadvertently lapsed.  (Deep breaths.)  Perhaps a deadline was docketed incorrectly or there was a miscommunication about minding a portfolio during a transaction.  Whatever the reason, if the registration lapsed due to a mistake on your (or your counsel’s) part, it’s time to file a new application.  Consider also submitting what’s called a “Request to Make Special,” asking the PTO to advance examination of the application.

Keep in mind that a Request to Make Special is only appropriate if the applicant owned the cancelled registration or is an assignee of the prior registrant.  The mark in the new application must also be identical to the formerly registered mark and identify a description of goods or services that is identical to, or narrower than, the description in the cancelled registration.  (One piece of good news:  No PTO fees are required to submit this request!)

Scenario 2:  You may lose rights in your brand if you don’t obtain a registration quickly.  For example, someone is infringing, or threatening to infringe, on your brand, or you need to secure a foreign registration.

Here, it might be a good idea to file a new application accompanied by a “Petition to Make Special.”  Like a Request to Make Special, this petition asks the PTO to speed up the initial examination of an application.  A petition requires a little more legwork, though – it must include the reason for expedited examination, supporting facts and a fee.

The PTO only grants these petitions under pretty extraordinary circumstances.  If your situation applies to a lot of other applicants, the PTO may not consider special treatment necessary.

This entry was posted in Trademark Portfolio Management, Trademark Prosecution, USPTO.
Date Published: October 26, 2018
Kelly M. Horein is an associate on the Trademarks team of the firm’s Intellectual Property Practice Group. Kelly’s practice encompasses all aspects of brand management, including domestic and international trademark clearance, registration, and enforcement. When litigation is necessary, Kelly assists clients with disputes, including trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, and trademark litigation in federal court. In addition, Kelly prepares and negotiates intellectual property agreements, counsels businesses on website development and social media issues, and assists them with assessing product packaging for compliance.