How to Expedite Trademark Application: When and how can you speed up your trademark examination process?

Can you expedite a US trademark application?

The short answer is probably not unless you have a really good excuse. While it’s not impossible, bumping up a US trademark application can only occur under very limited circumstances. Actually, it is significantly more difficult to expedite a trademark application than a patent application. To speed up patent applications, you have options like Track One and Rocket Docket for utility and design applications, respectively. These patent fast track options typically require more fees and possibly a bit more upfront work.

In contrast, expediting a trademark application process requires a narrow set of special circumstances that will not apply to most applicants. In fact, the USPTO trademark manual even states that expediting a trademark application will not be available to most applicants. So this extraordinary remedy is limited by design. Absent such special circumstances, the USPTO examines trademark applications in the order they are received.

What are your options with a canceled or expired trademark registration?

A trademark application may be expedited if a trademark registration was inadvertently canceled or expired. To file a request to make special, the applicant must meet the following conditions.

First, the mark in the new application must be identical to the canceled or expired registered trademark.

Second, the goods or services in the new application must be identical or narrower than those in the canceled or expired trademark registration. In other words, you cannot add new items to the new trademark application that were not included in the old registration. You can subtract items from the old registration.

Third, the applicant filing the new application must be the same entity that owned the old registration.

While a petition to make special must be filed, no petition fee is required in this situation.

What other circumstances would support a request to expedite a trademark application?

For a fee, you can file a petition to make special to advance a trademark application out of turn. Such a petition will require evidence of very special circumstances, such as a demonstrable possibility of the loss of substantial rights. Such circumstances showing the possibility of the loss of substantial rights may include pieces of evidence related to:

  • concurrent litigation
  • government regulations showing that a trademark registration is required to secure governmental approval for the goods or services
  • cease-and-desist letters showing trademark infringement and/or threatened litigation

What situations would not support making a trademark application special?

To make a trademark application special, you really need to have unique circumstances showing loss of significant trademark rights. Here are some situations which would not support a petition to make special:

  • embarking on an advertising campaign
  • qualifying to sell goods or services on a particular website

Need to expedite your trademark application?

Reach out to US patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to explore how we can get your trademark registered with fewer delays.

How useful was this post? (Did you find the information you needed?)

Click on a star to rate it!

Thank you for rating my post!

We want to do better.

Could you tell us what was missing in our post?

Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

Follow us

Copyright © Vic Lin 2023