1710 Petition to Make Special
The USPTO generally examines applications in the order in which they are received. 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 §702.02.
A Petition to Make Special must be accompanied by: (1) the fee required by 37 C.F.R. §2.6; (2) an explanation of why special action is requested; and (3) a statement of facts and supporting evidence that shows special action is justified. See 37 C.F.R. §2.146. The statement of facts should be supported by a properly signed affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §2.146(c); TMEP §611.03(e).
The requirement for representation of a non-U.S. domiciled petitioner applies to a Petition to Make Special. See TMEP §1705.07(a) for more information.
The petition is reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy. After first filing the application via the Trademark Electronic Application System (TEAS), the applicant should then file a Petition to Make Special form via TEAS that specifies the newly assigned serial number.
Request to Make Special – Registration Inadvertently Cancelled or Expired Under 15 U.S.C. §1058, §1059, or §1141k. An 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 applicant’s request. No petition 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. See TMEP §702.02 regarding the requirements and filing procedure for a Request to Make Special.
1710.01 Basis for Granting or Denying Petition
Invoking supervisory authority under 37 C.F.R. §2.146 to make an application "special" is an extraordinary remedy that is granted only when very special circumstances exist, such as a demonstrable possibility of the loss of substantial rights. These petitions are denied when the circumstances would apply equally to a large number of other applicants.
The fact that the applicant is about to embark on an advertising campaign is not considered a circumstance that justifies advancement of an application out of the normal order of examination, because this situation applies to a substantial number of applicants. Similarly, the applicant’s desire to register a trademark to qualify to sell goods or offer services on a particular website does not justify making an application "special" since this situation also applies to a substantial number of applicants.
Commonly accepted types of evidence for granting Petitions to Make Special are copies of civil court complaints demonstrating the existence of pending litigation involving the mark, copies of cease-and-desist letters showing threatened litigation involving the mark, or copies of government regulations showing that a trademark registration is required to secure government approval for the goods or services.
1710.02 Processing Petition
Each Petition to Make Special, together with the petition decision, is made part of the record. If the petition is granted, the prosecution history of the application in the Trademark database will reflect that the petition for special handling has been granted.