Generally, a trademark application can take anywhere from eight (8) to twelve (12) months for an application to officially register. However, the process can take longer, depending on several factors.
For example, let’s say we file an application on an intent-to-use (ITU) basis. We can keep the application alive for years while you begin using your mark in commerce. On-the-other-hand, an application may receive an office action, rejecting your application for many reasons that will require a response to overcome. All of which pushes the timeline further back.
Still, clients wonder if there is more than one can do to expedite trademark examination. However, the USPTO will not expedite trademark applications except in a limited number instances.
So When Can You Expedite Your Trademark Application Then?
There are two ways to expedite a trademark application. Both require filing a request or petition to do so.
Request to Make Special for Expedited Trademark Examination
An applicant who files for a new trademark application can request that their application be made special. Such a request will only be permitted if the new application is for a mark inadvertently canceled or expired. While no fee is required, the new application must “be identical to or narrower than the goods/services in the canceled or expired registration.”See TMEP § 702.02.
Petition to Make Special for Expedited Trademark Examination
Alternatively, an application can petition the Director of the USPTO to make their application special. If granted, the USPTO examines the application out of the regular order and essentially moved to the front.
However, the bar is extraordinarily high. The USPTO only grants the petition under special circumstances. Such “special circumstances” are in relation to the possibility of the loss of your rights in the mark. Such circumstances exist when:
- Infringement exists of the mark;
- Litigation is pending; or
- The registration is a basis to secure a foreign registration.
Note: File the Petition to Make Special after the application filing but before the initial examination.
In either case, Examining Attorneys “promptly examine any application that has been made special.” See Id.
The USPTO will not normally examine trademark applications out of turn. Using an experienced trademark attorney from the start can help avoid any unnecessary delays in the standard process. However, if you meet the USPTO’s high bar for “special” status, reach out to an attorney. An experienced trademark attorney will be able to go over the facts with you and counsel you on the best path forward to ensure your rights are protected.
You can petition to expedite if the mark is: (1) infringed; (2) subject to pending litigation; and/or (3) needed for a foreign registration.
Usually about 10-12 months. It can be expedited in certain situations (e.g., litigation or infringement).
At best you might save a month or two. The USPTO is diligent in processing trademarks. Expediting does not save that much time.