What Is an Expedited Trademark?
Getting an expedited trademark is a way to shorten your trademark application, which is around 8-12 months from the time of filing to completed registration.3 min read
Getting an expedited trademark is a way to shorten the length of your trademark application, which can normally run 8-12 months from the time of filing to completed registration. The length of this wait can seem like an eternity for many businesses.
There are limited circumstances in which a trademark application can be expected to allow for the registration process to be completed significantly faster. Under normal circumstances, the United States Patent and Trademark Office will process each application in the order it receives them unless you are granted a special circumstance that allows for expedited processing. The petition to grant the expedited service requires a $100 fee.
Ways to Accelerate the Examination of Your Trademark Application
To file for an expedited examination of your application, you must file a Petition to Make Special with the USPTO after you file your application but before the beginning of the initial application. When filing your petition, you will want to make sure to include:
- A statement of the facts as to why your application should be considered for special treatment.
- Facts that demonstrate the possibility of trademark infringement, litigation issues, or requiring U.S. registration to gain a foreign trademark registration.
- Evidence that the applicant will suffer a loss if the application is not processed faster.
It is essential to remember that situations or circumstances that would apply to a broad number of companies will unlikely be sufficient for the USPTO to grant special circumstances.
Things You May Need to Consider Before Filing a Petition to Make Special
Just because you want your application to be processed faster does not mean that it should be. Filing a Petition to Make Special should be a judgment call made after weighing the facts and making a sound decision. When making your decision, you should always determine if filing will be advantageous when all factors were taken into consideration. Before making a final decision regarding filing, you should answer the questions:
- Do you have the additional budget to pay for expedited filing?
- Do your evidence and circumstances likely warrant a special situation?
- Has litigation regarding your trademark begun?
- What burden of proof do you have associated with your trademark?
- Is the trademark highly suggestive or descriptive?
- How long have you been using the trademark?
When determining whether you have the funds to expedite, you should also decide if the expedited process is worth the additional expense. Additionally, if there are factors in your petition that may make denial likely, it is probably best to save funds for another use.
It is also important to note that if the trademark is descriptive or highly suggestive, there may need to be additional evidence submitted to prove that it is distinctive, which can be an extra added expense.
The Trademark Opposition Process
There is a specialized legal proceeding that asks the question of whether or not your trademark should be allowed to be registered. This process is called the trademark opposition process. It is essential to understand the process as many smaller businesses will mistakenly assume that they will inevitably lose against a large corporation.
Statistically, only about 1 in 1,000 trademarks will go to any type of specialized proceeding before the Trademark Trial and Appeal Board. Yet, if you are faced with opposition to your trademark, it is best to weigh your options and determine whether or not possible legal proceedings are worth the trademark.
How Trademark Opposition Process Works
During the pre-grant stage of the trademark approval process, the trademark will be published for everyone to see. Other brands will regularly monitor these releases to make sure there is no potential threat to their trademarks.
If the company feels that your trademark is too similar to theirs, they are likely to file an opposition to your application. There are two categories that grounds for opposition can fall under:
- Absolute Grounds: Under these grounds, the opponent feels they would be able to prove deceptive misdescriptiveness, genericness, inappropriate usage, or fraud.
- Relative Grounds: Under the opposition of relative grounds, the opposing party believes that they can prove that an inappropriate usage is possible, due to confusion with a similar trade name already in use.
An opposition can be filed from one to three months after release, depending on the jurisdiction of the filing
If you need help with getting an expedited trademark, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.