Compelling Reasons To Consider Expediting Trademark Registrations

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

Compelling Reasons To Consider Expediting Trademark Registrations

Trademark infringement and counterfeiting can have a devastating effect on companies launching new brands as well as early-stage retailers.

E-commerce marketplaces like Amazon provide robust tools to fend off trademark counterfeiting. However, to access those tools, businesses must provide Amazon with proof of a federal registration of their trademark and/or service mark, which is easier said than done. Stated differently, businesses may have little, if any, opportunity to stop trademark infringement or counterfeiting in some online marketplaces, unless the businesses have their trademark registered.

For many early-stage businesses, the decision of whether or not to register a trademark can be difficult. Money spent on registering a mark may result in less money spent on marketing and advertising. Many small and startup businesses choose to forego registering their trademarks at the early stages of their development in an effort to save or focus on more imperative costs. This strategy appears sound, until, a business’s mark is threatened by infringement. At that point, the stakes of brand protection are even higher. 

Waiting for the U.S. Patent and Trademark Office (USPTO) to register a trademark 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 approval for your trademark to proceed to registration. In the face of a one-year approval process, it may be prudent for your business to consider filing for an expedited registration process.

However, it is important to consider the overall registration process before deciding whether or not to file an expedited application. Once an application is filed, it is assigned to a trademark examiner who reviews 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. Under 37 C.F.R. § 2.146, a trademark applicant may file a petition invoking the supervisory authority of the Director to make an application “special.” “A petition to make ‘special’ is a request to advance the initial examination of an application out of its regular order.” See TMEP § 1710. Accordingly, if the petition to make special is granted, then the initial examination of the trademark application is expedited. Instead of the application being processed in the order received, it 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 can proceed to publication within one 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 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. Circumstances that merit expediting an application include “the existence of an actual or threatened infringement, pending litigation, or the need for a registration as a basis for securing a foreign registration.” See TMEP § 1710.01.  According to the Deputy Commissioner’s Office, other common circumstances include (1) the need to record a trademark registration with U.S. Customs to stop counterfeiting; (2) the need to file a UDRP (Uniform Domain-Name Dispute-Resolution Policy) to stop cybersquatting; and (3) the need to take down infringing online content or an infringing mobile app.

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 to 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 periods; 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 you have already filed an application that will soon 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. By understanding their benefits and limitations, businesses can make effective and efficient use of Petitions to Make Special to obtain expedited review of trademark applications.

Kronenberger Rosenfeld prepares and files trademark applications for clients. The firm also 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 article has been updated.  Original article was written by Tomasz Barczyk 

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




Kelly Mulcahy
Associate




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