Seattle Trademark Lawyer

The U.S. Patent and Trademark Office usually examines applications for trademark registration in the order in which they are received.

This means that even if you have priority of rights, your application will be denied if someone filed an application before you for which your trademark is likely to cause confusion — even if the prior filer only beat you by a few minutes or a few days. In such a case, you’d normally need to oppose the prior-filed application to block it (if the application is still pending) or petition to cancel the registration (if the registration has issued).

However, a narrow exception exists. If you are involved in actual or threatened infringement, pending litigation, or have a need to register your trademark in order to secure a foreign registration, for $100, you can petition to make your application “special.” If accepted, your application is given expedited treatment and leap-frogs prior filings.

An application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired will be made “special” upon request. No petition is required.  

Being on the verge of launching an advertising campaign, however, doesn’t cut it.

This little-known device can avoid the need for procedural acrobatics. Why wait for a prior-filed application to be published or go through the pain of opposing it if you don’t have to? The smart answer is that you shouldn’t — as long as you’re “special.”