In response to the COVID-19 pandemic, on 12 June 2020 the United States Patent and Trademark Office (USPTO) 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 that wish to protect their marks for products developed to fight the pandemic.

The USPTO will typically examine applications in the order in which they are received, but, in special circumstances, the applicant may file a petition to the director to expedite examination of their application. A petition to make special requires:

  • a $100 fee payment;
  • an explanation of why special action is requested; and
  • 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 USPTO 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 (eg, 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); and
  • medical services or medical research services for the prevention, diagnosis or treatment of or cure for COVID-19.

In order to qualify, applications must include at least one of the items listed above, but may also include other related goods and services. Further, the USPTO has 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; further, applicants will still be required to show use of the mark in commerce before it is registered (unless there is a home country registration on which they can rely). Accordingly, it will still typically take at least six months from filing to registration for an application based on use and for which expedited examination has occurred.