Many business-owners wonder: Are there any special routes to getting a trademark application expedited after it has been submitted to the U.S. Patent and Trademark Office?
And we get it! As trademark applicants are finding out, the time between filing an application and getting a trademark registration certificate keeps getting longer and longer. Of course, the registration process has many steps: (1) application; (2) examination; (3) office action, for some; (4) approval and publication; (5) proving use for “intent to use” applications, and finally (6) registration. But even for those applications that are approved upon first examination, the time between the application and examination steps now accounts for about 80% of the wait.
A few years ago, the trademark office was able to review and examine your application in about 4-6 months. Today, due to a COVID-sparked backlog of applications, and an influx of trademark applications from China, the trademark office shoots to complete examination within 8.5 months, and 9-10 months is not unusual! The USPTO’s target time for completion of the entire process is now 14.5 months, well over a year.
So what can you do to speed it up? Is there an expedited trademark application process?
Except in extraordinary circumstances, discussed below, there is not much we can do to make the USPTO itself go faster, but we can be smart and efficient on the front end, heading off many roadblocks in advance. Here are some ideas:
Trademark Searching to Prevent Unanticipated Delays
Receiving an “office action” refusal can stop your application in its tracks. And the granddaddy of all office actions refuses your application because it is “likely to be confused” with another, earlier-filed application or registration already in the database. The trademark office is essentially telling you your mark is already taken. You have three months to respond to the office action, and after receiving your response, the trademark office may take another couple of months to consider it. So it’s a time-suck for sure!
As explained in our trademark FAQs (#12), there are many options for dealing with a “likelihood of confusion” refusal, but best of all—and saving you time and money in the long run—is avoiding that refusal from the beginning! A trademark search can tell you whether a mark is available for use and registration, or whether there are other marks that may block your proposed use or application. Our search results give clients a table showing the closest prior-filed marks in their field. If, in our experience, one of these presents a risk, we work with our client to find an application strategy that is likely to succeed without delay, though it may involve tweaking or changing the mark.
Our searches also assess the risk your mark may be refused as “descriptive” because the trademark too closely describes the goods or services you’re selling. Even worse than a delayed application is finally getting to the examination stage only to find you need to start all over! Trademark searching is your best defense.
Starting TheTrademark Application Process With Your Ducks In A Row
Not all office actions are major roadblocks! Some contain more “technical” refusals. These are easier to deal with, but they still put your application on pause. The trademark office might ask you to re-word the description of goods or services in your application, provide a different type of address, or replace your “specimen” (a photo or website link proving your use of the trademark) with one that is formatted differently. Knowing, from the beginning, what the trademark office is looking for can help head off these minor—but still time-consuming—obstacles.
The best way to avoid common “technical” traps is to talk to a lawyer who has seen it all. Our firm has filed thousands of applications, and we personally work with each client to vet every component of your application and find the description, address, or specimen that will work the first time. We emphasize efficiency by providing a questionnaire designed to obtain all of the information we need to prepare the best possible application, and we follow up on each detail until it's just right. If you have all your information handy, and respond quickly to our emails, we can go from questionnaire to trademark application within days.
Programs Like Amazon’s IP Accelerator Give You the Privileges of Registration Early
Some large e-commerce retailers got tired of waiting for the trademark office to get around to examining those applications! They developed programs that provide sellers on their sites with many of the benefits of trademark registration based only on an application if filed through particular firms. Amazon’s IP Accelerator program gives sellers early access to “Brand Registry” enhanced brand content (product detail pages, sponsored brands, a “store” within the site) and the ability to enforce their trademark rights against copycats on the site, just by filing an application through a firm like ours, and then enrolling the brand with Amazon. Sellers can then enjoy the benefits of Brand Registry during the year or more their application will be pending at the USPTO, which makes the waiting a lot easier.
Using A “Petition To Make Special” to Expedite Examination of Your Application
The only way to speed things up at the USPTO itself is to file a “Petition to Make Special” with the Director, asking the trademark office to put your application ahead of the others in line. This is a so-called “extraordinary remedy,” granted only in the case of “actual or threatened infringement or pending litigation over ownership or use of the mark in the application.” It requires a detailed supporting declaration attaching evidence showing the infringement and your efforts to stop it, including demand letters and even filing a lawsuit, when possible.
Note: even if your petition is granted, it will only reduce the time between the application filing and first examination of your mark. The petition will not expedite the second stage of review (another 4-6 months). Still, if your business is losing serious revenue because of trademark infringement you have had to litigate to try to stop, a Petition to Make Special is better than nothing! Let us know if we can help.
So can you file an “expedited trademark application” with the USPTO? Not really. But, working with an attorney, you can develop a strategy to get your application through the examination process cleanly and without unnecessary delay. And that we can do quickly and efficiently.