“Special” Applications

While the USPTO normally processes applications in the order

in which they are received, there are two procedures whereby an application can be made

“special,” so that initial examination will be expedited.

Request to Make Special - Registration

Inadvertently Cancelled or Expired Under

15 U.S.C.

§1058

,

§1059

, or

§1141k

.  A new application for registration of a

mark that was the subject of a previous registration that was inadvertently cancelled or

expired under

15 U.S.C. §1058

,

§1059

, or

§1141k

will be made special upon the request of the applicant if

the applicant is the prior registrant or the assignee of the prior registrant.  No

petition fee is required in this situation.  However,

the mark in the new

application must be identical to the mark in the cancelled or expired registration,

and the goods/services in the new application must be identical to or narrower than

the goods/services in the cancelled or expired registration.

A request to make an application special because a

registration was inadvertently cancelled is reviewed in the Office of the Deputy

Commissioner for Trademark Examination Policy.  The applicant must first file the

application via the trademark electronic filing system, except in limited circumstances.

See

37 C.F.R. §2.21(a)

;

TMEP §§301.01, 301.01(a)

.  The applicant should then

submit a request to make special that includes the newly assigned serial number and the

number of the cancelled registration. Generally, the request must be filed

electronically, using the Request to Make Special form in the trademark electronic

filing system.

See

37 C.F.R. §2.23(a)

;

TMEP §§301.01, 301.01(a)

.

Petition to Make Special.

A petition to

make special is a request to the Director under

37 C.F.R.

§2.146

to advance the initial examination of an application out of

its regular order.  See

TMEP §§1710–1710.02

regarding the

petition requirements and filing procedure.

The examining attorney must promptly examine any application

that has been made “special.”