In response to the COVID-19 pandemic, on June 12, 2020 the United States Patent and Trademark Office (PTO) announced an accelerated examination procedure for certain trademark and service mark applications covering qualifying COVID-19 medical products and services. This expedited process will benefit those who wish to protect their marks for products developed to fight the pandemic.
The PTO will typically examine applications in the order in which they are received, but, in very special circumstances, the applicant may file a Petition to the Director to expedite examination of their application. The petition to "Make Special," as it's called, requires (i) a $100 fee payment, (ii) an explanation of why special action is requested, and (iii) a statement of facts that shows that special action is justified. The most common reasons for granting such a petition are the existence of actual or threatened infringement, pending litigation, and the need for a registration as a basis for securing a foreign registration. However, because the PTO has recently deemed the pandemic a special circumstance, it has agreed to grant Petitions to Make Special for applications covering COVID-19-related products and services, specifically:
- Pharmaceutical products or medical devices, such as diagnostic tests, ventilators, and personal protective equipment, including surgical masks, face shields, gowns, and gloves, that prevent, diagnose, treat, or cure COVID-19 and are subject to approval by the Food and Drug Administration (FDA)
- Medical services or medical research services for the prevention, diagnosis, or treatment of or cure for COVID-19
In order to qualify, the application must include at least one of the items listed above, but may also include other related goods and services. Furthermore, the PTO has also waived the standard $100 petition fee for applications covering the above goods and services.
Applicants should bear in mind that while the petition will result in expedited examination, the application will still be published for opposition; furthermore, applicants will still be required to show use of the mark in commerce before it is registered (unless there is a home country registration upon which they can rely). Accordingly, it will still typically take at least 6 months from filing to registration for an application based on use and for which expedited examination has occurred.