To protect your trademark, you have to file a trademark application with the USPTO. The trademark application can be expedited by filing a petition to make special. By filing the petition to make special, your trademark application is examined out of turn. Your trademark application will be examined about 2 to 4 months after it is filed.
How to file a petition to make special in a trademark application?
To file a petition to make special, you must submit:
- a $250 fee must be paid to the USPTO;
- an explanation of why special action is requested; and
- a statement of facts and supporting evidence that shows special action is justified.
You can find the petition to make special forms on the USPTO website. The Trademark Manual of Examining Procedure Section 1710 has additional information for you as well.
You must show why your trademark application deserves special treatment. For example, if the trademark is involved in pending litigation, the trademark is related to potential litigation, or the trademark registration is required to secure governmental approval, then the trademark office may grant the petition to make special.
A need to get on the Amazon Brand Registry is not a valid reason for expedited treatment of your trademark application.
Without the Petition to Make Special, a trademark application is examined in the order it was received by the United States Patent and Trademark Office (USPTO). The USPTO typically takes about 9 months to work through its backlog of applications and examine your patent application.
Is it worth it to file the petition to make special?
In general, it isn’t worth it to expedite your trademark application unless you have a valid reason. Your trademark registration may be challenged when you are asserting it against the competition.
When you file the petition to make special, you have to submit that petition with a verified statement. In the verified statement, you make a statement that says that you need your trademark application examined sooner than others. If the petition contains any false statement, your trademark registration will be invalidated.
You may be able to convince the trademark office to grant the petition. But, when you sue a competitor for trademark infringement, the defendant will review the documents you submitted and question whether you were lying to the trademark office.
Your registered trademark will be invalidated if the court decides you were lying to the trademark office.
You may spend significant sums of money defending your trademark registration. You may have received your trademark registration faster but was it worth it to spend money during litigation to defend your petition to get your trademark registration a few months earlier.
In my opinion, it isn’t worth getting a registration sooner by a few months only to spend money defending your position during litigation. For example, you might try to convince the trademark office to expedite your trademark registration so that you can get on the Amazon brand registry faster. But the cost to litigate whether your peitition to make special was legitimate does not justify filing the petition to make special.
Now, if you do have a situation where it’s clear that you qualify for expedited treatment of your application and it’s worth possibly having to defend your petition and that you weren’t lying, then in my opinion, filing the petition may be worthwhile.