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 advance the initial examination of an application out of its regular order.

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 that shows that special action is justified.  The statement of facts should be supported by an affidavit or declaration under 37 C.F.R. §2.20.

The petition 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") at http://www.uspto.gov.  The applicant should then submit a petition to make special that includes the newly assigned serial number.  To ensure proper routing and processing, the Office prefers that the petition also be filed electronically.  In TEAS, the Petition to Make Special form can be accessed by clicking on the link entitled "Petition Forms."

Alternatively, the petition should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy at the following fax number:  571-273-0032.  If the petition is submitted by mail, it should be submitted separately from the application, marked to the attention of the Deputy Commissioner for Trademark Examination Policy.

An application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired will be made "special" upon applicant’s request.  No petition is required in this situation.  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.  A petition to make "special" is 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.

The most common reasons for granting petitions to make "special" are the existence of actual or threatened infringement, pending litigation, or the need for a registration as a basis for securing a foreign registration.

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 Reporting and Monitoring ("TRAM") System will reflect that the petition for "special" handling has been granted.