TMEP 702.02: "Special" Applications

October 2017 Edition of the TMEP

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702.02    "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, §10.9, 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, §10.9, 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 should first file the application via the Trademark Electronic Application System ("TEAS").  The applicant should then submit a request to make special that includes the newly assigned serial number and the number of the cancelled registration.  To ensure proper routing and processing, the Office prefers that the request also be filed electronically.  In TEAS, the Request to Make Special form can be accessed at http://www.uspto.gov.

If it is not possible to file the request electronically, it should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy at the following fax number:  571-273-0032.

If the request is submitted by mail, it should be submitted separately from the application, marked to the attention of the Deputy Commissioner for Trademark Examination Policy.

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."