For small and startup businesses, the decision of whether or not to register a trademark can be difficult. Often, the decision is weighing where to spend scarce capital. Money spent on a trademark application may be money spent on marketing instead.
Many young companies choose to forego registering their trademarks at early stages in the companies’ development. So, when new clients ask how long it takes to get a trademark, it is often because they waited to register their marks and now they need a registration fast. But is that even possible?
Can a trademark application be expedited?
Trademark applications commonly take 8-12 months from filing to registration. For most businesses, this feels like an eternity, but it is generally the amount of time needed to get a trademark registered.
In some limited circumstances, though, a trademark application can be expedited so that registration completes significantly faster. The U.S. Patent and Trademark Office (USPTO) usually examines trademark applications in the order in which they are received. Special circumstances must exist to get the USPTO to expedite an application.
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How to accelerate examination of your trademark application
To expedite 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.
The petition should include:
- A statement of facts demonstrating why your application merits special treatment;
- The statement should include facts that demonstrate actual or threatened trademark infringement, pending litigation, or the need for a U.S. registration as a basis for securing a foreign trademark registration;
- Evidence of possibility that the applicant will suffer loss of substantial rights if the petition is not granted; and
- The statement and evidence is commonly done by way of declaration, which is provided for in the online form provided by the USPTO.
It is important to remember that facts or circumstance that would apply equally to a large number of other applicants will not be sufficient for the USPTO to grant your petition.
Things to consider before filing a Petition to Make Special
Just because you can file a petition to expedite processing of your application does not mean that you should. The decision whether or not to file a petition is often a judgment call that should be made based on sound experience. An analysis should be done regarding whether or not it would be advantageous in light of other factors.
The following factors are a few of the things that should be considered before making a decision:
- Is there 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 commence and if so how long has it been pending?
- What are the burdens of proof and potential judicial biases in respective forums evaluating rights associated with the trademark?
- Is the trademark descriptive or highly suggestive?
- How long has the trademark been in use?
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Obviously, if your business doesn’t have funds for the extra expense of filing a petition to make special, then no more analysis needs to be made. But if you do have the funds, then you will also want to consider whether using them to expedite a trademark application will bring a return on investment.
If the benefits of expediting an application are moderate but the likelihood that your petition will not be granted is high, you may not want to gamble your money. You should also consider that an examining attorney at the USPTO may feel inclined to be more rigorous in his or her examination of your application in view of pending litigation knowing that the registration will immediately impact a third-party’s rights.
This risk increases when the trademark is highly suggestive or descriptive and you may be required to submit additional evidence to establish acquired distinctiveness. Preparing this evidence can often be costly, so it's vital that you weigh the benefits before taking the costly risk.