Compelling Reasons To Consider Expediting Trademark Registrations

Resources & Self-Education   |   Thursday, October 18, 2018

Compelling Reasons To Consider Expediting Trademark Registrations
By Tomasz R. Barczyk, Associate
Kronenberger Rosenfeld, LLP

Trademark infringement can have a devastating effect on e-commerce merchants, particularly early-stage retailers.

E-commerce marketplaces like Amazon provide robust tools to fend off trademark counterfeiting attacks. But, to access those tools, businesses must obtain federal registration of their trademark or service mark. Unless a business is compelled to enforce their mark against others, the high costs of registering a mark typically discourages businesses from apply for it. Registering a trademark is an expensive process that typically discourages early stage retailers to apply for it. Until, that is, their mark is threatened. By then, the stakes are even higher.

Waiting for the U.S. Patent and Trademark Office (USPTO) to make a trademark decision can mean significant financial losses when a company has been targeted by a counterfeiting operation. Even in the best circumstances, it can take eight to twelve months to receive registration approval. In the face of a one-year approval process, businesses sometimes opt for an expedited registration process.

Even if the USPTO grants an expedited registration, it’s important to carefully consider the USPTO registration process before deciding to expedite it.

Once an application is filed, it’s assigned to a trademark examiner who examines the application in the order received. The current USPTO estimate is about three months between filing and the commencement of an examination. But the actual length of time this takes depends heavily on the examiner’s workload.

This is where fast-tracking comes in. Instead of the application being processed in the order received, fast-tracking jumps ahead of all “regular” applications in the queue. Think TSA Precheck. So, instead of being delayed, the application can be in front of an examiner in as few as two weeks.

If there are no issues, an application could proceed to publication within a month of filing the petition to expedite.

Although the benefits of obtaining expedited treatment are clear, an applicant who seeks it bears the burden of demonstrating why it’s needed and why it’s justified, typically by way of a declaration submitted to the USPTO.

Since an expedited treatment is considered “an extraordinary remedy,” such a petition is “granted only when very special circumstances exist.” TMEP § 1710.01. Although the USPTO does not define exactly what this entails, it cautions that petitions are denied when the circumstances asserted by the applicant “would apply equally to a large number of other applicants.” Therefore, the number of applications eligible for expedited treatment is necessarily low.

Fortunately for trademark owners facing infringement, these petitions are often granted when an applicant can demonstrate actual—or even threatened—infringement of its mark. And because of the exclusive nature of the option, fast-tracking allows an applicant to take steps to thwart the infringement sooner. Even though an expedited application might have wait behind other expedited applications, the wait will be significantly less than the regular process.

When facing this decision, it is important to understand what an expedited application does not do:  it does not accelerate any period of the application process, including the examination and opposition period; it does not increase the possibility that an examiner will find the mark registrable, nor decrease the likelihood that a third party will oppose the mark; and it does not excuse an applicant from any registration requirements. So, if an application is about to be reviewed by an examiner, or is unlikely to result in registration, expediting might not be worth the investment.

An e-commerce business might be reluctant to spend more money on an expedited registration process. But, there’s a compelling argument here. Obtaining a registration via expedited means could be the difference between keeping or losing your business, especially during the critical startup phase.

Kronenberger Rosenfeld has successfully dealt with many trademark infringement disputes. If your company has been the target of a counterfeiting operation, please contact us. The future of your business could be at stake.

This entry was posted on Thursday, October 18, 2018 and is filed under Tomasz Barcyzk, Internet Law News.

Karl S. Kronenberger

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