Trade mark applications filed with the US Patent and Trademark Office
are typically reviewed by an examining attorney in the order in which
they are received. In practice, this means that a trade mark applicant
would usually not expect to receive any action on a newly filed
application for approximately three to four months from the filing date.
Although certain rights are conferred to an applicant upon filing, in
certain instances special circumstances may exist in which an applicant
requires that its application receive priority in the order in which it
is reviewed. With those needs in mind, the USPTO has established a
procedure whereby a trade mark applicant can file a petition to make its
application "special" and reviewed faster than otherwise.
Trade mark owners should note that the USPTO considers designating an
application "special" to be an extraordinary remedy and, as the term
suggests, is only granted when very special circumstances exist. This is
typically where there is the demonstrable possibility of the loss of
substantial rights.
The most common situations where a petition to make "special" is
granted is where there exists actual or threatened infringement, where
there is a litigation pending or where the applicant needs a Certificate
of Registration issued faster so that it can be used as a basis for
securing a registration in a foreign jurisdiction. Special circumstances
cannot apply equally to a large number of applicants. For example, the
fact that an applicant is about to commence an advertising campaign is
not considered a justification for expediting a trade mark application
because this may apply to many other applicants.
Expediting the review of an application can be a very useful tool. In
order to file a petition to make an application "special", an applicant
must submit an explanation as to why special action is requested, a
statement of facts that shows that special action is warranted (which is
supported by a signed declaration) and an additional filing fee. A
trade mark applicant seeking special treatment would be wise to confer
with trade mark counsel regarding whether the application is entitled to
special treatment and the optimal approach for crafting the explanation
as to why special treatment is warranted.
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| Karen Artz Ash |
Bret J Danow |
Katten Muchin Rosenman LLP
575 Madison Avenue
New York, NY 10022-2585
United States
Tel: +1 212 940 8554
Fax: +1 212 940 8671
karen.ash@kattenlaw.com
www.kattenlaw.com