Can a Trademark Application Be Expedited?

For most businesses, the 8-12 month wait time from filing a trademark application to getting registered with the USPTO can feel like an eternity. 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.

To expedite the examination of your trademark application, you must file a petition with the USPTO requesting special treatment of your application. This Petition to Make Special must be filed after you file your trademark application but before the initial examination. This usually applies when the applicant is facing the potential loss of substantive trademark rights. The applicant has to demonstrate special circumstances in order for the Petition to be approved. Some examples of circumstances that might qualify for a Petition to Make Special, resulting in an expedited review process, are:

• Actual or threatened infringement of your trademark
• Pending litigation
• The need for a USPTO registration in order to secure a foreign trademark registration
• The need to record your trademark with U.S. Customs in order to stop counterfeiting
• The need to file a UDRP (Uniform Domain-Name Dispute-Resolution Policy) proceeding
• The need to take down infringing online or mobile content

When a Petition to Make Special is filed and approved, the initial trademark review process goes from several months to several weeks. But just because you can file a petition to expedite the processing of your application, does not mean that you should. The decision of whether or not to file a petition is often a judgment call that should be made based on sound experience. You need to examine whether or not it would be advantageous in light of other factors.

Here are a few of the things that should be considered before making that decision:

• Is there a sufficient budget to afford the extra expense for filing the petition?
• Is the petition to expedite likely to be granted based on the circumstances and available evidence?
• Has litigation involving the trademark already commenced and if so how long has it been pending?

Want to see if your trademark application can be expedited? Reach out to us today.