Wednesday, February 06, 2013

Expediting A U.S. Trademark Application

Ok, here's a scenario to contemplate:

A (new) client discovers that someone else is using their trademark for the same goods in the same marketing channels.  You then find out that the client's trademark is not registered with the USPTO. The client wants to know if they can 'rush' or expedite the registration because of the ongoing infringement of their common law trademark.

The answer is likely "Yes", under these circumstances, as is provided in Trademark Manual of Examining Procedure (TMEP) Section 1710, which provides as follows:

1. Petition to Make Special

The USPTO generally examines applications in the order in which they are received. A petition to make “special” is a request to advance the initial examination of an application out of its regular order.

"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 petition is reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy. The applicant should first file the application via the Trademark Electronic Application System (“TEAS”) at http://www.uspto.gov. The applicant should then submit a petition to make special that includes the newly assigned serial number. To ensure proper routing and processing, the Office prefers that the petition also be filed electronically. In TEAS, the Petition to Make Special form can be accessed by clicking on the link entitled “Petition Forms.”

Alternatively, the petition should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy at the following fax number: 571-273-0032. If the petition is submitted by mail, it should be submitted separately from the application, marked to the attention of the Deputy Commissioner for Trademark Examination Policy.

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. See TMEP §702.02 regarding the requirements and filing procedure for a Request to Make Special. 


* Basis for Granting or Denying Petition

Invoking supervisory authority under 37 C.F.R. §2.146 to make an application “special” is an extraordinary remedy that is granted only when very special circumstances exist, such as a demonstrable possibility of the loss of substantial rights. A petition to make “special” is denied when the circumstances would apply equally to a large number of other applicants.

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.

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. 


* Processing Petition

Each petition to make “special,” together with the petition decision, is made part of the record. If the petition is granted, the prosecution history of the application in the Trademark Reporting and Monitoring (“TRAM”) System will reflect that the petition for “special” handling has been granted."


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On the other hand, if there are no such exigent circumstances such as actual or threatened infringement, pending litigation, or the need for a registration as a basis for securing a foreign registration, then such a petition is unlikely to be granted.

It is also important to recognize that such a petition does not guarantee a registration.  Indeed, this petition initially only speeds up the elapsed time between the filing date and the examination of the application by the USPTO.  Should there be grounds for refusal or other technical issues raised by the USPTO Examining Attorney, then an Office Action will be issued. In other words, you may find yourself in a hurry up mode only to be slowed down.

In any event, the filing of a trademark application can be expedited under certain circumstances and the client that feels (and qualifies for) the need for speed may be able to make a good case for the granting of a Petition To Make Special as per TMEP Sec. 1710.

Respectfully submitted,


William E. Maguire, Esq.
www.TrademarkEsq.com

note: This blog posting is not intended as legal advice.

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2 comments:

Pushin Set said...

Thank you so much for this post.
I recently offered to help in the process of TM-ing and found myself reading through fascinating world of ® related laws, regulations, and pitfalls. I never though I'd be so drawn in to the subject of such intricacy - but it's truly amazing.
I wonder what are the possibilities of TM expedition if it's connected to patenting of technology?

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