Westchester Women's Bar Association

Trademark Applications That are Designated 'Special'

Trademark applications once filed at the United States Patent & Trademark Office ("USPTO") are assigned for examination based on the order received, unless the application is designated as "special". If the application is made "special" it will be expedited. One circumstance where the application will be marked "special" is if the registration was inadvertently cancelled or expired under 15 U.S.C. §1058, §1059 or §1141(k). The new applicant must be the prior registrant or assignee of the prior registrant. No petition fee is necessary. The trademark in the new application must be identical to the prior mark. The goods and services in the new application must be identical to or narrower than the identification in the prior registration. The process requires the applicant to file the new application in the Trademark Electronic Application System ("TEAS"). Then the applicant can also file a Request to Make Special with TEAS as well. Be sure to include the newly assigned serial number and the number of the cancelled registration. The Office of the Deputy Commissioner for Trademark Examination Policy will review the Request to Make Special.

The second circumstance where you may expedite handling through a Request to Make Special is where there has been inconsistent treatment of pending applications or recent registrations. The following requirements must be met: (1) the request is based on co-pending applications or an application and a registration with the same owner or a successor in interest; (2) the registration was issued within one year of the date of the request; (3) at least one of the applications is pre-publication status at the time the request is made; and the allegedly inconsistent treatment must have occurred. The applicant must include a description of the alleged inconsistent action and a list of the application(s) or registration(s) involved. The Office of the Deputy Commissioner will take action within four to six weeks from the date of the request. Of course, applicants are encouraged to address any issues of inconsistent treatment with the Examining Attorney before filing a Request to Make Special.

To attempt to reduce the instances of inconsistent treatment the USPTO has implemented a system where it will assign companion applications automatically to the same Examining Attorney. The term "companion applications" means pending applications filed by the same applicant during a period of approximately three months. Companion applications will include marks on the Principal and Supplemental Register, both use and intent to use marks and applications that were revived or reinstated. A maximum of ten applications will be assigned to the same Examining Attorney. This system places the burden on the applicant to closely monitor the actions at the USPTO.

Keep in mind that if the applicant filed another application that has already matured to a registration, the pending applications do not have to be examined by the same attorney. Also, if another Examining Attorney reviewed the prior registration of the applicant and had a difference of opinion with the current Examining Attorney, do not think you can persuade the current Examiner to change his mind simply by citing the prior Examiner's opinion. The USPTO is not bound by the decisions of Examiners who reviewed the applications for the applicant's previously registered marks, based on different records.

If the applicant submits a new application and it is deemed "special" this will not predict or guarantee that the mark will be permitted to register the second time around. There are various reasons why the mark could now be refused. One reason was referenced in the prior paragraph. Assuming you now have a different Examining Attorney evaluating your application, this attorney could have a difference of opinion with the prior Examiner. Even if no new similar marks were filed, the new Examining Attorney can refuse the applicant's mark on likelihood of confusion grounds with a mark that the first Examining Attorney did not view as a conflict. If this occurs, an Office Action will be issue as it would in any other trademark prosecution on 2(d) grounds. If you have questions concerning "special" applications, or other trademark related questions, please feel free to contact our office for a courtesy consultation.

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