1 00:00:04,530 --> 00:00:05,565 Good afternoon, everyone. 2 00:00:05,565 --> 00:00:08,775 My name is John Dalier I am a 3 00:00:08,775 --> 00:00:10,929 petitions attorney in the Office of 4 00:00:10,929 --> 00:00:13,628 the Deputy Commissioner for Trademark 5 00:00:13,628 --> 00:00:16,584 Examination Policy and I'm the host 6 00:00:16,584 --> 00:00:19,110 of today's webinar, which is preparing 7 00:00:19,191 --> 00:00:21,606 an effective letter of protest. 8 00:00:21,610 --> 00:00:24,459 I work, as I said, in the 9 00:00:24,459 --> 00:00:25,778 Deputy Commissioner's Office, 10 00:00:25,778 --> 00:00:28,048 and I handle petitions and 11 00:00:28,048 --> 00:00:29,410 letters of protest, 12 00:00:29,410 --> 00:00:32,482 as do all of my coworkers and colleagues 13 00:00:32,482 --> 00:00:36,300 here in petitions. In this office, 14 00:00:36,300 --> 00:00:41,420 We recognize that in light of the TMA, 15 00:00:41,420 --> 00:00:42,938 which I'll discuss in a minute, 16 00:00:42,940 --> 00:00:45,484 that there have been some changes in 17 00:00:45,484 --> 00:00:47,668 the letter of protest procedures and 18 00:00:47,668 --> 00:00:50,517 we want to make you aware of them, 19 00:00:50,520 --> 00:00:51,675 if you're not already aware of them. 20 00:00:51,680 --> 00:00:53,582 And also give some guidance on 21 00:00:53,582 --> 00:00:56,193 how you can use them to prepare a 22 00:00:56,193 --> 00:00:58,598 letter of protest that has a good 23 00:00:58,598 --> 00:01:02,070 chance of being considered. So, 24 00:01:02,070 --> 00:01:04,098 let's start off with a couple 25 00:01:04,098 --> 00:01:05,112 of reminders here. 26 00:01:05,120 --> 00:01:07,830 The session is being recorded. 27 00:01:07,830 --> 00:01:09,460 These slides that you're seeing 28 00:01:09,460 --> 00:01:11,786 today will be emailed to you if 29 00:01:11,786 --> 00:01:13,366 they haven't been sent already. 30 00:01:13,370 --> 00:01:15,338 Captioning is available if 31 00:01:15,338 --> 00:01:17,798 you select the post tab. 32 00:01:17,800 --> 00:01:20,764 And certainly if you have any 33 00:01:20,764 --> 00:01:23,280 questions related to this webinar, 34 00:01:23,280 --> 00:01:26,520 while it's going on or later, 35 00:01:26,520 --> 00:01:29,220 please send questions to the 36 00:01:29,220 --> 00:01:32,230 email address TM webinar 37 00:01:32,230 --> 00:01:35,142 at USPTO dot gov. There is no chat 38 00:01:35,142 --> 00:01:37,686 function for you to post a question. 39 00:01:37,690 --> 00:01:38,698 That way, 40 00:01:38,698 --> 00:01:41,722 you must send them by TM 41 00:01:41,722 --> 00:01:43,969 webinar at USPTO dot gov. 42 00:01:43,970 --> 00:01:46,514 At the end, we'll go to those questions 43 00:01:46,514 --> 00:01:48,540 and I'll answer on the spot, 44 00:01:48,540 --> 00:01:49,980 if I can. 45 00:01:49,980 --> 00:01:50,940 Uh, lastly, 46 00:01:50,940 --> 00:01:53,586 if you're having any technical issues, 47 00:01:53,590 --> 00:01:55,760 go ahead and email virtual 48 00:01:55,760 --> 00:01:57,930 events at USPTO dot gov. 49 00:01:57,930 --> 00:02:00,170 Assuming your technical issue 50 00:02:00,170 --> 00:02:03,208 allows you to still email. OK, 51 00:02:03,208 --> 00:02:04,160 so let's get started. 52 00:02:06,370 --> 00:02:10,634 We're going to go over 6 topics today. 53 00:02:10,640 --> 00:02:13,008 These are the six: 54 00:02:13,010 --> 00:02:15,260 We're going to review the 55 00:02:15,260 --> 00:02:17,460 Trademark Modernization Act as it 56 00:02:17,460 --> 00:02:19,585 applies to letters of protest. 57 00:02:19,590 --> 00:02:21,960 We're going to go over filings, 58 00:02:21,960 --> 00:02:23,316 evidence, the 59 00:02:23,316 --> 00:02:26,096 LOP form itself, some considerations 60 00:02:26,096 --> 00:02:28,334 you need to make about when 61 00:02:28,334 --> 00:O2:30,694 you're filing your LOP, and then 62 00:02:30,694 --> 00:02:32,238 some additional information that 63 00:02:32,238 --> 00:02:34,333 is important for you to consider 64 00:02:34,333 --> 00:02:38,640 when filing LOP. So first. 65 00:02:38,640 --> 00:02:41,550 Overview and Trademark Modernization Act. 66 00:02:44,030 --> 00:02:49,502 LOP process allows a third party to come in 67 00:02:49,510 --> 00:02:54,376 and file information that they think 68 00:02:54,380 --> 00:02:57,894 the Office should know about a particular 69 00:02:57,894 --> 00:03:00,104 application, without compromising the 70 00:03:00,104 --> 00:03:01,988 examining attorney's objectivity 71 00:03:01,990 --> 00:03:05,110 when they examine the application. 72 00:03:05,110 --> 00:03:06,950 The examination process is an 73 00:03:06,950 --> 00:03:08,790 ex parte process, is between 74 00:03:08,857 --> 00:03:10,727 the Office and the applicant. 75 00:03:10,730 --> 00:03:12,815 Third parties are not involved 76 00:03:12,815 --> 00:03:14,900 in the discussion between an 77 00:03:14,980 --> 00:03:17,530 applicant and an examining attorney, 78 00:03:17,530 --> 00:03:20,655 but this letter of protest process 79 00:03:20,655 --> 00:03:23,155 allows a third party 80 00:03:23,160 --> 00:03:25,390 to give the Office information 81 00:03:25,390 --> 00:03:27,174 that could be helpful 82 00:03:27,180 --> 00:03:30,797 to the examining attorney. So, 83 00:03:30,797 --> 00:03:34,679 it only applies to pending applications. 84 00:03:34,680 --> 00:03:38,224 And attorneys in my office where I work, 85 00:03:38,230 --> 00:03:40,210 in the Deputy Commissioner's Office, 86 00:03:40,210 --> 00:03:42,670 we review the letter of protest 87 00:03:42,670 --> 00:03:44,920 that a protester would submit, 88 00:03:44,920 --> 00:03:47,560 and try to determine if 89 00:03:47,560 --> 00:03:50,234 the evidence that's submitted in the letter 90 00:03:50,234 --> 00:03:52,954 of protest should be forwarded to the 91 00:03:52,954 --> 00:03:55,210 examining attorney for them to review. 92 00:03:55,210 --> 00:03:58,150 We call that considering an LOP, 93 00:03:58,150 --> 00:04:01,396 so if an LOP is considered, 94 00:04:01,400 --> 00:04:04,494 we will send some or all of 95 00:04:04,494 --> 00:04:07,030 the evidence to the record, 96 00:04:07,030 --> 00:04:09,230 notify the examining attorney, 97 00:04:09,230 --> 00:04:11,574 and he or she will look at that 98 00:04:11,574 --> 00:04:12,870 evidence and determine whether 99 00:04:12,870 --> 00:04:15,430 or not they need to act on it. 100 00:04:15,430 --> 00:04:18,470 If we do not consider the LOP, 101 00:04:18,470 --> 00:04:20,275 nothing related to it will 102 00:04:20,275 --> 00:04:22,480 be in the record at all. 103 00:04:22,480 --> 00:04:25,396 You will know you filed it, 104 00:04:25,400 --> 00:04:27,360 my office will know that you filed it, 105 00:04:27,360 --> 00:04:29,058 but there'll be nothing in the 106 00:04:29,058 --> 00:04:30,525 record referencing that you filed 107 00:04:30,525 --> 00:04:32,187 that LOP that was not considered. 108 00:04:36,940 --> 00:04:40,430 If you file your LOP, please, 109 00:04:40,430 --> 00:04:42,098 prefer, but don't require, 110 00:04:42,098 --> 00:04:46,069 but we prefer that LOP is filed before the 111 00:04:46,069 --> 00:04:49,790 application is published. And if you do that, 112 00:04:49,790 --> 00:04:51,608 the evidence, the relevant evidence, will 113 00:04:51,608 --> 00:04:54,254 be sent to the examining attorney and he 114 00:04:54,254 --> 00:04:56,663 or she will make that determination about 115 00:04:56,663 --> 00:04:58,728 whether or not to issue the refusal. 116 00:04:58,730 --> 00:05:01,745 If you file your letter of 117 00:05:01,745 --> 00:05:03,554 protest after publication, 118 00:05:03,560 --> 00:05:06,576 the evidence standard is a little bit higher. 119 00:05:06,580 --> 00:05:09,240 You'll have to establish a prima facie 120 00:05:09,240 --> 00:05:12,110 case for the refusal that you think, 121 00:05:12,110 --> 00:05:14,834 or the requirement that you think 122 00:05:14,834 --> 00:05:16,650 the examining attorney should 123 00:05:16,725 --> 00:05:18,600 issue, in an office action. 124 00:05:18,600 --> 00:05:20,970 If you establish the prima facie case, 125 00:05:23,150 --> 00:05:26,110 we will send the evidence to the record, 126 00:05:26,110 --> 00:05:28,966 notify the examining attorney that they. 127 00:05:28,970 --> 00:05:32,036 are directed to issue the office action. 128 00:05:32,040 --> 00:05:33,762 So that's for letters of protest 129 00:05:33,762 --> 00:05:34,623 filed after publication. 130 00:05:36,750 --> 00:05:37,834 Little bit higher standard 131 00:05:37,834 --> 00:05:40,740 with the evidence here. So 132 00:05:40,740 --> 00:05:41,804 if your letter protest, 133 00:05:41,804 --> 00:05:43,400 no matter when it is filed, 134 00:05:43,400 --> 00:05:44,648 is not considered, 135 00:05:44,648 --> 00:05:48,520 it is a, that determination is not reviewable. 136 00:05:48,520 --> 00:05:49,678 It's not petitionable. 137 00:05:49,678 --> 00:05:53,290 It used to be and it no longer is. 138 00:05:53,290 --> 00:05:56,095 So if your letter of 139 00:05:56,095 --> 00:05:58,339 protest is not considered, 140 00:05:58,340 --> 00:06:01,504 You, umm, you have no appeal rights. 141 00:06:01,510 --> 00:06:04,120 But, you cannot file another letter 142 00:06:04,120 --> 00:06:06,580 of protest with additional evidence. 143 00:06:06,580 --> 00:06:08,932 Or, with evidence that complies with the 144 00:06:08,932 --> 00:06:11,290 rules that we'll go over in a little bit. 145 00:06:11,290 --> 00:06:15,822 As long as the application were not 30 days 146 00:06:15,822 --> 00:06:18,270 beyond publication or the opposition period, 147 00:06:18,270 --> 00:06:20,570 it has not ended. 148 00:06:20,570 --> 00:06:23,782 The LOP form is located as form #10 149 00:06:23,782 --> 00:06:26,135 and I'll show you that in a little 150 00:06:26,135 --> 00:06:28,994 bit. It is located on the petition 151 00:06:28,994 --> 00:06:31,970 forms page of the USPTO website. 152 00:06:34,660 --> 00:06:37,068 So, as far as for the Modernization Act 153 00:06:37,068 --> 00:06:39,680 was passed in the end of last year and 154 00:06:39,680 --> 00:06:42,860 it codified the procedures for filing 155 00:06:42,860 --> 00:06:46,159 letter and reviewing letters of protest. 156 00:06:46,160 --> 00:06:48,445 Those procedures were not codified 157 00:06:48,445 --> 00:06:51,809 before. They are now and we follow the 158 00:06:51,809 --> 00:06:54,530 rules that are laid out in 37 CFR. 159 00:06:54,530 --> 00:06:57,260 Or, they follow the statute requirements 160 00:06:57,260 --> 00:07:00,823 that are laid out in 37 CFR 2.149. 161 00:07:00,823 --> 00:07:04,330 So, an important date to note is 162 00:07:04,446 --> 00:07:08,107 that as of December 27th this year, 163 00:07:08,107 --> 00:07:11,020 we will have two months 164 00:07:11,020 --> 00:07:15,310 to notify or review a letter of 165 00:07:15,310 --> 00:07:18,425 protest and notify the protester of the 166 00:07:18,425 --> 00:07:20,578 review from the date that it was filed. 167 00:07:20,580 --> 00:07:24,188 So yesterday I was working on letters of 168 00:07:24,188 --> 00:07:27,650 protest that were filed on September 30th. 169 00:07:27,650 --> 00:07:31,450 So we are almost there and we do expect to 170 00:07:31,450 --> 00:07:35,055 be responding to letters of protest filed, 171 00:07:35,060 --> 00:07:37,832 we do expect to be responding to them and be 172 00:07:37,832 --> 00:07:42,670 in compliance with the requirements. So, 173 00:07:42,670 --> 00:07:46,989 umm, we, we, we, we look forward 174 00:07:46,989 --> 00:07:48,840 to being timely. 175 00:07:48,840 --> 00:07:51,314 As far as for the procedures that we follow 176 00:07:51,314 --> 00:07:53,160 when we examine the letter of protest, 177 00:07:53,160 --> 00:07:54,736 if you would like to look at those, 178 00:07:54,740 --> 00:07:59,290 those are in the TMEP in section 1715. 179 00:08:01,930 --> 00:08:06,641 So if there are any questions on 180 00:08:06,641 --> 00:08:10,570 that section, again, you can refer 181 00:08:10,570 --> 00:08:13,712 to the TMWebinar at uspto dot gov 182 00:08:13,712 --> 00:08:16,490 email and send in your questions. 183 00:08:16,490 --> 00:08:18,989 So let's move on to the next 184 00:08:18,989 --> 00:08:20,380 discussion topic. Filings. 185 00:08:24,120 --> 00:08:26,190 When you file your letter protest, 186 00:08:26,190 --> 00:08:28,122 it must be timely. 187 00:08:28,122 --> 00:08:32,209 And you must file it using our TEAS system. 188 00:08:32,210 --> 00:08:35,038 And you must pay the filing fee. 189 00:08:35,040 --> 00:08:36,108 Prior to TMA, 190 00:08:36,108 --> 00:08:38,660 there was no filing fee for letter of protest. 191 00:08:38,660 --> 00:08:39,914 There is now. 192 00:08:39,914 --> 00:08:44,164 So it is $50 and it must be paid. If 193 00:08:44,164 --> 00:08:46,828 your letters of protest, letter of protest. 194 00:08:46,830 --> 00:08:50,185 Has an objection in it 195 00:08:50,185 --> 00:08:52,198 that requires evidence. 196 00:08:52,200 --> 00:08:55,134 Then you must also submit an 197 00:08:55,134 --> 00:08:57,090 index itemizing that evidence. 198 00:08:57,090 --> 00:09:00,450 This is a requirement under the 199 00:09:02,490 --> 00:09:03,820 37 CFR 2.149. That is 200 00:09:03,820 --> 00:09:06,530 a change from previous procedures. 201 00:09:06,530 --> 00:09:08,590 You must include the protester's 202 00:09:08,590 --> 00:09:10,650 email address in the form, 203 00:09:10,650 --> 00:09:13,735 and if you are protesting 204 00:09:13,735 --> 00:09:14,969 several applications, 205 00:09:14,970 --> 00:09:17,483 you must file a letter of protest 206 00:09:17,483 --> 00:09:20,199 in each of those applications. 207 00:09:23,210 --> 00:09:26,866 Filing timeframes: we prefer that 208 00:09:26,866 --> 00:09:29,890 you file your letter of protest as 209 00:09:29,980 --> 00:09:32,890 soon as the application is filed, 210 00:09:32,890 --> 00:09:36,050 but preferably before the trademark 211 00:09:36,050 --> 00:09:38,695 publishes for opposition. Umm, 212 00:09:38,695 --> 00:09:43,550 if you are filing it pre-publication, 213 00:09:43,550 --> 00:09:46,940 that timeframe is anytime after the 214 00:09:46,940 --> 00:09:50,211 application is filed until the day 215 00:09:50,211 --> 00:09:53,295 before the mark publishes for opposition. 216 00:09:53,300 --> 00:09:56,036 A post-publication letter of protest 217 00:09:56,040 --> 00:09:58,644 has to be filed between the day 218 00:09:58,644 --> 00:10:01,005 of publication and the close of 219 00:10:01,005 --> 00:10:02,955 the 30-day opposition period. 220 00:10:05,940 --> 00:10:07,950 If you file your letter of 221 00:10:07,950 --> 00:10:09,156 protest before publication, 222 00:10:09,160 --> 00:10:10,970 your evidence must be relevant 223 00:10:13,510 --> 00:10:15,922 and support the objection that you 224 00:10:15,922 --> 00:10:18,918 were raising in your letter of protest. 225 00:10:18,920 --> 00:10:20,264 It's a "relevant" standard. 226 00:10:20,264 --> 00:10:21,944 If your letter of protest 227 00:10:21,944 --> 00:10:23,839 is filed after publication, 228 00:10:23,840 --> 00:10:25,440 your evidence has to establish, 229 00:10:25,440 --> 00:10:26,576 as I said before, 230 00:10:26,576 --> 00:10:28,280 past to establish a prima facie 231 00:10:28,338 --> 00:10:30,438 case for their refusal or their 232 00:10:30,438 --> 00:10:33,394 requirements and that, that, that, 233 00:10:33,394 --> 00:10:37,300 that evidence shows that it would 234 00:10:37,429 --> 00:10:40,168 umm, that failing to, to for the 235 00:10:40,168 --> 00:10:42,100 office to refuse registration or 236 00:10:42,100 --> 00:10:44,302 issue a requirement under the Act, 237 00:10:44,302 --> 00:10:46,519 would likely result in registration. 238 00:10:46,520 --> 00:10:47,456 Uh, registration, 239 00:10:47,456 --> 00:10:49,328 violating the Trademark Act 240 00:10:49,330 --> 00:10:50,710 or our rules of practice. 241 00:10:50,710 --> 00:10:53,524 So that's a little bit higher bar or 242 00:10:53,524 --> 00:10:55,890 than filing an LOP, the evidence 243 00:10:55,890 --> 00:10:58,258 standard for an LOP before publication. 244 00:10:58,260 --> 00:11:02,560 So LOP filed after publication: 245 00:11:02,560 --> 00:11:04,720 those are generally considered untimely 246 00:11:04,720 --> 00:11:07,710 and usually will not be considered. 247 00:11:07,710 --> 00:11:08,210 Umm. 248 00:11:11,650 --> 00:11:14,546 Some of the, or the most common and 249 00:11:14,546 --> 00:11:16,575 appropriate reasons for filing a letter of 250 00:11:16,575 --> 00:11:18,922 protest, is that there is a likelihood 251 00:11:18,922 --> 00:11:21,037 of confusion with a registered 252 00:11:21,037 --> 00:11:23,316 mark or prior pending application. 253 00:11:23,316 --> 00:11:26,246 Perhaps there's a descriptiveness issue 254 00:11:26,246 --> 00:11:29,662 such as the, or a genericness issue present 255 00:11:29,662 --> 00:11:32,686 such that a mark should be refused 256 00:11:32,686 --> 00:11:35,458 or a disclaimer should be required. 257 00:11:35,460 --> 00:11:38,250 Maybe your registered mark is being 258 00:11:38,250 --> 00:11:40,879 used in an identification of goods, 259 00:11:40,880 --> 00:11:44,850 and that's inappropriate in that. 260 00:11:44,850 --> 00:11:46,090 A trademark is being used, 261 00:11:46,090 --> 00:11:47,560 possibly in a generic sense, 262 00:11:47,560 --> 00:11:50,380 so to fight genericide you can 263 00:11:50,380 --> 00:11:52,374 use the letter of protest process. 264 00:11:52,374 --> 00:11:55,622 Uh, you may believe that the applied- 265 00:11:55,622 --> 00:11:58,996 for mark that you're protesting is a 266 00:11:58,996 --> 00:12:02,050 widely used or commonplace message 267 00:12:02,050 --> 00:12:03,900 that you would submit evidence 268 00:12:03,900 --> 00:12:05,750 showing why you believe that. 269 00:12:05,750 --> 00:12:07,868 Another common reason is that you 270 00:12:07,868 --> 00:12:09,717 argue that the specimen, specimens 271 00:12:09,717 --> 00:12:11,913 of use, are produced solely for 272 00:12:11,913 --> 00:12:14,069 purposes of filing the application, 273 00:12:14,070 --> 00:12:16,350 or that they, they don't show use of 274 00:12:16,350 --> 00:12:18,636 the mark in the ordinary course of 275 00:12:18,636 --> 00:12:20,693 trade. And the last common reason 276 00:12:20,693 --> 00:12:23,514 for an LOP is a false connection, 277 00:12:23,520 --> 00:12:27,145 uh, is created by the applicant's use of 278 00:12:27,145 --> 00:12:28,855 their mark with either the protester 279 00:12:28,855 --> 00:12:30,618 or perhaps a third, third person, 280 00:12:30,620 --> 00:12:32,433 and that, that brings up a point 281 00:12:32,433 --> 00:12:33,640 I wanted to raise. 282 00:12:33,640 --> 00:12:36,320 We get a lot of questions for the 283 00:12:36,320 --> 00:12:38,630 likelihood of confusion objection, 284 00:12:38,630 --> 00:12:42,880 and protesters want to know 285 00:12:42,880 --> 00:12:46,275 if they have to own the registration 286 00:12:46,275 --> 00:12:48,800 that they are asserting. 287 00:12:48,800 --> 00:12:52,700 should serve as a bar 288 00:12:52,700 --> 00:12:55,340 to the registration of the mark in the 289 00:12:55,340 --> 00:12:57,700 application. And the answer is no, 290 00:12:57,700 --> 00:13:00,448 the, the protester does not need 291 00:13:00,448 --> 00:13:03,650 need to own the registration. 292 00:13:03,650 --> 00:13:06,058 The protester, as with the false connection, 293 00:13:06,060 --> 00:13:08,601 does not need to be the famous 294 00:13:08,601 --> 00:13:10,660 person. We have seen those. 295 00:13:10,660 --> 00:13:12,040 It's the issue if it's a, 296 00:13:12,040 --> 00:13:13,480 if it's a, 297 00:13:13,480 --> 00:13:15,792 if it's a letter of protest 298 00:13:15,792 --> 00:13:17,100 filed before publication, 299 00:13:17,100 --> 00:13:19,200 the issue for in terms of evidence 300 00:13:19,200 --> 00:13:21,356 is, is the evidence relevant and 301 00:13:21,356 --> 00:13:24,121 should that be sent to the examining 302 00:13:24,198 --> 00:13:26,448 attorney for them to consider? So, 303 00:13:26,450 --> 00:13:30,128 we, we don't necessarily require the 304 00:13:30,128 --> 00:13:32,984 protester to be the owner of, of 305 00:13:32,984 --> 00:13:36,461 the marks that they are using as a 306 00:13:36,461 --> 00:13:39,259 basis for their letter of protest. 307 00:13:39,260 --> 00:13:39,681 Umm, 308 00:13:39,681 --> 00:13:42,628 although I must say often times, most 309 00:13:42,628 --> 00:13:46,073 of the time now after TMA's enactment, 310 00:13:46,073 --> 00:13:49,078 the protester is the owner 311 00:13:49,080 --> 00:13:50,766 of the registration, 312 00:13:50,766 --> 00:13:54,138 but that is not a requirement. 313 00:13:54,140 --> 00:13:56,512 So some inappropriate reasons 314 00:13:56,512 --> 00:13:59,477 for filing a letter protest: 315 00:13:59,480 --> 00:14:01,905 Some protesters will file their 316 00:14:01,905 --> 00:14:05,182 letter and claim that they have some 317 00:14:05,182 --> 00:14:07,870 sort of prior rights or prior use 318 00:14:07,870 --> 00:14:11,019 of the trademark from the applicant 319 00:14:11,020 --> 00:14:12,460 as opposed to the applicant. 320 00:14:12,460 --> 00:14:15,280 That is not a basis for a letter of protest. 321 00:14:15,280 --> 00:14:18,507 The Examiner does not have the authority 322 00:14:18,507 --> 00:14:21,188 or the resources to, to research 323 00:14:21,190 --> 00:14:25,642 a common law prior use. Other, other 324 00:14:25,642 --> 00:14:28,072 inappropriate claims would be that 325 00:14:28,072 --> 00:14:29,704 the protester's asserting that the 326 00:14:29,704 --> 00:14:31,420 applicant is not the true owner 327 00:14:31,472 --> 00:14:32,270 of the trademark 328 00:14:32,270 --> 00:14:34,220 in the protested application. 329 00:14:34,220 --> 00:14:36,495 That also is not something that is, 330 00:14:36,500 --> 00:14:40,160 is within the examiner's ability to research, 331 00:14:40,160 --> 00:14:42,080 so that is not an appropriate 332 00:14:42,080 --> 00:14:44,579 reason for filing. 333 00:14:44,580 --> 00:14:46,404 Another common inappropriate reason 334 00:14:46,404 --> 00:14:49,140 for filing is that the protester 335 00:14:49,207 --> 00:14:51,187 simply disagrees with the, the 336 00:14:51,190 --> 00:14:56,410 examining attorney's examination of a 337 00:14:56,410 --> 00:15:00,576 protested application. That is not, that 338 00:15:00,576 --> 00:15:02,858 is not something that is a proper 339 00:15:02,858 --> 00:15:07,768 subject of a letter of protest. So, 340 00:15:07,770 --> 00:15:09,460 that takes care of the 341 00:15:09,460 --> 00:15:10,474 following discussion topics. 342 00:15:10,480 --> 00:15:15,136 Again, if you guys have questions, 343 00:15:15,140 --> 00:15:19,450 please refer to TMWebinar at uspto dot gov. 344 00:15:23,340 --> 00:15:25,110 Right. So evidence. 345 00:15:29,270 --> 00:15:31,302 There's been a lot of changes with evidence, 346 00:15:31,302 --> 00:15:32,936 of requirements in the letter of protest, 347 00:15:32,940 --> 00:15:37,376 and we have tried to, to give 348 00:15:37,376 --> 00:15:41,128 potential protesters some guidance 349 00:15:41,130 --> 00:15:43,994 on what we can accept and what we 350 00:15:43,994 --> 00:15:46,503 cannot accept, and what the minimum 351 00:15:46,503 --> 00:15:49,530 standards of things that, that they must, 352 00:15:49,530 --> 00:15:51,102 they must provide. 353 00:15:51,102 --> 00:15:55,860 So the first thing that is new under 354 00:15:55,860 --> 00:15:59,690 the 37 CFR 2.149 codification of 355 00:15:59,690 --> 00:16:03,610 letters of protest procedures is that 356 00:16:03,610 --> 00:16:06,988 if evidence is required for your 357 00:16:06,990 --> 00:16:09,018 objection in your letter of protest, 358 00:16:09,020 --> 00:16:12,885 you must include an index 359 00:16:12,885 --> 00:16:15,204 itemizing that evidence. 360 00:16:15,210 --> 00:16:17,386 If you want to see an example of 361 00:16:17,386 --> 00:16:19,470 what the index could look like, 362 00:16:19,470 --> 00:16:21,150 I'm going to show you that on the next slide, 363 00:16:21,150 --> 00:16:25,028 but it is located on our practice 364 00:16:25,028 --> 00:16:28,299 tip page on our website. 365 00:16:28,300 --> 00:16:31,450 Important thing to note about the index 366 00:16:31,450 --> 00:16:34,234 is that it cannot contain any 367 00:16:34,234 --> 00:16:36,090 arguments or persuasive language 368 00:16:36,168 --> 00:16:38,488 related to your letter of protest, 369 00:16:38,490 --> 00:16:42,603 nor can it identify the protester in any way. 370 00:16:42,610 --> 00:16:45,736 If it does, if the index 371 0:16:45,740 --> 00:16:47,906 has arguments on, if persuasive language 372 00:16:47,906 --> 00:16:50,550 on it or identifies the protester, 373 00:16:50,550 --> 00:16:53,430 or perhaps the protester's law firm, 374 00:16:53,430 --> 00:16:56,482 the letter of protest will not be considered. 375 00:16:56,482 --> 00:16:59,218 So common example that we see with 376 00:16:59,218 --> 00:17:03,414 this is that a protester will prepare 377 00:17:03,414 --> 00:17:06,198 their index, on their letterhead, 378 00:17:06,198 --> 00:17:08,214 with the name of the business 379 00:17:08,214 --> 00:17:10,020 on the letterhead itself. 380 00:17:10,020 --> 00:17:12,040 Their address, their phone number, 381 00:17:12,040 --> 00:17:14,639 everything. So that index cannot be used, 382 00:17:14,640 --> 00:17:17,000 and it's, it will result. 383 00:17:17,000 --> 00:17:19,840 in the letter of protest not 384 00:17:19,840 --> 00:17:21,544 being considered whatsoever. 385 00:17:21,550 --> 00:17:24,450 So here's the example 386 00:17:24,450 --> 00:17:27,378 that we have on the tip page about 387 00:17:27,380 --> 00:17:32,470 the index of evidence. You'll lay out 388 00:17:32,470 --> 00:17:34,620 each exhibit that you have. 389 00:17:34,620 --> 00:17:37,374 You'll tell us what kind of evidence it is, 390 00:17:37,380 --> 00:17:39,684 the ground that it supports, and 391 00:17:39,684 --> 00:17:42,213 you would simply say, so for, so 392 00:17:42,213 --> 00:17:44,578 for a likelihood of confusion 393 00:17:44,580 --> 00:17:46,548 objection in your letter of protest, 394 00:17:46,550 --> 00:17:48,090 you would just say that the ground 395 00:17:48,090 --> 00:17:49,919 support is a likelihood of confusion. 396 00:17:49,920 --> 00:17:52,153 You would not go on to present 397 00:17:52,153 --> 00:17:54,383 a sentence or a paragraph there 398 00:17:54,383 --> 00:17:56,378 to show why this evidence 399 00:17:56,380 --> 00:17:58,144 supports the likelihood of confusion. 400 00:17:58,144 --> 00:18:00,790 You just would say likelihood of 401 00:18:00,860 --> 00:18:03,149 confusion and then you tell us the 402 00:18:03,149 --> 00:18:05,244 page number of where the exhibit 403 00:18:05,244 --> 00:18:07,326 appears or page or page numbers 404 00:18:07,326 --> 00:18:09,000 of where the exhibit appear, 405 00:18:09,000 --> 00:18:11,640 and then you move on to the next. 406 00:18:11,640 --> 00:18:14,170 This is not a required 407 00:18:14,170 --> 00:18:14,728 umm, 408 00:18:14,728 --> 00:18:18,634 index format-- is just a sample and 409 00:18:18,640 --> 00:18:20,789 we've seen people that have begun to 410 00:18:20,789 --> 00:18:23,388 use this and use it successfully in 411 00:18:23,388 --> 00:18:25,800 creating their indexes for their evidence. 412 00:18:25,800 --> 00:18:29,730 So, with a letter of protest, 413 00:18:29,730 --> 00:18:33,108 how much evidence should you submit? 414 00:18:33,110 --> 00:18:37,126 And the answer is that you can submit 415 00:18:37,126 --> 00:18:43,580 up to 75 pages of total evidence and 416 00:18:43,580 --> 00:18:46,548 ten items of evidence for each specified 417 00:18:46,548 --> 00:18:49,290 reason in your letter of protest. 418 00:18:49,290 --> 00:18:52,782 So it's 10 items, up to 10 items of 419 00:18:52,782 --> 00:18:55,560 evidence for each specified reason 420 00:18:55,560 --> 00:18:57,292 in your letter of protest, 421 00:18:57,292 --> 00:19:01,900 but no more than 75 pages total. Now 422 00:19:01,900 --> 00:19:02,408 sometimes, 423 00:19:02,408 --> 00:19:05,456 you might need to submit more 424 00:19:05,456 --> 00:19:08,678 than 75 pages of evidence. Well, 425 00:19:08,680 --> 00:19:09,910 what are you supposed to do? 426 00:19:09,910 --> 00:19:11,626 So in your letter of protest, 427 00:19:11,630 --> 00:19:13,868 if you are filing more than 428 00:19:13,868 --> 00:19:15,360 75 pages of evidence, 429 00:19:15,360 --> 00:19:16,959 you should include, 430 00:19:16,959 --> 00:19:20,157 or you must include, a detailed 431 00:19:20,157 --> 00:19:22,834 explanation about why you need to 432 00:19:22,834 --> 00:19:25,830 have more than 75 pages of evidence. 433 00:19:25,830 --> 00:19:27,390 Otherwise, your letter of protest 434 00:19:27,390 --> 00:19:28,950 will not be considered. 435 00:19:32,490 --> 00:19:34,550 37 CFR 2.149 specifically requires 436 00:19:34,550 --> 00:19:36,610 that you provide this explanation, 437 00:19:36,610 --> 00:19:38,530 and if you do not, 438 00:19:38,530 --> 00:19:41,295 you, your evidence, is not in compliance, 439 00:19:41,300 --> 00:19:42,880 and letter of protest cannot 440 00:19:42,880 --> 00:19:45,251 be considered. So real quick: 441 00:19:45,251 --> 00:19:48,940 I get the question on occasion about 442 00:19:48,940 --> 00:19:51,670 what would be a good explanation, 443 00:19:51,670 --> 00:19:53,370 so, in your letter of protest? 444 00:19:53,370 --> 00:19:54,985 Let's say that you have 445 00:19:54,985 --> 00:19:56,277 several grounds for objection, 446 00:19:56,280 --> 00:19:58,245 and the evidence is different 447 00:19:58,245 --> 00:19:59,976 for each of those grounds. 448 00:19:59,976 --> 00:20:02,319 Well, that might take you above 75 pages. 449 00:20:02,320 --> 00:20:03,792 That's a legitimate reason. 450 00:20:03,792 --> 00:20:05,632 So you would state that. 451 00:20:08,030 --> 00:20:10,820 We would most likely accept that 452 00:20:10,820 --> 00:20:13,707 and then review your evidence and 453 00:20:13,707 --> 00:20:17,290 submit what we can, if not all of it, 454 00:20:17,290 --> 00:20:19,660 to the application record for the 455 00:20:19,660 --> 00:20:21,240 examining attorney to consider. 456 00:20:24,410 --> 00:20:26,860 So next I'm going to talk about 457 00:20:26,860 --> 00:20:29,023 some specific, the specific common 458 00:20:29,023 --> 00:20:31,628 reasons for letters of protest and 459 00:20:31,628 --> 00:20:33,909 the evidence requirements for each. 460 00:20:33,910 --> 00:20:37,840 So first up, most common: 461 00:20:37,840 --> 00:20:40,669 likelihood of confusion. 462 00:20:40,670 --> 00:20:42,290 We need you, 463 00:20:42,290 --> 00:20:45,530 as a protester, to provide the 464 00:20:45,530 --> 00:20:46,860 registration number 465 00:20:46,860 --> 00:20:48,850 or the prior pending application 466 00:20:48,850 --> 00:20:50,840 serial numbers that support your 467 00:20:50,905 --> 00:20:52,895 likelihood of confusion argument, your 468 00:20:52,895 --> 00:20:55,440 objection, in your letter of protest. 469 00:20:55,440 --> 00:20:57,396 If you have more than five 470 00:20:57,396 --> 00:20:58,700 registrations or prior pending 471 00:20:58,766 --> 00:21:00,662 applications that you are raising, 472 00:21:00,662 --> 00:21:03,084 you should know that we will only 473 00:21:03,084 --> 00:21:04,879 consider the first five listed. 474 00:21:04,880 --> 00:21:05,840 We won't pick and choose 475 00:21:05,840 --> 00:21:07,050 if you have more than five. 476 00:21:07,050 --> 00:21:08,832 We go with the first five that are listed. 477 00:21:08,840 --> 00:21:10,824 So to that end, 478 00:21:10,824 --> 00:21:13,304 you should only submit the 479 00:21:13,304 --> 00:21:15,389 five most relevant 480 00:21:15,390 --> 00:21:17,442 registrations or prior pending 481 00:21:17,442 --> 00:21:19,494 application serial numbers that 482 00:21:19,494 --> 00:21:21,871 contain the mark that you are 483 00:21:21,871 --> 00:21:23,785 saying should serve as a bar 484 00:21:23,857 --> 00:21:26,220 registration under section 2(d). Now, 485 00:21:28,400 --> 00:21:30,624 note that I said that you must provide 486 00:21:30,624 --> 00:21:32,335 the registration number or prior 487 00:21:32,335 --> 00:21:33,807 pending applications serial number, 488 00:21:33,810 --> 00:21:37,625 and really that is all we need 489 00:21:37,630 --> 00:21:39,206 for purposes of identifying 490 00:21:39,206 --> 00:21:41,176 the registration or the prior 491 00:21:41,176 --> 00:21:43,209 pending application that you want 492 00:21:43,210 --> 00:21:47,418 to be placed in the record for the 493 00:21:47,418 --> 00:21:49,759 examining attorney to consider. 494 00:21:49,760 --> 00:21:52,385 You do not need to provide the 495 00:21:52,385 --> 00:21:55,710 entire copy of the TEAS or TSDR 496 00:21:55,710 --> 00:21:57,910 records for each registration. 497 00:21:57,910 --> 00:22:00,293 If you do, you may find that you 498 00:22:00,293 --> 00:22:03,534 get above the 75 pages real quick. 499 00:22:03,540 --> 00:22:07,446 So in an effort to, to help protesters not 500 00:22:07,446 --> 00:22:10,773 have to provide us, excuse me, provide 501 00:22:10,773 --> 00:22:13,128 in evidence that we already 502 00:22:13,128 --> 00:22:15,189 have in our records, 503 00:22:15,190 --> 00:22:16,828 you only need to provide the 504 00:22:16,828 --> 00:22:18,329 registration number or the prior 505 00:22:18,329 --> 00:22:19,388 pending application serial 506 00:22:19,388 --> 00:22:21,153 numbers that support your like, 507 00:22:21,160 --> 00:22:22,240 likelihood of confusion, 508 00:22:22,240 --> 00:22:22,600 objection. 509 00:22:26,060 --> 00:22:30,380 So, if the goods or services 510 00:22:30,380 --> 00:22:33,260 identified in your application, 511 00:22:33,260 --> 00:22:35,437 I mean, in the, in the application 512 00:22:35,437 --> 00:22:37,698 on record and the prior pending 513 00:22:37,698 --> 00:22:40,206 application or, or the registration that 514 00:22:40,206 --> 00:22:42,676 serve as a basis for your objection. 515 00:22:42,680 --> 00:22:45,548 If the goods and services identified 516 00:22:45,548 --> 00:22:47,460 therein are not identical, 517 00:22:47,460 --> 00:22:50,244 you are going to need to submit evidence 518 00:22:50,244 --> 00:22:52,373 showing that the goods and goods 519 00:22:52,373 --> 00:22:54,845 and or services of the applicant are 520 00:22:54,845 --> 00:22:57,323 related to the goods and or services 521 00:22:57,323 --> 00:22:59,540 identified in the registration or the 522 00:22:59,540 --> 00:23:01,164 prior pending application that you, 523 00:23:01,164 --> 00:23:03,599 that you were using as a basis for your 524 00:23:03,599 --> 00:23:05,609 likelihood of confusion objection. So, 525 00:23:05,610 --> 00:23:08,400 that would be anywhere from 526 00:23:08,400 --> 00:23:12,410 one to 10 items of evidence 527 00:23:12,410 --> 00:23:14,830 supporting the likelihood of confusion 528 00:23:14,830 --> 00:23:17,692 grounds showing that the goods and 529 00:23:17,692 --> 00:23:19,918 or services in the application are 530 00:23:19,918 --> 00:23:22,766 related to the goods and or services 531 00:23:22,766 --> 00:23:24,836 identified in the registration or 532 00:23:24,836 --> 00:23:27,320 the prior pending application. 533 00:23:27,320 --> 00:23:30,338 You can use records from TESS 534 00:23:30,340 --> 00:23:34,426 Or TSDR on our website. 535 00:23:34,430 --> 00:23:36,160 Those records will show the 536 00:23:36,160 --> 00:23:37,890 current status of the registration 537 00:23:37,953 --> 00:23:39,629 and prior pending application. 538 00:23:39,630 --> 00:23:41,736 They'll show the owner and you can use it 539 00:23:41,736 --> 00:23:43,935 to show the goods and services as well. 540 00:23:43,940 --> 00:23:46,810 Another method to show relatedness 541 00:23:46,810 --> 00:23:49,680 would be third-party websites 542 00:23:49,680 --> 00:23:52,320 showing the goods, 543 00:23:52,320 --> 00:23:55,560 umm, two types of goods offered by the same 544 00:23:55,560 --> 00:23:58,815 online retail store under the same mark. 545 00:23:58,820 --> 00:24:01,039 That would tend to show that those 546 00:24:01,039 --> 00:24:03,089 particular goods and issue are related. 547 00:24:03,090 --> 00:24:04,146 But an important point, 548 00:24:04,146 --> 00:24:06,460 and you'll hear me say this several times 549 00:24:06,460 --> 00:24:08,428 about websites that you would provide: 550 00:24:08,430 --> 00:24:11,928 You must include the URL and the 551 00:24:11,928 --> 00:24:14,240 access or print date of each web page 552 00:24:14,309 --> 00:24:16,559 that you're submitting as evidence. 553 00:24:16,560 --> 00:24:18,366 Otherwise, we can't authenticate it and 554 00:24:18,366 --> 00:24:20,598 it is not something that we could use. 555 00:24:20,600 --> 00:24:21,094 So, 556 00:24:21,094 --> 00:24:21,588 umm, 557 00:24:21,588 --> 00:24:24,552 please don't forget that, that's pretty 558 00:24:24,552 --> 00:24:26,992 standard practice now for many of 559 00:24:26,992 --> 00:24:29,430 the letters of protest that I see. 560 00:24:29,430 --> 00:24:32,006 But it is something that we feel is 561 00:24:32,006 --> 00:24:34,069 important to mention and mention 562 00:24:34,070 --> 00:24:36,758 every time we talk about website 563 00:24:36,758 --> 00:24:40,259 evidence that would be used by a protester, 564 00:24:40,260 --> 00:24:42,356 from a third party. 565 00:24:42,356 --> 00:24:44,610 So for printed publications you need 566 00:24:44,610 --> 00:24:47,153 to identify the name of the publication 567 00:24:47,153 --> 00:24:49,385 and the date of each publication. 568 00:24:49,390 --> 00:24:50,818 So if you have several publications, 569 00:24:50,820 --> 00:24:53,240 will have 570 00:24:53,240 --> 00:24:54,628 several dates for each. 571 00:24:58,090 --> 00:25:02,440 For The next common reason, for 572 00:25:02,440 --> 00:25:04,030 descriptiveness or genericness, 573 00:25:04,030 --> 00:25:06,550 the best evidence that we see 574 00:25:06,550 --> 00:25:08,470 is from an online dictionary. 575 00:25:08,470 --> 00:25:10,577 It could be an online dictionary that 576 00:25:10,577 --> 00:25:12,648 is specific to a particular trade, 577 00:25:12,650 --> 00:25:15,650 or it could be Merriam Webster. 578 00:25:15,650 --> 00:25:18,790 But we would need 579 00:25:18,790 --> 00:25:21,422 that evidence again to show the URL and 580 00:25:21,422 --> 00:25:24,245 the access or the print date if it's an 581 00:25:24,245 --> 00:25:25,870 online dictionary that you're submitting 582 00:25:25,870 --> 00:25:26,950 that's the best evidence. 583 00:25:26,950 --> 00:25:28,030 Sometimes that's not available, 584 00:25:28,030 --> 00:25:31,019 so a third-party website showing 585 00:25:31,019 --> 00:25:33,353 the applied for mark that you're 586 00:25:33,353 --> 00:25:35,637 protesting used in a descriptive or 587 00:25:35,637 --> 00:25:38,080 generic matter for the same goods or 588 00:25:38,154 --> 00:25:40,368 services that are in the application 589 00:25:40,368 --> 00:25:43,720 that, that, that, that you're protesting, 590 00:25:43,720 --> 00:25:46,056 that would serve well. 591 00:25:46,056 --> 00:25:49,202 Again, we would need the URL and the 592 00:25:49,202 --> 00:25:52,259 access print date of the website evidence. 593 00:25:52,260 --> 00:25:55,921 Umm, you could also use evidence of 594 00:25:55,921 --> 00:25:58,423 descriptiveness or genericness in use- 595 00:25:58,423 --> 00:26:00,979 based registrations here at the PTO. 596 00:26:00,980 --> 00:26:04,144 With that you would include copies of 597 00:26:04,144 --> 00:26:06,787 registrations from either TESS or the 598 00:26:06,787 --> 00:26:09,199 TSR, TSDR database showing the current 599 00:26:09,199 --> 00:26:11,320 status and owner of that registration, 600 00:26:11,320 --> 00:26:13,840 or each registration that you submit. 601 00:26:13,840 --> 00:26:14,748 And again, 602 00:26:14,748 --> 00:26:17,926 just like with 2(d) could use 603 00:26:17,930 --> 00:26:20,082 material from printed publications, 604 00:26:20,082 --> 00:26:23,310 as long as you provide the 605 00:26:23,310 --> 00:26:25,438 publication name and date. 606 00:26:28,770 --> 00:26:32,270 So third, when a registration 607 00:26:32,270 --> 00:26:36,838 is used by an applicant in their 608 00:26:36,838 --> 00:26:38,962 identification of goods and you're 609 00:26:38,962 --> 00:26:40,267 the owner of that registration, 610 00:26:40,270 --> 00:26:42,925 or you see it and want to protest it, 611 00:26:42,930 --> 00:26:45,933 all that we need you to provide 612 00:26:45,933 --> 00:26:47,900 is the registration number. 613 00:26:49,980 --> 00:26:51,960 If, umm, if you want, 614 00:26:51,960 --> 00:26:53,358 you're not required to do this, 615 00:26:53,360 --> 00:26:55,424 but it is helpful if you would like 616 00:26:55,424 --> 00:26:57,518 to provide us with the language that 617 00:26:57,518 --> 00:26:59,424 you think that the applicant should 618 00:26:59,424 --> 00:27:01,398 have used to describe their goods. 619 00:27:01,400 --> 00:27:03,832 You can tell us that and we will 620 00:27:03,832 --> 00:27:05,785 forward that to the examining 621 00:27:05,785 --> 00:27:07,098 attorney to let them know, 622 00:27:07,098 --> 00:27:11,060 and they, they can decide on that. But 623 00:27:11,060 --> 00:27:14,720 again, here we just need to know 624 00:27:14,720 --> 00:27:16,700 the registration number and we will 625 00:27:16,700 --> 00:27:18,740 forward that onto the examining attorney. 626 00:27:18,740 --> 00:27:22,853 We do not need you to submit any evidence 627 00:27:22,860 --> 00:27:25,440 other than the registration number, 628 00:27:25,440 --> 00:27:26,798 which you will do in the form. 629 00:27:26,800 --> 00:27:29,047 I'll show you how to do that. 630 00:27:29,050 --> 00:27:31,910 Umm. So, 631 00:27:37,580 --> 00:27:39,158 next common reason: 632 00:27:39,158 --> 00:27:41,788 a widely used commonplace message, 633 00:27:41,790 --> 00:27:43,725 so the protester asserts that 634 00:27:43,725 --> 00:27:46,027 the wording that's used in the 635 00:27:46,027 --> 00:27:47,767 applied for mark is a widely 636 00:27:47,767 --> 00:27:50,099 used or a commonplace message, 637 00:27:50,100 --> 00:27:53,964 and they do not think that the particular 638 00:27:53,964 --> 00:27:56,139 application should be registered, 639 00:27:56,140 --> 00:27:57,730 and it should be refused registration. 640 00:28:00,960 --> 00:28:03,180 There's a lot of evidence 641 00:28:03,180 --> 00:28:06,380 that one can use to to support 642 00:28:06,380 --> 00:28:09,147 this refusal, but I I want to, 643 00:28:09,147 --> 00:28:11,530 I want to make it clear that the 644 00:28:11,530 --> 00:28:13,660 most important piece of evidence 645 00:28:13,660 --> 00:28:16,444 that you must submit is evidence 646 00:28:16,444 --> 00:28:18,846 showing what the public perception 647 00:28:18,846 --> 00:28:22,038 of the meaning of the widely used 648 00:28:22,038 --> 00:28:26,730 message or commonplace phrase is. So, 649 00:28:26,730 --> 00:28:28,890 umm, just as an aside, 650 00:28:28,890 --> 00:28:32,794 an example would be "Have a nice day." 651 00:28:35,570 --> 00:28:37,610 That has a particular meaning 652 00:28:37,610 --> 00:28:39,650 and evokes a certain feeling. 653 00:28:39,650 --> 00:28:42,569 It's been around for a long time. 654 00:28:42,570 --> 00:28:44,775 You could go onto the internet in 655 00:28:44,775 --> 00:28:46,894 the information age and find evidence 656 00:28:46,894 --> 00:28:49,108 that shows what that particular phrase 657 00:28:49,108 --> 00:28:51,089 means in the eyes of the public. 658 00:28:51,090 --> 00:28:53,928 That's the kind of evidence that 659 00:28:53,928 --> 00:28:56,659 you must submit if you are 660 00:28:56,660 --> 00:28:58,345 protesting to a particular mark 661 00:28:58,345 --> 00:29:00,372 in an application and you are 662 00:29:00,372 --> 00:29:02,040 asserting that it's a widely used 663 00:29:02,040 --> 00:29:04,120 or it's a commonplace message. 664 00:29:04,120 --> 00:29:05,608 So if it's widely used and 665 00:29:05,608 --> 00:29:06,600 it's a commonplace message, 666 00:29:06,600 --> 00:29:09,048 it has a meaning that's known by the 667 00:29:09,048 --> 00:29:10,977 public such that the public wouldn't 668 00:29:10,977 --> 00:29:13,560 look at that phrase as a trademark. 669 00:29:13,560 --> 00:29:15,928 They would look at it as a widely 670 00:29:15,928 --> 00:29:17,611 used commonplace message that evokes 671 00:29:17,611 --> 00:29:19,663 some sort of meaning of feeling. 672 00:29:19,670 --> 00:29:20,900 And that's not a trademark. 673 00:29:20,900 --> 00:29:24,008 But if you're objecting or filing 674 00:29:24,008 --> 00:29:26,080 a letter of protest 675 00:29:26,080 --> 00:29:29,083 on this ground you need to provide 676 00:29:29,083 --> 00:29:31,828 the evidence of what that means. 677 00:29:31,830 --> 00:29:33,864 The next type of evidence you 678 00:29:33,864 --> 00:29:35,808 would provide would be evidence 679 00:29:35,808 --> 00:29:37,546 showing other people using it. 680 00:29:37,546 --> 00:29:39,370 And by other people I mean 681 00:29:39,370 --> 00:29:42,030 not the protester and not the applicant. 682 00:29:42,030 --> 00:29:44,816 How are other people using this widely 683 00:29:44,816 --> 00:29:46,530 used messaging in everyday speech? 684 00:29:46,530 --> 00:29:48,486 You'd find it in news articles 685 00:29:48,490 --> 00:29:51,416 or on web pages or blogs, you 686 00:29:51,416 --> 00:29:53,570 would submit that evidence. 687 00:29:53,570 --> 00:29:56,528 You also could submit evidence from 688 00:29:56,528 --> 00:29:59,120 online retail stores showing products 689 00:29:59,120 --> 00:30:02,332 with the particular phrase or, or message 690 00:30:02,332 --> 00:30:08,350 on a shirt, on a hat, on a cup, on a scarf. But 691 00:30:08,350 --> 00:30:11,500 if you don't show what 692 00:30:11,500 --> 00:30:14,783 the phrase or, or, 693 00:30:14,783 --> 00:30:17,598 the widely used or commonplace 694 00:30:17,598 --> 00:30:19,287 message actually means, 695 00:30:19,290 --> 00:30:20,532 then your letter of protest will 696 00:30:20,532 --> 00:30:21,153 not be considered. 697 00:30:23,230 --> 00:30:25,082 Again, all website evidence 698 00:30:25,082 --> 00:30:26,934 that you would submit, 699 00:30:26,940 --> 00:30:28,860 you'll need to have the URL 700 00:30:28,860 --> 00:30:30,898 and the access or print date 701 00:30:30,898 --> 00:30:32,944 for each of the websites that 702 00:30:32,944 --> 00:30:35,199 you use. Printed publications: 703 00:30:35,200 --> 00:30:36,592 we would need the name and 704 00:30:36,592 --> 00:30:38,250 the date of the publication. 705 00:30:44,120 --> 00:30:46,232 Another common reason for a letter of 706 00:30:46,232 --> 00:30:47,520 protest, and I say common reason, 707 00:30:47,520 --> 00:30:50,130 it's relatively new one that we 708 00:30:50,130 --> 00:30:52,639 are starting to see more of, 709 00:30:52,640 --> 00:30:54,670 and that is that the specimen is not in use. 710 00:30:57,530 --> 00:30:59,612 What sort of evidence would you 711 00:30:59,612 --> 00:31:01,964 provide to show that the specimen 712 00:31:01,964 --> 00:31:04,199 that the applicant submitted with 713 00:31:04,199 --> 00:31:06,679 their application is not real or not 714 00:31:06,680 --> 00:31:09,770 one that is actually in use? 715 00:31:09,770 --> 00:31:12,270 Evidence that you would submit 716 00:31:12,270 --> 00:31:14,900 would be third-party websites showing 717 00:31:14,900 --> 00:31:17,700 an image of the goods that the 718 00:31:17,700 --> 00:31:19,919 applicant shows in their specimen, 719 00:31:19,920 --> 00:31:21,582 but maybe without 720 00:31:21,582 --> 00:31:24,906 the particular applied for mark on 721 00:31:24,906 --> 00:31:28,529 that image from third-party website. 722 00:31:28,530 --> 00:31:30,672 Again, you're going to provide us with 723 00:31:30,672 --> 00:31:33,160 the URL and the access or the print 724 00:31:33,160 --> 00:31:35,219 date of each website that you use. 725 00:31:35,220 --> 00:31:38,265 You could also submit a forensic report. 726 00:31:38,270 --> 00:31:40,275 There is forensic software that's 727 00:31:40,275 --> 00:31:43,451 out there that you can use to show 728 00:31:43,451 --> 00:31:45,641 that a particular image was doctored 729 00:31:45,641 --> 00:31:48,016 or altered or, or, or mocked up. 730 00:31:48,020 --> 00:31:52,130 We would use that evidence and 731 00:31:52,130 --> 00:31:55,126 submit that to the record for the 732 00:31:55,126 --> 00:31:57,190 examining attorney to consider. 733 00:31:57,190 --> 00:31:59,234 You could also provide us, if you 734 00:31:59,234 --> 00:32:01,669 are aware of a particular bad actor, 735 00:32:01,670 --> 00:32:04,330 you could submit the application 736 00:32:04,330 --> 00:32:06,990 serial numbers or perhaps registration 737 00:32:07,066 --> 00:32:10,338 numbers if they got through, for four 738 00:32:10,338 --> 00:32:14,082 different marks that use the exact 739 00:32:14,082 --> 00:32:16,154 same image with a different trademark 740 00:32:16,154 --> 00:32:18,010 on it in each of the applications. 741 00:32:18,010 --> 00:32:20,692 You could submit those registration or 742 00:32:20,692 --> 00:32:23,530 serial numbers, that would be helpful in 743 00:32:23,530 --> 00:32:26,310 in, in supporting your objection. 744 00:32:26,310 --> 00:32:26,786 Umm, 745 00:32:26,786 --> 00:32:30,118 another method is to show that the 746 00:32:30,118 --> 00:32:33,220 UPC barcodes that an applicant may 747 00:32:33,220 --> 00:32:36,298 have on several of their specimens. 748 00:32:36,300 --> 00:32:39,072 You could show that the UC 749 00:32:39,072 --> 00:32:40,920 UPC barcodes are identical. 750 00:32:40,920 --> 00:32:43,568 You could find a way to prove that 751 00:32:43,568 --> 00:32:45,340 the specimen that they submitted 752 00:32:45,340 --> 00:32:48,850 was was not in use, or, 753 00:32:48,850 --> 00:32:51,142 or even existed prior to the 754 00:32:51,142 --> 00:32:53,788 filing date of the application. 755 00:32:53,788 --> 00:32:55,666 Assuming space unused, 756 00:32:55,670 --> 00:32:59,667 you could also provide images from retail, 757 00:32:59,670 --> 00:33:00,136 retail, 758 00:33:00,136 --> 00:33:02,466 online retail websites showing that 759 00:33:02,466 --> 00:33:05,426 the identified goods in the protested 760 00:33:05,426 --> 00:33:07,466 application are not available. 761 00:33:07,470 --> 00:33:09,717 But, you have to combine that with 762 00:33:09,717 --> 00:33:11,409 some other evidence of non use. 763 00:33:11,410 --> 00:33:12,188 Again, though, 764 00:33:12,188 --> 00:33:14,911 let's go back to the rule about 765 00:33:14,911 --> 00:33:16,730 the website evidence. 766 00:33:16,730 --> 00:33:18,458 It must include the URL and you must 767 00:33:18,458 --> 00:33:20,064 include the access or print date for 768 00:33:20,064 --> 00:33:22,050 each website in order for us to consider it. 769 00:33:22,050 --> 00:33:24,438 But before we move on to 770 00:33:24,438 --> 00:33:27,050 the, to this, to the next 771 00:33:27,050 --> 00:33:28,052 type of evidence, 772 00:33:28,052 --> 00:33:30,390 I want to show you an example 773 00:33:30,390 --> 00:33:34,302 from a letter of protest that was 774 00:33:34,302 --> 00:33:36,032 arguing that the specimen was 775 00:33:36,032 --> 00:33:38,419 not in use and how it looked, 776 00:33:38,420 --> 00:33:40,032 how, how the, the, 777 00:33:40,032 --> 00:33:42,450 how did the evidence look that 778 00:33:42,536 --> 00:33:47,060 the protestors submitted. So, 779 00:33:47,060 --> 00:33:49,000 in this particular case, 780 00:33:49,000 --> 00:33:51,910 the goods were headphones or earphones. 781 00:33:53,950 --> 00:33:56,340 The specimen shown on the 782 00:33:56,340 --> 00:33:58,730 right belongs to the applicant. 783 00:33:58,730 --> 00:34:02,150 The protester provided the, the 784 00:34:02,150 --> 00:34:04,880 web page image on the right, 785 00:34:04,880 --> 00:34:06,490 so on the left is the applicant, 786 00:34:06,490 --> 00:34:08,968 and if you look at the box 787 00:34:08,970 --> 00:34:10,610 that is holding the headphones, 788 00:34:10,610 --> 00:34:13,376 you'll see the trademark is written 789 00:34:13,376 --> 00:34:16,412 on the bottom of the box there. 790 00:34:16,412 --> 00:34:19,740 If you look at the same image over 791 00:34:19,834 --> 00:34:23,510 here on the right that was used in the 792 00:34:23,510 --> 00:34:25,535 evidence that the protester submitted, 793 00:34:25,540 --> 00:34:27,070 they used the same image, 794 00:34:27,070 --> 00:34:29,986 but that particular image doesn't have 795 00:34:29,990 --> 00:34:31,038 a trademark on it. 796 00:34:31,038 --> 00:34:32,086 Now in this case, 797 00:34:32,090 --> 00:34:34,976 the protester did submit other evidence, 798 00:34:34,980 --> 00:34:38,430 other third parties using this 799 00:34:38,430 --> 00:34:41,190 exact same image. So, 800 00:34:41,190 --> 00:34:44,646 at the very least, it calls into question 801 00:34:44,650 --> 00:34:46,852 the applicant's specimen. 802 00:34:46,852 --> 00:34:49,788 And the examining attorney 803 00:34:49,790 --> 00:34:50,903 should question that. 804 00:34:50,903 --> 00:34:53,129 If this evidence could be placed 805 00:34:53,129 --> 00:34:55,409 in the record for the examining 806 00:34:55,409 --> 00:34:58,052 attorney to review and act upon. 807 00:34:58,052 --> 00:35:02,672 So this, I see this, this kind of letter of 808 00:35:02,672 --> 00:35:05,280 protest with this type of specimen a lot. 809 00:35:05,280 --> 00:35:08,680 This is, this is the easiest way to, 810 00:35:08,680 --> 00:35:11,910 to show that the, that the, that the 811 00:35:11,910 --> 00:35:13,735 specimen that the applicant has 812 00:35:13,735 --> 00:35:15,527 submitted may not be legitimate. 813 00:35:15,530 --> 00:35:19,794 So I show you this just to show that 814 00:35:19,794 --> 00:35:22,371 it can be done and this is, this is 815 00:35:22,371 --> 00:35:24,910 the type of evidence that supports 816 00:35:24,910 --> 00:35:26,822 the particular objection that 817 00:35:26,822 --> 00:35:29,690 the specimen is not in use. 818 00:35:29,690 --> 00:35:29,897 All right, 819 00:35:29,897 --> 00:35:30,518 so moving on. 820 00:35:32,970 --> 00:35:35,220 The last common letter of protest 821 00:35:35,220 --> 00:35:38,005 objection is that that the protesters 822 00:35:38,005 --> 00:35:40,705 asserting that the applied for mark 823 00:35:40,705 --> 00:35:43,264 as a false, creates a false connection 824 00:35:43,264 --> 00:35:45,440 with a protester or some other party. 825 00:35:45,440 --> 00:35:48,365 So the evidence that we look for here is 826 00:35:48,365 --> 00:35:51,379 third-party websites and magazine articles, 827 00:35:51,380 --> 00:35:55,880 newspaper articles that refer, 828 00:35:55,880 --> 00:35:59,576 refer to the protester or the party 829 00:35:59,576 --> 00:36:02,339 that the protester is raising, 830 00:36:02,340 --> 00:36:04,725 showing that the proposed applied 831 00:36:04,725 --> 00:36:08,215 for mark would be viewed as pointing 832 00:36:08,215 --> 00:36:11,281 uniquely or an, unmistakably to the 833 00:36:11,281 --> 00:36:15,209 protester or, or the other other party. So, 834 00:36:17,280 --> 00:36:19,716 it could be any type of website 835 00:36:19,716 --> 00:36:21,619 evidence that you might find, 836 00:36:21,620 --> 00:36:24,104 but again we need a URL and the access 837 00:36:24,104 --> 00:36:27,229 or print date for the website, and with 838 00:36:27,229 --> 00:36:29,571 printed publications we need the name 839 00:36:29,571 --> 00:36:34,374 of the publication and the, umm, it, 840 00:36:34,374 --> 00:36:38,833 and indeed, the date of the publication. 841 00:36:38,840 --> 00:36:42,576 Before we move on to the next section, 842 00:36:42,580 --> 00:36:46,032 I get questions sometimes about 843 00:36:46,032 --> 00:36:48,497 how do you keep your 844 00:36:48,500 --> 00:36:54,780 evidence under 75 pages. And 845 00:36:54,780 --> 00:36:57,396 one method that we suggest is that you 846 00:36:57,396 --> 00:37:00,606 do not submit a copy of the prosecution 847 00:37:00,606 --> 00:37:03,281 history for the protests that application 848 00:37:03,281 --> 00:37:06,113 or the registrations that you submitted 849 00:37:06,113 --> 00:37:08,200 as third-party registration evidence. 850 00:37:08,200 --> 00:37:10,860 Umm, we do not need all of 851 00:37:10,938 --> 00:37:12,600 the prosecution history, 852 00:37:12,600 --> 00:37:16,268 we already have that. We just need 853 00:37:16,268 --> 00:37:19,308 you to to provide the registration 854 00:37:19,308 --> 00:37:21,296 showing its current status. 855 00:37:21,300 --> 00:37:22,656 That if you're relying on it, 856 00:37:22,660 --> 00:37:24,136 it should be a live registration. 857 00:37:24,140 --> 00:37:28,370 It should be based on use. So, 858 00:37:28,370 --> 00:37:32,050 use your 859 00:37:32,050 --> 00:37:34,948 75 page limit 860 00:37:34,950 --> 00:37:37,574 umm, very conservatively, and 861 00:37:37,574 --> 00:37:38,886 only submit 862 00:37:38,890 --> 00:37:42,664 what you need to submit. So in terms of 863 00:37:42,664 --> 00:37:44,032 the documents that you are submitting that 864 00:37:44,032 --> 00:37:45,579 are already in our office records, 865 00:37:45,580 --> 00:37:49,177 don't submit things that we would 866 00:37:49,177 --> 00:37:53,636 have available on our systems as well. 867 00:37:53,640 --> 00:37:54,220 Umm, 868 00:37:54,220 --> 00:37:57,120 also don't provide any information 869 00:37:57,120 --> 00:37:58,860 or evidence about 870 00:37:58,860 --> 00:38:01,667 the alleged prior use that you may 871 00:38:01,667 --> 00:38:06,663 have evidence of actual confusion or 872 00:38:06,663 --> 00:38:10,329 any declarations that you may have. 873 00:38:10,330 --> 00:38:12,316 Those are not appropriate subject matters 874 00:38:12,320 --> 00:38:14,735 for evidence in a letter of protest. 875 00:38:14,740 --> 00:38:15,860 Now, they are appropriate, 876 00:38:15,860 --> 00:38:16,140 though, 877 00:38:16,140 --> 00:38:19,906 for another party's proceeding at the TTAB. 878 00:38:19,910 --> 00:38:20,447 Lastly, 879 00:38:20,447 --> 00:38:23,669 don't submit evidence that the examining 880 00:38:23,669 --> 00:38:26,980 attorney used in their office action 881 00:38:26,980 --> 00:38:29,665 in in the protested application. 882 00:38:29,670 --> 00:38:34,024 Again, that evidence is already of record. 883 00:38:34,030 --> 00:38:35,885 If there are any questions on this, 884 00:38:35,890 --> 00:38:38,620 evidence, a discussion topic, and 885 00:38:38,620 --> 00:38:41,750 I'm sure that there will be, 886 00:38:41,750 --> 00:38:43,580 uh, please go back to 887 00:38:45,850 --> 00:38:49,394 TMWebinar at USPTO dot gov. 888 00:38:54,640 --> 00:38:58,694 Right, so the next discussion topic: 889 00:38:58,694 --> 00:39:00,478 The letter of protest 890 00:39:00,478 --> 00:39:01,746 form, the form itself. 891 00:39:01,746 --> 00:39:03,106 What does it look like? 892 00:39:03,110 --> 00:39:04,580 How do you find it? 893 00:39:04,580 --> 00:39:05,128 What are you doing? 894 00:39:08,290 --> 00:39:09,638 The letter protest form 895 00:39:09,638 --> 00:39:11,323 is found on our website. 896 00:39:11,330 --> 00:39:15,010 In the petition forms, it's a TEAS form. 897 00:39:15,010 --> 00:39:17,254 If you filed an application before, 898 00:39:17,254 --> 00:39:19,350 filed anything here at the PTO, 899 00:39:19,350 --> 00:39:21,330 you'll recognize the TEAS forms. 900 00:39:21,330 --> 00:39:23,690 This is one of them. 901 00:39:23,690 --> 00:39:26,770 It's number 10 in the 902 00:39:26,770 --> 00:39:28,618 petition form section. 903 00:39:28,620 --> 00:39:29,810 And it looks like this. 904 00:39:32,030 --> 00:39:33,785 You have entered the serial 905 00:39:33,785 --> 00:39:36,800 number and when you hit enter, 906 00:39:36,800 --> 00:39:39,928 you'll have a box come up asking you 907 00:39:39,930 --> 00:39:45,508 to check the box for your, check 908 00:39:45,508 --> 00:39:48,434 the box for the basis for your 909 00:39:48,434 --> 00:39:49,940 objection in your letter of protest. 910 00:39:49,940 --> 00:39:51,820 So, you could check that, 911 00:39:51,820 --> 00:39:54,460 likelihood of confusion, and enter the 912 00:39:54,460 --> 00:39:56,704 registration numbers or the application 913 00:39:56,704 --> 00:39:59,194 serial numbers in the text box. 914 00:39:59,200 --> 00:40:01,576 There you can check that the mark is generic, 915 00:40:01,580 --> 00:40:03,220 or that it's merely descriptive. 916 00:40:03,220 --> 00:40:05,290 Or check all three if that's 917 00:40:05,290 --> 00:40:07,378 something that you're going to be 918 00:40:07,378 --> 00:40:09,316 asserting in your letter of protest. 919 00:40:09,320 --> 00:40:11,108 Notice the last box: 920 00:40:11,108 --> 00:40:12,896 "Other legal basis explanation," 921 00:40:12,896 --> 00:40:15,418 of "legal basis" that is a free- 922 00:40:15,418 --> 00:40:17,810 form text box so you can write 923 00:40:17,810 --> 00:40:21,866 uh, uh, a basis for your objection there, 924 00:40:21,870 --> 00:40:24,219 if it's not one that's in the check boxes, 925 00:40:24,220 --> 00:40:27,556 and if it's one that we can consider. 926 00:40:27,560 --> 00:40:30,410 We will, umm, but moving on, 927 00:40:33,070 --> 00:40:33,973 the second page 928 00:40:33,973 --> 00:40:35,779 of our form is where you 929 00:40:35,779 --> 00:40:37,489 would attach your evidence. 930 00:40:37,490 --> 00:40:39,176 Now there's a lot of instructions 931 00:40:39,176 --> 00:40:40,300 here in the evidence. 932 00:40:43,470 --> 00:40:46,110 This form was last updated over the summer. 933 00:40:46,110 --> 00:40:48,288 It most likely will be updated 934 00:40:48,290 --> 00:40:50,094 before January 31st. Our 935 00:40:50,094 --> 00:40:52,349 hope is before January 31st. 936 00:40:52,350 --> 00:40:54,072 So some of the things that 937 00:40:54,072 --> 00:40:55,710 are listed here will change. 938 00:40:55,710 --> 00:40:57,471 You will notice 939 00:40:57,471 --> 00:41:00,406 in our letter of protest form, 940 00:41:00,410 --> 00:41:02,265 it still says that you need to 941 00:41:02,265 --> 00:41:04,085 provide, if your objection is based 942 00:41:04,085 --> 00:41:06,017 on a likelihood of confusion, that 943 00:41:06,017 --> 00:41:08,045 you need to provide an electronic 944 00:41:08,045 --> 00:41:10,306 copy of the U.S. registration or the 945 00:41:10,306 --> 00:41:11,846 prior pending application that forms 946 00:41:11,846 --> 00:41:13,959 the basis for your objection under 947 00:41:13,960 --> 00:41:15,600 Section 2(d), likelihood confusion. 948 00:41:15,600 --> 00:41:18,060 That is no longer the case. 949 00:41:18,060 --> 00:41:19,180 The form 950 00:41:19,180 --> 00:41:22,251 has not been updated, and so we 951 00:41:22,251 --> 00:41:23,636 still will take that evidence 952 00:41:23,640 --> 00:41:25,530 if you want to submit it. 953 00:41:25,530 --> 00:41:27,789 But, you do not need to submit that evidence, 954 00:41:27,790 --> 00:41:30,002 especially in light of the fact that 955 00:41:30,002 --> 00:41:32,292 you're limited to 75 pages and ten 956 00:41:32,292 --> 00:41:33,887 items of evidence per objection. 957 00:41:33,890 --> 00:41:38,650 So those pages that you would submit would be 958 00:41:38,650 --> 00:41:41,350 considered part of the 10 items of evidence, 959 00:41:41,350 --> 00:41:43,558 and in your total 960 00:41:43,560 --> 00:41:44,288 75 pages. 961 00:41:44,288 --> 00:41:46,836 So I recognize that what I have 962 00:41:46,836 --> 00:41:49,677 said is different than, excuse me, is 963 00:41:49,677 --> 00:41:52,120 different than what the form is saying, 964 00:41:52,120 --> 00:41:54,144 so I just want to alert you to 965 00:41:54,144 --> 00:41:56,353 that, that the requirement is that 966 00:41:56,353 --> 00:41:58,393 you submit the registration number 967 00:41:58,400 --> 00:42:01,998 and the, and, and or the prior 968 00:42:01,998 --> 00:42:04,158 pending application number, and 969 00:42:04,158 --> 00:42:07,119 nothing else for your identity, 970 00:42:07,119 --> 00:42:09,075 identifying the registration or 971 00:42:09,075 --> 00:42:11,520 prior pending application that forms 972 00:42:11,584 --> 00:42:14,172 the basis of your letter of protest 973 00:42:14,172 --> 00:42:17,977 objection objection under section 2(d). 974 00:42:17,980 --> 00:42:21,684 So moving on to the next page here: 975 00:42:21,690 --> 00:42:22,956 As we said at the beginning, 976 00:42:22,960 --> 00:42:24,178 you had to provide your name. 977 00:42:24,180 --> 00:42:25,937 You have to provide your email address 978 00:42:25,937 --> 00:42:27,749 and all this other information required 979 00:42:27,749 --> 00:42:32,708 data fields or, or marked by a, 980 00:42:32,710 --> 00:42:36,778 by red asterisks. 981 00:42:36,780 --> 00:42:38,454 Then, of course, you'll sign the 982 00:42:38,454 --> 00:42:40,139 letter of protest with the E- 983 00:42:40,139 --> 00:42:41,687 signature and you will validate it 984 00:42:41,687 --> 00:42:43,516 and then pay the fee and file it. 985 00:42:43,520 --> 00:42:47,984 So that is the form, is pretty simple. 986 00:42:47,990 --> 00:42:51,108 We hope to make it simpler for you, 987 00:42:51,108 --> 00:42:54,740 but this is how it stands right now. 988 00:42:54,740 --> 00:42:56,534 So you submitted your letter of protest, 989 00:42:56,534 --> 00:42:58,748 you've got, had your evidence in there. 990 00:42:58,750 --> 00:43:00,598 You had an index. You had, 991 00:43:00,600 --> 00:43:01,888 let's say, 992 00:43:01,888 --> 00:43:05,108 seven items of evidence that 993 00:43:05,108 --> 00:43:07,560 support your objection and 994 00:43:07,560 --> 00:43:09,570 it is reviewed by petitions attorney 995 00:43:09,570 --> 00:43:11,712 here in the Petitions Office and 996 00:43:11,712 --> 00:43:13,567 your letter protest is considered. 997 00:43:13,570 --> 00:43:15,538 So what, what happens in a 998 00:43:15,538 --> 00:43:16,850 letter of protest is considered? 999 00:43:16,850 --> 00:43:19,770 What does it look like when it's considered? 1000 00:43:19,770 --> 00:43:22,378 You'll get a letter. 1001 00:43:22,380 --> 00:43:25,362 And it will say that your letter 1002 00:43:25,362 --> 00:43:27,749 of protest identified an objection, 1003 00:43:27,750 --> 00:43:30,566 and we have considered it and we are 1004 00:43:30,566 --> 00:43:33,031 forwarding it on to the examining 1005 00:43:33,031 --> 00:43:35,141 attorney and the examining attorney 1006 00:43:35,141 --> 00:43:37,289 will make a determination about 1007 00:43:37,289 --> 00:43:41,100 whether or not to act on that evidence. 1008 00:43:41,100 --> 00:43:42,409 So that, so this is what your 1009 00:43:42,409 --> 00:43:43,220 letter will look like. 1010 00:43:43,220 --> 00:43:43,668 Now, 1011 00:43:43,668 --> 00:43:47,700 this letter itself will not be in the record, 1012 00:43:47,700 --> 00:43:51,588 but what will be in the record, so, 1013 00:43:51,590 --> 00:43:55,447 you'll see in TSDR, in the 1014 00:43:55,447 --> 00:43:57,620 prosecution history, you'll see 1015 00:43:57,620 --> 00:44:01,238 this entry for "letter of protest 1016 00:44:01,238 --> 00:44:02,444 evidence forwarded." 1017 00:44:02,450 --> 00:44:05,594 So that's how you know that 1018 00:44:05,594 --> 00:44:07,690 your letter of protest 1019 00:44:07,690 --> 00:44:09,295 has been considered and the 1020 00:44:09,295 --> 00:44:10,579 evidence has been forwarded 1021 00:44:10,579 --> 00:44:12,239 to the examining attorney. 1022 00:44:12,240 --> 00:44:13,700 But the letter itself 1023 00:44:13,700 --> 00:44:16,524 will not be in the record because 1024 00:44:16,524 --> 00:44:18,716 it identifies the protestor. 1025 00:44:18,720 --> 00:44:20,151 But the evidence 1026 00:44:20,151 --> 00:44:23,013 is forwarded to the examining attorney, 1027 00:44:23,020 --> 00:44:24,567 so this is what it looks like 1028 00:44:24,567 --> 00:44:25,558 in the prosecution, in the prosecution 1029 00:44:25,558 --> 00:44:27,490 history. And as far as for what 1030 00:44:27,490 --> 00:44:28,900 the document would look like 1031 00:44:31,080 --> 00:44:36,350 in TSDR, you'll see in the document 1032 00:44:36,350 --> 00:44:38,438 listing an "administrative response." 1033 00:44:38,440 --> 00:44:40,800 It's from the same date. 1034 00:44:40,800 --> 00:44:43,056 I'm going to switch back here: 1035 00:44:43,060 --> 00:44:45,124 "May 11th letter of protest 1036 00:44:45,124 --> 00:44:47,188 evidence has been forwarded." 1037 00:44:47,190 --> 00:44:48,042 And then if you go and 1038 00:44:48,042 --> 00:44:49,030 you look in the documents, 1039 00:44:49,030 --> 00:44:52,306 you can see what actually was forwarded. 1040 00:44:52,310 --> 00:44:55,330 So in this particular protest, 1041 00:44:55,330 --> 00:44:58,582 there was a lot of evidence 1042 00:44:58,582 --> 00:45:00,750 that the protesters submitted. 1043 00:45:00,750 --> 00:45:04,216 But not all of it was usable, 1044 00:45:04,220 --> 00:45:06,105 so the usable evidence was 1045 00:45:06,105 --> 00:45:07,990 forwarded to the examining attorney. 1046 00:45:07,990 --> 00:45:09,900 It's referenced here in the 1047 00:45:09,900 --> 00:45:11,046 letter of protest memorandum, 1048 00:45:11,050 --> 00:45:13,130 which we call an "administrative 1049 00:45:13,130 --> 00:45:15,818 response" in the document listing. 1050 00:45:15,820 --> 00:45:18,346 And this evidence on the right. 1051 00:45:18,350 --> 00:45:22,020 From Executive Gov, that was 1052 00:45:22,020 --> 00:45:24,956 attached to the memorandum. 1053 00:45:24,960 --> 00:45:27,480 Also, note in this particular letter 1054 00:45:27,480 --> 00:45:29,890 of protest there were two bases for 1055 00:45:29,890 --> 00:45:31,360 the letter of protest objections. 1056 00:45:31,360 --> 00:45:33,142 One was that there was a 1057 00:45:33,142 --> 00:45:34,033 likelihood of confusion. 1058 00:45:34,040 --> 00:45:35,930 The registration number, is registered, 1059 00:45:35,930 --> 00:45:38,570 is, is listed, it as the first, 1060 00:45:38,570 --> 00:45:39,858 come as the first 1061 00:45:42,170 --> 00:45:43,850 reason for the letter protesting. The 1062 00:45:43,850 --> 00:45:46,574 second was a false association that was 1063 00:45:46,574 --> 00:45:50,018 evidence for the examiner to consider. Now, 1064 00:45:50,020 --> 00:45:53,608 this evidence may not be enough 1065 00:45:53,610 --> 00:45:56,810 for the false association argument. 1066 00:45:56,810 --> 00:45:58,994 But it's something that the examiner can 1067 00:45:58,994 --> 00:46:01,488 use and build upon to make that refusal, 1068 00:46:01,490 --> 00:46:03,458 if they determine that they should. 1069 00:46:06,510 --> 00:46:11,974 So, sometimes a letter of protest is not 1070 00:46:11,974 --> 00:46:15,187 considered and I would like to go over 1071 00:46:15,187 --> 00:46:18,065 the most common reasons about why we 1072 00:46:18,065 --> 00:46:21,390 would not consider a letter of protest. 1073 00:46:21,390 --> 00:46:24,302 The most common one is that the 1074 00:46:24,302 --> 00:46:27,374 protester raises an objection and they 1075 00:46:27,374 --> 00:46:30,279 don't provide any evidence whatsoever. 1076 00:46:30,280 --> 00:46:33,696 Or they provide evidence that we cannot use. 1077 00:46:33,700 --> 00:46:35,860 Maybe they didn't have a URL. 1078 00:46:35,860 --> 00:46:38,317 Maybe the evidence was the screen capture 1079 00:46:38,317 --> 00:46:41,027 was off and they still submitted it. 1080 00:46:41,030 --> 00:46:43,646 It, it so if we determined that the 1081 00:46:43,646 --> 00:46:45,945 letter of protest has no evidence and 1082 00:46:45,945 --> 00:46:48,309 evidence is required for the objection, 1083 00:46:48,310 --> 00:46:50,038 then we will not, excuse me, 1084 00:46:50,040 --> 00:46:52,217 we will not consider the letter of protest. 1085 00:46:55,610 --> 00:46:56,542 Another one that we're 1086 00:46:56,542 --> 00:46:57,940 seeing a lot of is that 1087 00:46:57,940 --> 00:47:00,418 the letter of protest has evidence. 1088 00:47:00,420 --> 00:47:03,115 And it is required to have evidence. 1089 00:47:03,120 --> 00:47:04,935 But, the protester doesn't provide 1090 00:47:04,935 --> 00:47:06,750 an index for that evidence. 1091 00:47:06,750 --> 00:47:09,696 Evidence is required 1092 00:47:09,696 --> 00:47:11,610 under 37 CFR 2.149. 1093 00:47:11,610 --> 00:47:13,780 They are required to provide this evidence, 1094 00:47:13,780 --> 00:47:15,190 and if they do not, 1095 00:47:15,190 --> 00:47:16,360 if a protester does not, 1096 00:47:16,360 --> 00:47:19,424 we will not consider the letter of protest. 1097 00:47:19,430 --> 00:47:22,657 Another common reason is that there is 1098 00:47:22,657 --> 00:47:24,999 information written on the itemized 1099 00:47:24,999 --> 00:47:28,310 index or the, even the evidence itself. 1100 00:47:28,310 --> 00:47:30,935 There's arguments written on that, 1101 00:47:30,935 --> 00:47:35,120 information that identifies the protester, 1102 00:47:35,120 --> 00:47:37,256 umm, or it identifies the protester. 1103 00:47:37,256 --> 00:47:39,991 Early example I gave is that, for the 1104 00:47:39,991 --> 00:47:41,857 index, would be that the protester 1105 00:47:41,928 --> 00:47:43,963 uses their own letterhead and 1106 00:47:43,963 --> 00:47:45,998 identifies themselves on their end 1107 00:47:46,000 --> 00:47:47,918 index. Because it's not a white sheet 1108 00:47:47,918 --> 00:47:49,598 of blank white sheet of paper, 1109 00:47:49,600 --> 00:47:51,607 it has who they are on the top and 1110 00:47:51,607 --> 00:47:53,652 then the index. We can't use that. 1111 00:47:53,652 --> 00:47:55,410 We are identifying the protester there. 1112 00:47:58,070 --> 00:48:00,940 It may also be that the protester 1113 00:48:00,940 --> 00:48:03,739 presents arguments on the evidence itself, 1114 00:48:03,740 --> 00:48:07,826 their reason about why their evidence 1115 00:48:07,826 --> 00:48:10,550 supports their particular claim. 1116 00:48:10,550 --> 00:48:12,650 We cannot use that evidence either, 1117 00:48:12,650 --> 00:48:14,338 and if that is all that we have 1118 00:48:14,338 --> 00:48:16,154 and then, and then, we go back to 1119 00:48:16,154 --> 00:48:18,244 number one up there where we have to 1120 00:48:18,244 --> 00:48:19,674 consider that, that letter of protest 1121 00:48:19,674 --> 00:48:21,705 has no evidence and evidence is 1122 00:48:21,705 --> 00:48:23,450 required for the particular objection. 1123 00:48:23,450 --> 00:48:25,810 Therefore, we cannot consider 1124 00:48:25,810 --> 00:48:28,170 the letter of protest. 1125 00:48:28,170 --> 00:48:30,108 Next reason is that a protester 1126 00:48:30,108 --> 00:48:32,590 will submit more than ten items of 1127 00:48:32,590 --> 00:48:34,460 evidence to support their objection, 1128 00:48:34,460 --> 00:48:36,665 or they'll submit more than 1129 00:48:36,665 --> 00:48:37,988 75 pages without 1130 00:48:40,040 --> 00:48:42,080 an explanation of why they need 1131 00:48:42,080 --> 00:48:44,110 to submit more than 75 pages. 1132 00:48:44,110 --> 00:48:45,790 If that occurs, we will not 1133 00:48:45,790 --> 00:48:47,580 consider the, the letter of protest, 1134 00:48:50,470 --> 00:48:52,738 particularly to a letter of protest 1135 00:48:52,738 --> 00:48:55,190 based on a likelihood of confusion, 1136 00:48:55,190 --> 00:48:57,300 and the protestor is submitting 1137 00:48:57,300 --> 00:49:00,190 evidence trying to show that the goods 1138 00:49:00,190 --> 00:49:03,750 at issue are related and they only rely 1139 00:49:03,750 --> 00:49:07,498 on foreign registrations, umm, or they rely on 1140 00:49:11,560 --> 00:49:13,404 66, uh, 66 registrations, or 1141 00:49:13,404 --> 00:49:15,709 registrations based solely on 44. 1142 00:49:15,710 --> 00:49:18,170 So those applications were registered, 1143 00:49:18,170 --> 00:49:22,526 but they were not based on use and the 1144 00:49:22,526 --> 00:49:24,488 registrations, at least unless they 1145 00:49:24,488 --> 00:49:26,750 follow Section 8 information down the 1146 00:49:26,820 --> 00:49:29,971 road if they're not based on use, then 1147 00:49:29,971 --> 00:49:33,368 they cannot be used to show that the 1148 00:49:33,368 --> 00:49:36,230 goods and or services are related. 1149 00:49:36,230 --> 00:49:37,958 If that's all that they submit, 1150 00:49:37,958 --> 00:49:39,807 then, then we don't have evidence 1151 00:49:39,807 --> 00:49:42,026 that we can use to support the 1152 00:49:42,026 --> 00:49:43,996 objection to forward to the examiner, 1153 00:49:44,000 --> 00:49:46,674 so that letter of protest cannot be considered. 1154 00:49:46,680 --> 00:49:49,893 Umm, another one that we see at 1155 00:49:49,893 --> 00:49:52,939 times is the protester will 1156 00:49:52,940 --> 00:49:55,166 have a typographical error when they 1157 00:49:55,166 --> 00:49:56,650 identified the registration form 1158 00:49:56,709 --> 00:49:58,539 which the letter of protest is based. 1159 00:49:58,540 --> 00:50:00,010 This could be not just for 2(d)s, 1160 00:50:00,010 --> 00:50:02,116 but this would also be for 1161 00:50:02,116 --> 00:50:04,429 registrations that are used in a 1162 00:50:04,429 --> 00:50:06,117 particular identification of goods 1163 00:50:06,117 --> 00:50:07,805 in a protest application. 1164 00:50:07,810 --> 00:50:11,185 So if you give us the wrong serial number, 1165 00:50:11,190 --> 00:50:14,169 a registration number, 1166 00:50:14,170 --> 00:50:17,012 that is not that, registration is not 1167 00:50:17,012 --> 00:50:20,141 going to be the mark that you want 1168 00:50:20,141 --> 00:50:23,319 to use to to support your objection, 1169 00:50:23,320 --> 00:50:26,200 and we will not. 1170 00:50:26,200 --> 00:50:28,790 We will not try to figure out what you meant. 1171 00:50:28,790 --> 00:50:31,000 So, 1172 00:50:31,000 --> 00:50:33,100 it says typographical error and the 1173 00:50:33,100 --> 00:50:34,660 registration number that you provide, 1174 00:50:34,660 --> 00:50:37,225 the letter of protest will likely 1175 00:50:37,225 --> 00:50:38,764 not be considered. 1176 00:50:38,770 --> 00:50:41,108 Another one, going back to website evidence: 1177 00:50:41,110 --> 00:50:43,078 If the protester's evidence does not 1178 00:50:43,078 --> 00:50:46,032 have the URL or the access date of the 1179 00:50:46,032 --> 00:50:48,768 web page that you're using as your evidence, 1180 00:50:48,770 --> 00:50:50,450 if you don't, do not provide that, 1181 00:50:50,450 --> 00:50:52,627 then that evidence will not be used. 1182 00:50:52,630 --> 00:50:54,470 And if that's all that you have, then 1183 00:50:54,470 --> 00:50:56,463 you have no evidence and the letter of 1184 00:50:56,463 --> 00:50:57,943 protest will not be considered. 1185 00:50:57,950 --> 00:51:00,596 The same goes for the publications. 1186 00:51:00,600 --> 00:51:01,905 If you don't provide for 1187 00:51:01,905 --> 00:51:02,427 printed publications, 1188 00:51:02,430 --> 00:51:03,906 if you don't provide the name 1189 00:51:03,910 --> 00:51:05,926 and the date of the publication, 1190 00:51:05,930 --> 00:51:07,235 then it's not evidence that, 1191 00:51:07,235 --> 00:51:09,109 that we can use. If no other 1192 00:51:09,110 --> 00:51:11,168 evidence is included, 1193 00:51:11,168 --> 00:51:14,108 then again, later of protests 1194 00:51:14,108 --> 00:51:16,460 cannot be considered. 1195 00:51:16,460 --> 00:51:19,771 I, one other thing that I, I 1196 00:51:19,771 --> 00:51:21,458 see, and I understand why, 1197 00:51:21,458 --> 00:51:24,334 why, why people do this, but they might 1198 00:51:24,334 --> 00:51:29,092 give me two screencaptures on one page 1199 00:51:29,092 --> 00:51:34,949 that they submit as evidence. And that is 1200 00:51:34,950 --> 00:51:37,041 certainly permissible. But, 1201 00:51:37,041 --> 00:51:41,223 if one of those screen captures 1202 00:51:41,223 --> 00:51:43,949 on that single page, 1203 00:51:43,950 --> 00:51:44,309 uh, 1204 00:51:44,309 --> 00:51:45,386 are not compliant. 1205 00:51:45,386 --> 00:51:48,327 Let's say you have a URL for one 1206 00:51:48,327 --> 00:51:50,445 bit of evidence on that page, 1207 00:51:50,450 --> 00:51:52,862 but you don't have a URL for the other. 1208 00:51:52,870 --> 00:51:54,550 Maybe it was cut off in the 1209 00:51:54,550 --> 00:51:55,810 cropping or something like that. 1210 00:51:55,810 --> 00:51:57,790 Then that entire page of evidence 1211 00:51:57,790 --> 00:51:59,719 is not going to be used, 1212 00:51:59,720 --> 00:52:01,968 and if that is all that you've submitted, 1213 00:52:01,970 --> 00:52:03,488 there is no evidence to support 1214 00:52:03,488 --> 00:52:03,994 your objection. 1215 00:52:04,000 --> 00:52:06,048 Your letter of protest cannot 1216 00:52:06,048 --> 00:52:08,608 be considered, as a result. 1217 00:52:08,610 --> 00:52:10,530 And then the final common reason 1218 00:52:10,530 --> 00:52:12,785 for us not to consider particular 1219 00:52:12,785 --> 00:52:15,949 LOP is that you raised a particular 1220 00:52:15,949 --> 00:52:18,298 objection and examining attorney has 1221 00:52:18,298 --> 00:52:20,578 already issued an office action, 1222 00:52:20,580 --> 00:52:23,700 on raising that particular objection, 1223 00:52:23,700 --> 00:52:24,654 that same objection. 1224 00:52:24,654 --> 00:52:27,339 Now, it may be that you submit evidence 1225 00:52:27,339 --> 00:52:30,069 that the examining attorney did not use. 1226 00:52:30,070 --> 00:52:30,621 And 1227 00:52:30,621 --> 00:52:33,927 it's good evidence in that sense, 1228 00:52:33,930 --> 00:52:36,558 we will take the evidence and 1229 00:52:36,560 --> 00:52:39,122 present it to the examining attorney 1230 00:52:39,122 --> 00:52:41,638 in the record for them to use. 1231 00:52:41,638 --> 00:52:43,173 Should the examining attorney have 1232 00:52:43,173 --> 00:52:45,338 to issue a final office action 1233 00:52:45,338 --> 00:52:46,778 on that particular objection, 1234 00:52:46,780 --> 00:52:49,426 but most likely your letter of protest 1235 00:52:49,426 --> 00:52:52,367 would not be considered because the 1236 00:52:52,367 --> 00:52:54,766 examining attorney will most likely use 1237 00:52:54,766 --> 00:52:57,020 the same evidence that you would use. 1238 00:52:57,020 --> 00:53:00,395 But if not, and if the evidence is relevant, 1239 00:53:00,400 --> 00:53:02,088 we will send it on to the examining 1240 00:53:02,090 --> 00:53:05,618 attorney, in most instances. 1241 00:53:05,620 --> 00:53:07,388 So your letter of protest, 1242 00:53:07,388 --> 00:53:07,830 unfortunately, 1243 00:53:07,830 --> 00:53:09,138 let's say it was not considered. 1244 00:53:09,140 --> 00:53:10,780 What does that look like? 1245 00:53:10,780 --> 00:53:12,790 Well, we send you a determination 1246 00:53:12,790 --> 00:53:14,900 letter and it is a form letter. 1247 00:53:14,900 --> 00:53:17,720 But it looks like this: 1248 00:53:17,720 --> 00:53:19,344 After this section that says "the LOP 1249 00:53:19,344 --> 00:53:21,117 will not be considered because it 1250 00:53:21,117 --> 00:53:23,175 does not meet the legal requirements," 1251 00:53:23,175 --> 00:53:24,532 specifically. And we have a box 1252 00:53:24,532 --> 00:53:26,840 that we will check and tell you 1253 00:53:26,840 --> 00:53:30,485 why we do provide a little bit of 1254 00:53:30,485 --> 00:53:33,290 information about why we were not 1255 00:53:33,290 --> 00:53:35,690 considering the letter of protest. 1256 00:53:35,690 --> 00:53:39,188 Umm, in this particular one, 1257 00:53:39,188 --> 00:53:41,960 the letter of protest was asserting 1258 00:53:42,046 --> 00:53:44,962 a likelihood of confusion in a 1259 00:53:44,962 --> 00:53:46,906 registration that the protester 1260 00:53:46,988 --> 00:53:51,480 owned and the goods in the 1261 00:53:51,480 --> 00:53:53,430 protested application and in the 1262 00:53:53,430 --> 00:53:54,990 registration of the protester 1263 00:53:54,990 --> 00:53:57,192 owned were not identical and the 1264 00:53:57,192 --> 00:53:58,942 protester did not provide evidence 1265 00:53:59,002 --> 00:54:00,607 that the goods were related. 1266 00:54:00,610 --> 00:54:03,358 So the letter of protest was not 1267 00:54:03,358 --> 00:54:06,629 considered and we let them know that 1268 00:54:06,630 --> 00:54:08,737 the reason it was not being considered was because 1269 00:54:08,737 --> 00:54:11,550 they did not provide evidence of relatedness. 1270 00:54:11,550 --> 00:54:13,110 So, as I said before, 1271 00:54:13,110 --> 00:54:16,314 if your letter of protest is not considered, 1272 00:54:16,314 --> 00:54:18,610 it will not be in the record. 1273 00:54:18,610 --> 00:54:20,962 There will be no information in the 1274 00:54:20,962 --> 00:54:23,208 record about the letter of protest. 1275 00:54:23,210 --> 00:54:26,418 So, this is all that you will see 1276 00:54:26,420 --> 00:54:28,060 about your letter of protest 1277 00:54:28,060 --> 00:54:31,821 if it is not considered. So, 1278 00:54:31,821 --> 00:54:34,827 one thing that does come up: 1279 00:54:34,830 --> 00:54:37,728 Your letter of protest has been considered. 1280 00:54:37,730 --> 00:54:39,434 It has been put into the record, you 1281 00:54:39,434 --> 00:54:41,217 can see in the prosecution history 1282 00:54:41,217 --> 00:54:42,842 that the evidence was forwarded. 1283 00:54:42,850 --> 00:54:46,864 But, the Examiner decides not to act on it. 1284 00:54:46,870 --> 00:54:49,628 It's a pre-publication letter of protest. 1285 00:54:49,630 --> 00:54:52,096 It is within the examining attorney's 1286 00:54:52,096 --> 00:54:54,474 discretion to use that evidence to 1287 00:54:54,474 --> 00:54:57,106 issue a new office action or to not. 1288 00:54:57,110 --> 00:54:59,545 If the examining attorney reviews 1289 00:54:59,545 --> 00:55:02,483 the evidence and decides not to 1290 00:55:02,483 --> 00:55:04,578 take action on that evidence, 1291 00:55:04,580 --> 00:55:06,407 they will enter a transaction in the 1292 00:55:06,407 --> 00:55:08,058 prosecution history and it looks like this: 1293 00:55:10,930 --> 00:55:14,467 So, on November 3rd, you can see in TSDR, 1294 00:55:14,470 --> 00:55:16,870 in the prosecution history, the letter 1295 00:55:16,870 --> 00:55:19,070 of protest evidence was forwarded. 1296 00:55:19,070 --> 00:55:21,650 The next day, the examiner reviewed 1297 00:55:21,650 --> 00:55:24,204 it and determined not to take 1298 00:55:24,204 --> 00:55:26,466 action on the letter of protest. 1299 00:55:26,470 --> 00:55:28,810 They entered the transaction here, 1300 00:55:28,810 --> 00:55:30,460 and you can see it. 1301 00:55:30,460 --> 00:55:32,780 And that would be the end of that 1302 00:55:32,780 --> 00:55:34,049 particular letter of protest. 1303 00:55:34,050 --> 00:55:36,227 The evidence is still in the record. 1304 00:55:36,230 --> 00:55:37,850 And it will remain there. 1305 00:55:37,850 --> 00:55:41,138 But, the letter of protest evidence, 1306 00:55:41,140 --> 00:55:42,280 although it has been reviewed, 1307 00:55:42,280 --> 00:55:43,600 the examining attorney decided 1308 00:55:43,600 --> 00:55:47,140 not to act on that evidence, and, 1309 00:55:47,140 --> 00:55:49,331 umm, and, and they will not reference 1310 00:55:49,331 --> 00:55:51,567 it and anything else that they write. 1311 00:55:53,600 --> 00:55:54,688 Again, at this point, 1312 00:55:54,688 --> 00:55:56,320 we're getting ready to go on 1313 00:55:56,380 --> 00:55:57,960 to the next discussion topic. 1314 00:55:57,960 --> 00:56:00,240 If there are any questions. 1315 00:56:00,240 --> 00:56:04,998 Go ahead and email them, to 1316 00:56:05,000 --> 00:56:10,160 TMWebinar at USPTO dot gov, 1317 00:56:10,160 --> 00:56:11,924 and we'll get to them in a little bit. 1318 00:56:17,320 --> 00:56:20,250 So, timeliness considerations. 1319 00:56:23,870 --> 00:56:25,310 We don't see this right 1320 00:56:25,310 --> 00:56:26,750 now, given the filing surge, 1321 00:56:26,750 --> 00:56:31,443 but there have been times when a 44(d) 1322 00:56:31,443 --> 00:56:35,958 application, or 66 Madrid application, 1323 00:56:35,960 --> 00:56:38,376 was not in the office records when the 1324 00:56:38,376 --> 00:56:40,163 protest, that application, was assigned 1325 00:56:40,163 --> 00:56:42,401 to the examining attorney. And they 1326 00:56:42,401 --> 00:56:45,121 did their research on it and let, and 1327 00:56:45,121 --> 00:56:46,870 ultimately approved it, for publication. 1328 00:56:49,180 --> 00:56:51,752 When that scenario happens, 1329 00:56:51,752 --> 00:56:54,324 it may be that 1330 00:56:54,330 --> 00:56:56,842 your letter of protest 1331 00:56:56,842 --> 00:57:00,178 uh, could be considered late. 1332 00:57:00,180 --> 00:57:02,304 And you would be asserting that 1333 00:57:02,304 --> 00:57:05,002 you have a 44(d) application with 1334 00:57:05,002 --> 00:57:07,809 a priority date that is prior to 1335 00:57:07,890 --> 00:57:10,668 the filing date of the application 1336 00:57:10,668 --> 00:57:13,804 that was published, and you want to 1337 00:57:13,804 --> 00:57:16,473 File a letter of protest asserting 1338 00:57:16,473 --> 00:57:18,888 that the examining attorney should 1339 00:57:18,888 --> 00:57:21,369 have cited the prior pending 1340 00:57:21,369 --> 00:57:23,884 applications based on section 44(d). 1341 00:57:23,890 --> 00:57:26,920 So you would file letter of protest-- 1342 00:57:26,920 --> 00:57:29,248 a petition is not required to do that-- 1343 00:57:29,250 --> 00:57:31,346 although I should note it may be that 1344 00:57:31,346 --> 00:57:33,602 you need to file the petition to get 1345 00:57:33,602 --> 00:57:35,460 the letter of protest in the door. 1346 00:57:35,460 --> 00:57:38,260 After the opposition period ends, 1347 00:57:38,260 --> 00:57:42,142 letter of protest form on our website 1348 00:57:42,142 --> 00:57:46,361 will not permit you to file a 1349 00:57:46,361 --> 00:57:50,312 late letter of protest, so, or to 1350 00:57:50,312 --> 00:57:52,088 file a letter of protest after, after 1351 00:57:52,088 --> 00:57:53,670 the opposition period has ended. 1352 00:57:53,670 --> 00:57:55,533 So in order to get it in the door, 1353 00:57:55,533 --> 00:57:57,454 you may need to file a petition 1354 00:57:57,454 --> 00:57:59,230 and attach the letter of protest. 1355 00:57:59,230 --> 00:58:00,958 But, the petition itself is not 1356 00:58:00,958 --> 00:58:02,791 required for that type of letter of 1357 00:58:02,791 --> 00:58:05,265 protest because it's an office system 1358 00:58:05,265 --> 00:58:07,820 that caused the problem for you. 1359 00:58:07,820 --> 00:58:08,856 So we, 1360 00:58:08,856 --> 00:58:11,964 the most likely would refund the 1361 00:58:11,964 --> 00:58:13,000 petition fee. 1362 00:58:13,000 --> 00:58:14,930 Umm, 1363 00:58:14,930 --> 00:58:16,810 another time when this, thing 1364 00:58:16,810 --> 00:58:18,690 to remember is, that if 1365 00:58:18,690 --> 00:58:22,365 we're dealing with a 66(a) application, 1366 00:58:22,370 --> 00:58:24,698 you need to have your letter of protest 1367 00:58:24,698 --> 00:58:26,577 filed within the 18-month deadline. 1368 00:58:26,580 --> 00:58:28,005 After the IB, 1369 00:58:28,005 --> 00:58:29,905 the International Bureau, transmitted 1370 00:58:29,905 --> 00:58:32,089 the application to the USPTO. 1371 00:58:32,090 --> 00:58:34,076 If you do not do that, 1372 00:58:34,080 --> 00:58:36,330 your letter of protest will be considered 1373 00:58:36,330 --> 00:58:39,049 untimely and it will not be considered. 1374 00:58:43,670 --> 00:58:45,917 Another time this issue, and we see 1375 00:58:45,917 --> 00:58:47,942 this a lot with applications from 1376 00:58:47,942 --> 00:58:50,399 marks that are going to be registered 1377 00:58:50,399 --> 00:58:52,390 on the Supplemental Register: 1378 00:58:52,390 --> 00:58:57,124 If the letter of protest is filed within the 1379 00:58:57,124 --> 00:59:00,673 opposition period, so 30 days after, after, 1380 00:59:00,680 --> 00:59:02,162 30 days after the application has 1381 00:59:02,162 --> 00:59:04,085 been published, but the protested 1382 00:59:04,085 --> 00:59:06,460 application can't be withdrawn from 1383 00:59:06,460 --> 00:59:09,245 the issuance of the registration, then 1384 00:59:09,245 --> 00:59:11,940 [cough] excuse me, and then the the letter of 1385 00:59:11,940 --> 00:59:14,490 protest will be considered untimely. 1386 00:59:14,490 --> 00:59:16,550 Typically that happens with, 1387 00:59:16,550 --> 00:59:19,512 or can happen with a, uh, 1388 00:59:19,512 --> 00:59:22,066 a mark that is seeking registration 1389 00:59:22,066 --> 00:59:24,118 on the supplemental register. 1390 00:59:24,120 --> 00:59:26,604 Umm, any other situations where you 1391 00:59:26,604 --> 00:59:29,626 would want the office to waive the 1392 00:59:29,626 --> 00:59:32,194 timeliness requirement related to an LOP, 1393 00:59:32,200 --> 00:59:33,663 you would need to do that on 1394 00:59:33,663 --> 00:59:34,990 a Petition to the Director, 1395 00:59:34,990 --> 00:59:38,854 and those will only be granted 1396 00:59:38,854 --> 00:59:40,786 in extraordinary situations. 1397 00:59:40,790 --> 00:59:41,360 Example 1398 00:59:43,450 --> 00:59:45,949 is that an application has been published, 1399 00:59:45,950 --> 00:59:49,316 it was filed under Section 1(b). 1400 00:59:49,320 --> 00:59:52,220 The application has been 1401 00:59:52,220 --> 00:59:54,366 published and the applicant 1402 00:59:54,366 --> 00:59:56,802 in that case, a notice of allowance 1403 00:59:56,802 --> 00:59:59,163 is issued and the application, that 1404 00:59:59,163 --> 01:00:01,965 applicant in that case has filed their 1405 01:00:01,965 --> 01:00:04,323 statement of use with specimens and 1406 01:00:04,330 --> 01:00:07,837 the protester wants to object to these 1407 01:00:07,837 --> 01:00:10,670 specimens filed at the SOU stage, 1408 01:00:10,670 --> 01:00:12,046 asserting that the specimens 1409 01:00:12,046 --> 01:00:14,370 are not in use. Going back to 1410 01:00:14,370 --> 01:00:17,316 umm, the headphone example that we 1411 01:00:17,316 --> 01:00:20,877 have where they can show that the 1412 01:00:20,877 --> 01:00:22,985 specimen that was submitted with the 1413 01:00:22,985 --> 01:00:25,400 statement of use in this application 1414 01:00:25,400 --> 01:00:27,688 might not be legitimate. 1415 01:00:30,320 --> 01:00:32,500 This is an application that, 1416 01:00:32,500 --> 01:00:35,188 as the opposition period has already ended, 1417 01:00:35,190 --> 01:00:39,994 so the procedures are not set up to 1418 01:00:39,994 --> 01:00:42,802 accept a letter of protest without 1419 01:00:42,802 --> 01:00:46,481 a petition requesting that the 1420 01:00:46,481 --> 01:00:49,585 timeliness provisions be waived. 1421 01:00:49,590 --> 01:00:53,615 So that is an example of one. 1422 01:00:53,620 --> 01:00:55,935 Another example would be where 1423 01:00:55,935 --> 01:00:58,250 the particular letter of protest 1424 01:00:58,326 --> 01:01:01,265 evidence that you are, that you are 1425 01:01:01,265 --> 01:01:04,520 relying upon did not exist prior to 1426 01:01:04,624 --> 01:01:08,019 the publication of the application. 1427 01:01:08,020 --> 01:01:10,654 So any questions on that, again TM 1428 01:01:10,654 --> 01:01:13,606 Webinar at USPTO dot Gov for questions, 1429 01:01:13,606 --> 01:01:17,049 and will be getting the questions 1430 01:01:17,050 --> 01:01:17,520 shortly. 1431 01:01:19,650 --> 01:01:20,990 So, the additional information 1432 01:01:20,990 --> 01:01:23,000 section, where at the end here, 1433 01:01:26,890 --> 01:01:30,114 if you file in a letter of protest, 1434 01:01:30,120 --> 01:01:32,920 please go review the 1435 01:01:32,920 --> 01:01:35,720 information on our website. 1436 01:01:35,720 --> 01:01:38,830 It's an LOP practice tip. 1437 01:01:38,830 --> 01:01:42,038 You can find that, 1438 01:01:42,040 --> 01:01:44,338 I, you know, I, I go to it all the time 1439 01:01:44,338 --> 01:01:46,732 to, to, to just look and see what we're 1440 01:01:46,804 --> 01:01:49,090 telling protesters to file when I'm, 1441 01:01:49,090 --> 01:01:52,114 I'm curious, about why they did what they did. 1442 01:01:52,120 --> 01:01:56,982 But it's a practice tip that is 1443 01:01:56,982 --> 01:01:59,181 reviewed and edited frequently, 1444 01:01:59,181 --> 01:02:00,894 and updated frequently. 1445 01:02:00,894 --> 01:02:06,199 So, if you have filed a letter of protest, 1446 01:02:06,200 --> 01:02:08,056 and it's been a month since you, uh, or you're 1447 01:02:08,056 --> 01:02:09,707 getting ready to file a letter of protest, 1448 01:02:09,710 --> 01:02:11,526 and it's been a month or two since 1449 01:02:11,526 --> 01:02:13,490 you filed your last letter of protest. 1450 01:02:13,490 --> 01:02:17,490 Please go and re, review the letter of protest 1451 01:02:17,490 --> 01:02:19,176 practice tip if you have never 1452 01:02:19,176 --> 01:02:21,287 filed a letter protest and you were 1453 01:02:21,287 --> 01:02:22,827 thinking about filing a letter of 1454 01:02:22,827 --> 01:02:24,298 protest. Before you do so again, 1455 01:02:24,298 --> 01:02:25,570 please review the information 1456 01:02:25,570 --> 01:02:27,700 that we provide on the practice. 1457 01:02:31,520 --> 01:02:33,535 One thing to know about 1458 01:02:33,535 --> 01:02:35,147 filing your letter of protest. 1459 01:02:35,150 --> 01:02:37,975 If you are thinking about 1460 01:02:37,975 --> 01:02:39,670 filing an opposition. 1461 01:02:39,670 --> 01:02:41,440 or request for an extension of 1462 01:02:41,440 --> 01:02:43,444 time to file on the opposition 1463 01:02:43,444 --> 01:02:45,706 with the TTAB about a particular 1464 01:02:45,710 --> 01:02:49,140 trademark that has been published-- 1465 01:02:49,140 --> 01:02:51,472 filing your letter of protest 1466 01:02:51,472 --> 01:02:53,804 will not stay any time 1467 01:02:53,810 --> 01:02:58,076 for you to file your opposition at the TTAB. 1468 01:02:58,080 --> 01:03:00,250 So, consider this two tracks: 1469 01:03:00,250 --> 01:03:02,112 You have your letter of protest track that 1470 01:03:02,112 --> 01:03:04,109 you would be pursuing and you'd have 1471 01:03:04,109 --> 01:03:06,140 to follow your opposition at the TTAB. 1472 01:03:06,140 --> 01:03:09,430 If your letter of protest is not considered, 1473 01:03:09,430 --> 01:03:11,860 and you have and most likely 1474 01:03:11,860 --> 01:03:13,480 the determination about your 1475 01:03:13,554 --> 01:03:15,898 letter protest after publication, 1476 01:03:15,900 --> 01:03:18,908 a file after publication, 1477 01:03:18,910 --> 01:03:21,478 you will not receive an answer 1478 01:03:21,480 --> 01:03:23,850 about that letter of protest before 1479 01:03:23,850 --> 01:03:25,746 the opposition period ends. 1480 01:03:25,750 --> 01:03:27,736 You, if you have not filed 1481 01:03:27,736 --> 01:03:29,400 your opposition with the TTAB, 1482 01:03:31,500 --> 01:03:33,558 your, uh, your time to file your opposition 1483 01:03:33,560 --> 01:03:35,520 period, your, your, your, opposition 1484 01:03:35,520 --> 01:03:38,674 will have lapsed and ended 30 days 1485 01:03:38,674 --> 01:03:41,121 after publication. So just because 1486 01:03:41,121 --> 01:03:43,956 you filed your letter of protest, 1487 01:03:43,960 --> 01:03:46,265 don't ignore your requirements to 1488 01:03:46,265 --> 01:03:48,964 file your opposition if that is 1489 01:03:48,964 --> 01:03:51,530 an avenue you want to preserve. Umm, 1490 01:03:54,160 --> 01:03:54,550 so 1491 01:03:57,700 --> 01:03:59,765 if you need to contact the petition, 1492 01:03:59,765 --> 01:04:00,966 that petition's office about 1493 01:04:00,966 --> 01:04:02,526 a letter of protest that you 1494 01:04:02,526 --> 01:04:03,970 have filed, our phone number is 1495 01:04:06,460 --> 01:04:07,576 571-272-8950. We're open, 1496 01:04:07,576 --> 01:04:09,436 there's someone there typically to 1497 01:04:09,436 --> 01:04:11,419 answer the phone from 8:30 to five. 1498 01:04:11,419 --> 01:04:13,199 If you have to leave a message, 1499 01:04:13,200 --> 01:04:15,909 they will get back with you within 24 hours. 1500 01:04:15,910 --> 01:04:20,428 If, if your message that you leave or the, 1501 01:04:20,428 --> 01:04:23,034 the, the reason that you're calling requires 1502 01:04:23,034 --> 01:04:26,118 the assistance of a petition's attorney, 1503 01:04:26,120 --> 01:04:28,130 you will be referred to one. 1504 01:04:28,130 --> 01:04:30,750 There are, I believe, 1505 01:04:30,750 --> 01:04:33,258 20 of us, maybe 18 of us, but one of 1506 01:04:33,258 --> 01:04:35,660 us will definitely be able to help you. 1507 01:04:35,660 --> 01:04:39,148 So, moving on to 1508 01:04:39,148 --> 01:04:41,764 questions and answers. 1509 01:04:41,770 --> 01:04:45,316 I'm sure some questions came in. 1510 01:04:45,320 --> 01:04:48,216 Craig, are you available? "Yes, 1511 01:04:48,216 --> 01:04:50,840 I am John and we have a lot of questions, 1512 01:04:50,840 --> 01:04:52,436 so let's just see how many 1513 01:04:52,436 --> 01:04:53,956 we can get through." Great. 1514 01:04:53,956 --> 01:04:56,236 The first: "The USPTO 1515 01:04:56,240 --> 01:04:59,034 did not consider my LOP, but the 1516 01:04:59,034 --> 01:05:01,469 protested application is still pending. 1517 01:05:01,470 --> 01:05:06,534 Are there any remedies and can I appeal?" 1518 01:05:06,540 --> 01:05:12,180 OK, umm, so I'll answer the first part, 1519 01:05:12,180 --> 01:05:13,740 the last part, first. 1520 01:05:13,740 --> 01:05:16,961 There is no appeal procedure for a letter 1521 01:05:16,961 --> 01:05:19,768 of protest that has not been considered. 1522 01:05:19,770 --> 01:05:22,140 However, 1523 01:05:22,140 --> 01:05:25,330 the protester can always file 1524 01:05:25,330 --> 01:05:29,090 a second letter of protest, 1525 01:05:29,090 --> 01:05:31,395 as long as the opposition 1526 01:05:31,395 --> 01:05:33,239 period has not ended. 1527 01:05:33,240 --> 01:05:35,235 So if an application has just been 1528 01:05:35,235 --> 01:05:37,322 filed and you file your letter of 1529 01:05:37,322 --> 01:05:39,462 protest and let's say in your evidence 1530 01:05:39,462 --> 01:05:41,824 that you did not provide, you provided 1531 01:05:41,824 --> 01:05:43,634 internet evidence or webpage evidence, 1532 01:05:43,640 --> 01:05:46,880 but you didn't provide the URL or the date 1533 01:05:46,880 --> 01:05:47,828 for that evidence. 1534 01:05:47,828 --> 01:05:49,408 Your letter of protest is not 1535 01:05:49,408 --> 01:05:50,920 going to be considered. 1536 01:05:50,920 --> 01:05:53,360 You could then turn around and file a 1537 01:05:53,360 --> 01:05:55,629 new letter of protest with the same 1538 01:05:55,629 --> 01:05:57,960 evidence, with the URL and the date 1539 01:05:57,960 --> 01:05:59,645 that the information was accessed 1540 01:05:59,645 --> 01:06:02,088 and have a better chance of your 1541 01:06:02,088 --> 01:06:03,516 letter of protest being considered. 1542 01:06:03,520 --> 01:06:06,117 So your remedy here is not to 1543 01:06:06,117 --> 01:06:07,919 appeal somewhere in the PTO. 1544 01:06:07,920 --> 01:06:10,224 Your remedy is to file a new letter 1545 01:06:10,224 --> 01:06:12,249 of protest, and we see that a lot. 1546 01:06:18,350 --> 01:06:21,808 "OK. I found an LOP objecting to 1547 01:06:21,808 --> 01:06:24,347 a mark that I think is a widely 1548 01:06:24,347 --> 01:06:25,803 used or commonplace message. 1549 01:06:25,810 --> 01:06:28,180 I attached evidence from Etsy, 1550 01:06:28,180 --> 01:06:30,360 Amazon, eBay, showed lots of 1551 01:06:30,360 --> 01:06:32,104 merchants selling T shirts, 1552 01:06:32,110 --> 01:06:33,982 mugs, and hats with the applied- 1553 01:06:33,982 --> 01:06:35,710 for mark on the goods. 1554 01:06:35,710 --> 01:06:37,900 Why was my LOP not considered?" 1555 01:06:40,090 --> 01:06:42,562 Well, umm, I don't have the 1556 01:06:42,562 --> 01:06:44,789 particular LOP in front of me, 1557 01:06:44,790 --> 01:06:48,980 but I can tell you most likely why it was 1558 01:06:48,980 --> 01:06:51,648 not considered, based on your question, 1559 01:06:51,650 --> 01:06:55,812 if you only provided evidence of the mark 1560 01:06:55,812 --> 01:06:59,869 used on goods by online retail stores, 1561 01:06:59,869 --> 01:07:03,582 or folks from Etsy, Red Bubble, or the 1562 01:07:03,582 --> 01:07:05,298 other places that that you listed, 1563 01:07:05,300 --> 01:07:07,040 if you only provided that evidence, 1564 01:07:07,040 --> 01:07:08,955 well, that evidence doesn't show 1565 01:07:08,955 --> 01:07:11,307 how the particular mark, this phrase, 1566 01:07:11,307 --> 01:07:13,497 would be perceived by the public. 1567 01:07:13,500 --> 01:07:15,336 All that evidence shows is that 1568 01:07:15,336 --> 01:07:17,478 a lot of people sell it with 1569 01:07:17,480 --> 01:07:23,590 the mark on the goods. In order to, to, to, 1570 01:07:23,590 --> 01:07:28,318 to support your objection, the, the, 1571 01:07:28,320 --> 01:07:32,562 the refusal for a widely used 1572 01:07:32,562 --> 01:07:34,683 expression requires that 1573 01:07:34,690 --> 01:07:37,093 the examiner show 1574 01:07:37,093 --> 01:07:42,700 what the phrase or expression actually means, 1575 01:07:42,700 --> 01:07:44,758 and if it has a meaning. 1576 01:07:44,760 --> 01:07:47,875 We live in the information age and 1577 01:07:47,880 --> 01:07:51,604 you can find it on any dictionary 1578 01:07:51,604- --> 01:07:53,675 or, or third-party website. 1579 01:07:53,675 --> 01:07:56,020 Might not be able to show you, 1580 01:07:56,020 --> 01:07:58,402 but I, I have considered these 1581 01:07:58,402 --> 01:08:01,525 types of LOP's when, and a protestor 1582 01:08:01,525 --> 01:08:04,489 has provided the meaning of the 1583 01:08:04,489 --> 01:08:07,199 phrase by using urban dictionary. 1584 01:08:07,200 --> 01:08:09,447 Part of the beauty of Trademark law is 1585 01:08:09,447 --> 01:08:11,216 that your unlimited in the evidence 1586 01:08:11,216 --> 01:08:13,324 that you can use, so that is one 1587 01:08:13,324 --> 01:08:15,571 place that people are turning to, to 1588 01:08:15,571 --> 01:08:18,112 provide evidence as to the public's 1589 01:08:18,112 --> 01:08:20,950 perception of what a particular word 1590 01:08:21,046 --> 01:08:24,148 or slogan or widely used expression 1591 01:08:24,148 --> 01:08:27,250 or, or commonplace phrase would mean. 1592 01:08:27,250 --> 01:08:28,846 But that's just one reason why it 1593 01:08:28,846 --> 01:08:30,279 might have been objected again, 1594 01:08:30,280 --> 01:08:32,681 if you didn't provide URL for those, 1595 01:08:32,681 --> 01:08:35,159 URL and the date of access 1596 01:08:35,159 --> 01:08:37,217 or the, that bit of evidence, 1597 01:08:37,220 --> 01:08:40,797 then that evidence would not be considered. 1598 01:08:40,800 --> 01:08:44,027 So, that's two big reasons right there. 1599 01:08:44,030 --> 01:08:45,272 Well, I do, 1600 01:08:45,272 --> 01:08:47,756 I do commonly get asked about 1601 01:08:47,756 --> 01:08:49,190 letters of protest. 1602 01:08:49,190 --> 01:08:50,794 Some letters of protest 1603 01:08:50,794 --> 01:08:52,398 statistics that we have. 1604 01:08:52,400 --> 01:08:52,804 Umm, 1605 01:08:52,804 --> 01:08:55,632 people want to know how many letters 1606 01:08:55,632 --> 01:08:58,150 of protest do we get a year, and 1607 01:08:58,150 --> 01:09:02,054 I have last years data: we had over 1608 01:09:02,054 --> 01:09:05,294 3500 letters of protest filed. 1609 01:09:07,610 --> 01:09:09,800 For the fiscal year, 3200 1610 01:09:09,800 --> 01:09:12,656 of those were assigned. 1611 01:09:12,656 --> 01:09:17,260 And of those 3200 measured for pre- 1612 01:09:17,260 --> 01:09:19,720 publication letters of protest, 1613 01:09:19,720 --> 01:09:24,226 3200 of those were assigned to petitions 1614 01:09:24,226 --> 01:09:26,696 attorneys here in the office, 1615 01:09:26,700 --> 01:09:30,396 and 76% of them were considered. 1616 01:09:30,400 --> 01:09:34,368 So that's a lot that were sent to, 1617 01:09:34,368 --> 01:09:36,685 to the application records, into the 1618 01:09:36,685 --> 01:09:38,730 examining attorney to take action on. 1619 01:09:41,580 --> 01:09:44,322 43% of those were actually acted 1620 01:09:44,322 --> 01:09:47,030 on by the examining attorney. 1621 01:09:47,030 --> 01:09:51,608 For post-publication letters of protest, 1622 01:09:51,610 --> 01:09:54,746 last year we had 410 of those were 1623 01:09:54,746 --> 01:09:57,320 assigned to petitions attorneys. 1624 01:09:57,320 --> 01:10:00,480 However, keep in mind, 1625 01:10:00,480 --> 01:10:02,296 a post-publication letter of 1626 01:10:02,296 --> 01:10:04,566 protest has a higher standard, 1627 01:10:04,570 --> 01:10:06,874 of a higher bar in terms 1628 01:10:06,874 --> 01:10:09,060 of what they must prove. 1629 01:10:09,060 --> 01:10:11,428 They have to prove a prima facie case. 1630 01:10:11,430 --> 01:10:13,710 Further, refusal or the requirement such 1631 01:10:13,710 --> 01:10:16,291 that the office failure to issue that 1632 01:10:16,291 --> 01:10:18,283 refusal or make that requirement would 1633 01:10:18,283 --> 01:10:20,669 be a violation of the Trademark Act. 1634 01:10:20,670 --> 01:10:22,728 We have 410 of those that were 1635 01:10:22,728 --> 01:10:24,230 filed post publication last year, 1636 01:10:24,230 --> 01:10:27,058 only 23 were accepted. 1637 01:10:29,160 --> 01:10:31,684 That's 5.6%, Post-publication 1638 01:10:31,684 --> 01:10:35,020 letters of protest were, were not, 1639 01:10:37,070 --> 01:10:42,040 uh, 5.6%, were, were accepted. Umm, 1640 01:10:44,640 --> 01:10:46,998 I have a couple questions coming 1641 01:10:46,998 --> 01:10:48,792 in electronically and, and one 1642 01:10:48,792 --> 01:10:51,130 would, would be about the, the URL 1643 01:10:51,214 --> 01:10:53,416 and the date for the website 1644 01:10:53,420 --> 01:10:54,944 evidence. In question is 1645 01:10:54,944 --> 01:10:56,849 like, where should that be? 1646 01:10:56,850 --> 01:11:01,154 Uh, should it be on the LOP letter 1647 01:11:01,154 --> 01:11:06,110 protest form, or should it be a, 1648 01:11:06,110 --> 01:11:09,614 or should it be on the evidence itself? 1649 01:11:09,620 --> 01:11:11,844 It really should be on the evidence itself, 1650 01:11:11,850 --> 01:11:13,794 because, as I said, 1651 01:11:13,794 --> 01:11:16,334 the letter of protest itself, 1652 01:11:16,334 --> 01:11:19,304 the form is not forwarded 1653 01:11:19,304 --> 01:11:21,680 to the record whatsoever. 1654 01:11:21,680 --> 01:11:23,984 So if you put the URL and the 1655 01:11:23,984 --> 01:11:26,235 date on the form as opposed 1656 01:11:26,235 --> 01:11:28,225 to on the evidence itself, 1657 01:11:28,230 --> 01:11:31,718 umm, we had no way of getting the 1658 01:11:31,718 --> 01:11:34,720 URL and the date associated with the 1659 01:11:34,720 --> 01:11:36,670 particular piece of evidence that 1660 01:11:36,670 --> 01:11:39,524 would be submitted to the record and 1661 01:11:39,524 --> 01:11:41,534 forwarded to the examining attorney. 1662 01:11:41,540 --> 01:11:42,790 So, umm, 1663 01:11:42,790 --> 01:11:45,915 umm, typically when folks do 1664 01:11:45,915 --> 01:11:47,790 a screen capture, 1665 01:11:47,790 --> 01:11:51,408 they can capture the website address 1666 01:11:51,408 --> 01:11:55,969 at the top of the page or they have 1667 01:11:59,740 --> 01:12:01,468 capturing software that will 1668 01:12:01,468 --> 01:12:03,196 automatically list the date 1669 01:12:03,196 --> 01:12:05,848 and the web page at the bottom 1670 01:12:05,848 --> 01:12:07,568 of the screen captures. That 1671 01:12:07,570 --> 01:12:10,395 is ideal evidence, ideal website 1672 01:12:10,395 --> 01:12:13,220 evidence for you to use. 1673 01:12:13,220 --> 01:12:14,088 Craig, are you back? 1674 01:12:14,088 --> 01:12:15,390 Was he able to get back? 1675 01:12:18,580 --> 01:12:20,785 He is on but he just needs to unmute. 1676 01:12:20,790 --> 01:12:22,710 There he goes yes. So here we go. 1677 01:12:22,710 --> 01:12:25,680 "Sorry about that technical problem. This 1678 01:12:25,680 --> 01:12:28,030 question John is fairly straightforward: 1679 01:12:28,030 --> 01:12:30,898 "Are LOPS discoverable under the 1680 01:12:30,898 --> 01:12:33,766 Freedom of Information Act?" 1681 01:12:33,770 --> 01:12:37,306 Umm, you know, I don't, I, I, 1682 01:12:37,310 --> 01:12:39,947 I'm sorry I don't have an answer to that. 1683 01:12:39,950 --> 01:12:42,766 I, I, I don't handle any of the 1684 01:12:42,766 --> 01:12:45,010 FOIA requests at all. 1685 01:12:45,010 --> 01:12:46,946 But I can find out and I will. 1686 01:12:46,950 --> 01:12:50,318 We probably will send out a FAQ document 1687 01:12:50,318 --> 01:12:53,400 and I'll have the answer in there. 1688 01:12:53,400 --> 01:12:54,156 I would, 1689 01:12:54,156 --> 01:12:57,742 I would assume that much of the information 1690 01:12:57,742 --> 01:13:00,850 about the protester would be redacted, 1691 01:13:00,850 --> 01:13:01,825 but I'm, I'm, 1692 01:13:01,825 --> 01:13:03,450 I think I'm speaking out 1693 01:13:03,450 --> 01:13:05,188 of turn because I, I'm, 1694 01:13:05,190 --> 01:13:06,990 I do not have an answer for that question. 1695 01:13:06,990 --> 01:13:09,050 I apologize. 1696 01:13:09,050 --> 01:13:10,849 Right, when I said it was straightforward 1697 01:13:10,849 --> 01:13:13,304 John, it was going to be a a yes or no answer, 1698 01:13:13,310 --> 01:13:14,446 but unfortunately we don't 1699 01:13:14,446 --> 01:13:15,866 actually have the answer there, 1700 01:13:15,870 --> 01:13:18,006 so that's, that's certainly quite all right. 1701 01:13:18,010 --> 01:13:20,920 But I'm, I'm, I'm, I have a a coworker who 1702 01:13:21,002 --> 01:13:23,770 is, is watching who said yes they are. 1703 01:13:23,770 --> 01:13:27,130 So they are. Thank you. 1704 01:13:27,130 --> 01:13:30,498 Yes, they are discoverable. 1705 01:13:30,498 --> 01:13:32,761 Or, we will provide it if you provide 1706 01:13:32,761 --> 01:13:34,260 the Freedom of Information request. 1707 01:13:36,970 --> 01:13:42,154 OK. "Is it possible to fix an LOP in 1708 01:13:42,154 --> 01:13:45,494 any way or will this automatically 1709 01:13:45,494 --> 01:13:48,534 cost an extra $50?" You, uh, 1710 01:13:48,534 --> 01:13:50,406 when you file your letter of protests, 1711 01:13:50,410 --> 01:13:51,900 we do not accept amendments 1712 01:13:51,900 --> 01:13:53,092 to your letter of protest. 1713 01:13:53,100 --> 01:13:55,908 So you're, you're, you are correct 1714 01:13:55,908 --> 01:13:59,030 in that you would file another 1715 01:13:59,030 --> 01:14:01,905 letter of protest, which we would, 1716 01:14:01,910 --> 01:14:05,030 if the, the, the error in the letter 1717 01:14:05,030 --> 01:14:07,629 of protest is one that renders, 1718 01:14:07,630 --> 01:14:09,232 it says that we can't consider 1719 01:14:09,232 --> 01:14:10,955 it. We'll send you a document 1720 01:14:10,955 --> 01:14:12,731 saying we, we have not considered 1721 01:14:12,731 --> 01:14:14,690 your LOP and we'll tell you why. 1722 01:14:14,690 --> 01:14:16,412 And again, we also say you can 1723 01:14:16,412 --> 01:14:17,600 file another letter of protest, 1724 01:14:17,600 --> 01:14:19,504 but that would be your remedy there, is, 1725 01:14:19,510 --> 01:14:23,878 you would file a new letter of protest. 1726 01:14:23,880 --> 01:14:24,374 "OK. 1727 01:14:24,374 --> 01:14:27,338 Someone here, John, is referencing when 1728 01:14:27,338 --> 01:14:30,527 you were displaying the form and 1729 01:14:30,527 --> 01:14:32,843 indicated that the widespread use 1730 01:14:32,843 --> 01:14:37,370 was not displayed as a checkbox in that form. 1731 01:14:37,370 --> 01:14:39,120 Where do you indicate that 1732 01:14:39,120 --> 01:14:40,520 if that's your basis?" 1733 01:14:40,520 --> 01:14:43,040 All right, let's go back to that form if 1734 01:14:43,040 --> 01:14:47,444 that's OK with folks. Umm, so in the, in the, 1735 01:14:47,444 --> 01:14:50,428 I'm scrolling too quickly. 1736 01:14:50,430 --> 01:14:52,140 Uh, in the form itself, 1737 01:14:56,610 --> 01:14:58,850 you'll see other legal basis, 1738 01:14:58,850 --> 01:15:00,642 explanation of legal basis. 1739 01:15:00,650 --> 01:15:02,228 You'll see a text box at 1740 01:15:02,228 --> 01:15:03,280 the very bottom there. 1741 01:15:03,280 --> 01:15:05,656 That is where you would write it in. 1742 01:15:09,920 --> 01:15:10,350 "OK, 1743 01:15:15,110 --> 01:15:17,690 so the next question, John, relates 1744 01:15:17,690 --> 01:15:20,580 to claiming the likelihood of 1745 01:15:20,580 --> 01:15:24,150 confusion basis and it asks is it 1746 01:15:24,150 --> 01:15:26,490 necessary to include an index, 1747 01:15:26,490 --> 01:15:28,674 Wwen the only evidence would be the 1748 01:15:28,674 --> 01:15:30,360 existing certificate of registration?" 1749 01:15:32,540 --> 01:15:36,689 Well, uh, no we would not need an index. 1750 01:15:36,690 --> 01:15:38,580 And we would not need the 1751 01:15:38,580 --> 01:15:39,525 certificate of registration. 1752 01:15:39,530 --> 01:15:41,990 We only need the registration number 1753 01:15:41,990 --> 01:15:44,616 upon what you are basing your 1754 01:15:44,616 --> 01:15:47,346 objection in your letter of protest. 1755 01:15:47,350 --> 01:15:51,022 So, we don't need 1756 01:15:51,022 --> 01:15:53,292 evidence of the registration that 1757 01:15:53,292 --> 01:15:56,238 you think the examiner should cite. 1758 01:15:56,240 --> 01:15:59,018 We just need the registration number. 1759 01:16:02,180 --> 01:16:05,099 "The next seems to be somewhat related. 1760 01:16:05,100 --> 01:16:09,342 Which grounds for the LOP do not 1761 01:16:09,342 --> 01:16:13,300 require evidence?" Well, umm, 1762 01:16:13,300 --> 01:16:15,280 we'll start with the 2(d). 1763 01:16:15,280 --> 01:16:18,748 Is the good in the registration 1764 01:16:18,748 --> 01:16:21,450 that the protester's relying on 1765 01:16:21,450 --> 01:16:24,520 and the goods identified in 1766 01:16:24,520 --> 01:16:26,976 the application are identical. 1767 01:16:26,980 --> 01:16:28,926 Then you do not need to provide 1768 01:16:28,926 --> 01:16:30,849 evidence that the goods are related-- 1769 01:16:30,850 --> 01:16:33,030 If the goods are identical, 1770 01:16:33,030 --> 01:16:35,700 that is enough. 1771 01:16:35,700 --> 01:16:37,698 That doesn't happen all the time. 1772 01:16:37,700 --> 01:16:41,320 But, it's enough for us to see it, for 1773 01:16:41,320 --> 01:16:43,600 me to mention it, it happens enough, 1774 01:16:43,600 --> 01:16:45,200 so that's one instance. 1775 01:16:45,200 --> 01:16:47,440 Another instance would be, 1776 01:16:47,440 --> 01:16:52,488 umm, the, umm registration 1777 01:16:52,490 --> 01:16:54,842 that you were relying on in your 1778 01:16:54,842 --> 01:16:57,267 letter of protest is the mark and the 1779 01:16:57,267 --> 01:16:59,283 registration is being used by the 1780 01:16:59,356 --> 01:17:01,811 applicant and the protested application 1781 01:17:01,811 --> 01:17:04,266 in their identification of goods. 1782 01:17:04,270 --> 01:17:08,680 Uh, the owner of the Onesie trademark 1783 01:17:10,750 --> 01:17:13,306 often files letters of protest when 1784 01:17:13,306 --> 01:17:15,579 they see an applicant identified 1785 01:17:15,579 --> 01:17:17,850 clothing as a "onesie." Well, 1786 01:17:17,850 --> 01:17:19,130 Onesie's a registered trademark, 1787 01:17:19,130 --> 01:17:21,699 it is not a type of clothing. 1788 01:17:21,700 --> 01:17:25,690 It's a trademark for clothing. 1789 01:17:25,690 --> 01:17:28,294 So they only need to provide 1790 01:17:28,294 --> 01:17:29,596 the registration number. 1791 01:17:32,140 --> 01:17:35,236 Another example would be if, umm, 1792 01:17:35,236 --> 01:17:39,772 you're relying upon a federal statute 1793 01:17:39,772 --> 01:17:44,029 that protects a particular, umm, 1794 01:17:44,030 --> 01:17:45,794 emblem, or symbol. 1795 01:17:45,794 --> 01:17:50,808 Boy Scouts of America. Red Cross. Umm, 1796 01:17:50,808 --> 01:17:53,750 so, uh, those are three of the top, 1797 01:17:53,750 --> 01:17:57,090 of my head. But, most of the time, 1798 01:17:57,090 --> 01:17:58,450 most of the time, 1799 01:17:58,450 --> 01:18:00,490 evidence is going to be required. 1800 01:18:00,490 --> 01:18:02,646 Some evidence is going to be required, 1801 01:18:02,650 --> 01:18:04,827 and if evidence is required, then an 1802 01:18:04,827 --> 01:18:06,901 index is required, as that's what I 1803 01:18:06,901 --> 01:18:09,110 want people to, to really just remember: 1804 01:18:09,110 --> 01:18:11,750 it is a, if I'm, if I'm providing 1805 01:18:11,750 --> 01:18:14,070 evidence and evidence is required, 1806 01:18:14,070 --> 01:18:15,785 then I need to give an index 1807 01:18:15,785 --> 01:18:16,520 for that evidence. 1808 01:18:21,950 --> 01:18:26,248 "OK, if an opposition period is extended, 1809 01:18:26,250 --> 01:18:29,890 does the original 30-day period still apply 1810 01:18:29,890 --> 01:18:32,960 with regards to the LOP deadline?" Yes. 1811 01:18:35,140 --> 01:18:37,513 "If the protester is not the owner 1812 01:18:37,513 --> 01:18:40,747 of a mark being raised in protest 1813 01:18:40,747 --> 01:18:42,879 against a pending application, 1814 01:18:42,880 --> 01:18:44,734 does the owner of that mark 1815 01:18:44,734 --> 01:18:45,970 discussed in the protests 1816 01:18:45,970 --> 01:18:48,532 get notified that its mark is, 1817 01:18:48,532 --> 01:18:51,209 in fact, involved in a protest?" 1818 01:18:53,640 --> 01:18:55,235 Correct, you could, you read 1819 01:18:55,235 --> 01:18:57,360 that one again for me please? 1820 01:18:57,360 --> 01:19:00,328 "Right, so if the protester is not the 1821 01:19:00,328 --> 01:19:03,773 owner of the mark being raised in the 1822 01:19:03,773 --> 01:19:06,570 protest against a pending application, 1823 01:19:06,570 --> 01:19:08,508 OK, does the owner of that 1824 01:19:08,508 --> 01:19:10,480 mark discussed in the protests 1825 01:19:10,480 --> 01:19:13,420 get notified that it's mark is, in 1826 01:19:13,420 --> 01:19:16,098 fact, involved in a protest?" No, 1827 01:19:16,098 --> 01:19:19,514 we do not reach out to registrants. 1828 01:19:19,520 --> 01:19:22,272 Certainly the protester can, 1829 01:19:22,272 --> 01:19:25,024 but we, we don't require that the protester 1830 01:19:25,024 --> 01:19:26,750 be the owner of the registration. 1831 01:19:26,750 --> 01:19:27,660 But, at the same time, 1832 01:19:27,660 --> 01:19:29,977 we're not going to go and contact 1833 01:19:29,977 --> 01:19:31,841 the registrant and say there's 1834 01:19:31,841 --> 01:19:33,836 somebody acting on your behalf. 1835 01:19:33,840 --> 01:19:35,930 So no, we do not. 1836 01:19:43,170 --> 01:19:45,474 "This question relates to a situation 1837 01:19:45,474 --> 01:19:47,900 where the LOP is considered, 1838 01:19:47,900 --> 01:19:50,784 but only some of the evidence is 1839 01:19:50,784 --> 01:19:53,710 forwarded to the examining attorney. 1840 01:19:53,710 --> 01:19:56,450 What are types of, uh, 1841 01:19:56,450 --> 01:20:00,730 evidence that, in fact, would not be forwarded?" 1842 01:20:00,730 --> 01:20:03,112 Well, for pre-publication letters of protest, 1843 01:20:03,112 --> 01:20:06,736 if, if we don't deem the evidence to be 1844 01:20:06,736 --> 01:20:08,666 relevant to the particular objection, 1845 01:20:08,666 --> 01:20:10,970 then it will not be forwarded. 1846 01:20:10,970 --> 01:20:12,686 But other evidence in a letter of 1847 01:20:12,686 --> 01:20:13,830 protest might be relevant. 1848 01:20:13,830 --> 01:20:17,200 So it would be forwarded. 1849 01:20:17,200 --> 01:20:20,085 A lot of times what I see is, in some of 1850 01:20:20,085 --> 01:20:22,785 the examples that I, I gave for a letter of 1851 01:20:22,790 --> 01:20:24,745 protest were reasons for, common 1852 01:20:24,745 --> 01:20:26,700 reasons for not being considered. 1853 01:20:26,700 --> 01:20:30,484 Perhaps the letter of protest has a five page, 1854 01:20:30,484 --> 01:20:33,839 five items from 5 different websites, 1855 01:20:33,840 --> 01:20:37,168 but only two of the websites, uh, 1856 01:20:37,168 --> 01:20:40,374 actually list the URL and the date. 1857 01:20:40,380 --> 01:20:42,428 Or maybe they list the URL but don't 1858 01:20:42,428 --> 01:20:44,537 list the date or they list the date, 1859 01:20:44,540 --> 01:20:46,220 but they don't list the URL. 1860 01:20:46,220 --> 01:20:47,532 So we go through 1861 01:20:47,532 --> 01:20:49,172 each piece of evidence and 1862 01:20:49,172 --> 01:20:50,938 determine what can be forwarded 1863 01:20:50,938 --> 01:20:54,970 and what cannot be forwarded. And 1864 01:20:54,970 --> 01:20:57,794 it's, it's, we always try to forward the 1865 01:20:57,794 --> 01:21:00,630 evidence, so you know what we can forward, 1866 01:21:00,630 --> 01:21:02,850 we will. 1867 01:21:02,850 --> 01:21:06,606 But sometimes all of the evidence 1868 01:21:06,606 --> 01:21:08,910 that you submit as a protester 1869 01:21:08,988 --> 01:21:11,370 is not forwarded to the record. 1870 01:21:11,370 --> 01:21:15,260 Could be, also, that, that perhaps it was 1871 01:21:17,640 --> 01:21:20,705 mutilated or incomplete, in that 1872 01:21:20,705 --> 01:21:23,770 the picture that you submitted 1873 01:21:23,770 --> 01:21:26,003 is not a complete picture of the 1874 01:21:26,003 --> 01:21:27,989 website, such that it's illegible. 1875 01:21:27,990 --> 01:21:29,740 We won't, we won't forward that either. 1876 01:21:32,110 --> 01:21:34,522 Those I, I can't think of any other reasons, 1877 01:21:34,530 --> 01:21:36,819 but other than to say that we 1878 01:21:36,819 --> 01:21:38,664 go through the evidence and 1879 01:21:38,664 --> 01:21:41,010 if it relates to the refusal, 1880 01:21:41,010 --> 01:21:43,380 if it's relevant to the refusal, 1881 01:21:43,380 --> 01:21:45,750 we will forward it if it, 1882 01:21:45,750 --> 01:21:48,802 if it complies with all of the 1883 01:21:48,802 --> 01:21:50,940 other requirements for evidence, 1884 01:21:50,940 --> 01:21:53,550 or letter of protest. 1885 01:21:53,550 --> 01:21:56,800 "OK, John, can an attorney's email address 1886 01:21:56,800 --> 01:21:59,706 be provided for the protestor's email 1887 01:21:59,706 --> 01:22:02,388 address, to avoid spamming and pervert, 1888 01:22:02,390 --> 01:22:04,946 preserve the protester's 1889 01:22:04,946 --> 01:22:08,354 confidentiality of email address?" 1890 01:22:08,360 --> 01:22:11,072 Well, the letter protest itself is 1891 01:22:11,072 --> 01:22:14,878 not made a part of the public record. 1892 01:22:14,880 --> 01:22:15,722 Umm, 1893 01:22:15,722 --> 01:22:21,972 we will send the letter of protest to 1894 01:22:21,972 --> 01:22:24,084 the correspondence email address that was 1895 01:22:24,084 --> 01:22:26,627 listed in the letter of protest form. 1896 01:22:26,630 --> 01:22:28,700 Let's go to, let's go to 1897 01:22:28,700 --> 01:22:31,172 Page 32. Umm, 1898 01:22:31,172 --> 01:22:36,116 we are requiring an email address 1899 01:22:36,120 --> 01:22:38,184 in our letter protest form, as 1900 01:22:38,184 --> 01:22:40,656 a place to send the decision 1901 01:22:40,656 --> 01:22:42,700 or determination letter to, 1902 01:22:42,700 --> 01:22:45,790 we do have to have that. 1903 01:22:45,790 --> 01:22:48,558 But we're not requiring 1904 01:22:48,558 --> 01:22:51,326 too much information about 1905 01:22:51,326 --> 01:22:53,990 the protester themselves, 1906 01:22:53,990 --> 01:22:58,782 so we just need an email address of 1907 01:22:58,782 --> 01:23:02,180 where to send the, the determination 1908 01:23:02,180 --> 01:23:05,090 letter about the letter of protest. 1909 01:23:05,090 --> 01:23:06,626 So if you look, if you look at 1910 01:23:06,626 --> 01:23:08,449 what I have here now, is slide 32. 1911 01:23:08,450 --> 01:23:11,538 If you look at our form, we're asking 1912 01:23:11,538 --> 01:23:14,683 for an email address, but not an 1913 01:23:14,683 --> 01:23:16,538 email address of the protester. 1914 01:23:16,540 --> 01:23:18,166 We do want the protesters name. 1915 01:23:18,170 --> 01:23:19,910 That is true. But, 1916 01:23:19,910 --> 01:23:23,340 this is not put into the record. 1917 01:23:31,940 --> 01:23:35,796 "OK. Uh, you may have covered this, John, 1918 01:23:35,800 --> 01:23:39,175 but if you could go back through as to 1919 01:23:39,175 --> 01:23:42,349 what actually does or does not issue 1920 01:23:42,350 --> 01:23:47,866 when the LOP evidence is not considered. 1921 01:23:47,870 --> 01:23:50,733 Is there a specific, specific letter that 1922 01:23:50,733 --> 01:23:53,537 someone will see when that's the case?" 1923 01:23:53,540 --> 01:23:56,725 Well, the only person who's going to 1924 01:23:56,725 --> 01:24:01,253 see it is the umm, the protester. Umm, 1925 01:24:01,253 --> 01:24:04,957 if the letter of protest is not considered, 1926 01:24:06,980 --> 01:24:09,460 none of the information 1927 01:24:09,460 --> 01:24:11,190 about the letter of protest, 1928 01:24:11,190 --> 01:24:13,410 none of the evidence that was 1929 01:24:13,410 --> 01:24:15,257 attached to the letter of protest, 1930 01:24:15,260 --> 01:24:17,700 none of that is placed into the record. 1931 01:24:17,700 --> 01:24:19,990 There's no indication in the 1932 01:24:19,990 --> 01:24:21,364 prosecution prosecution history 1933 01:24:21,364 --> 01:24:23,810 that letter of protest was ever filed. 1934 01:24:23,810 --> 01:24:26,480 But the letter of protest? 1935 01:24:26,480 --> 01:24:28,568 Umm, there, the, the protester will 1936 01:24:28,568 --> 01:24:31,573 get a, a notice from the PTO saying 1937 01:24:31,573 --> 01:24:33,877 that their letter of protest was not 1938 01:24:33,956 --> 01:24:36,392 considered, and it will look like Slide 1939 01:24:36,392 --> 01:24:39,036 39 that I have on the screen right now. 1940 01:24:39,040 --> 01:24:40,438 That is what they will receive. 1941 01:24:48,270 --> 01:24:50,094 "The next question, John, when did 1942 01:24:50,094 --> 01:24:52,119 the new rules go into effect? 1943 01:24:52,120 --> 01:24:54,106 I submitted an LOP on November 1944 01:24:54,106 --> 01:24:56,229 5th and would not have submitted 1945 01:24:56,229 --> 01:24:58,784 an index of evidence, as I wasn't 1946 01:24:58,784 --> 01:25:00,808 aware of the new requirement. 1947 01:25:00,810 --> 01:25:03,946 Should I resubmit another OLP with the index? 1948 01:25:03,950 --> 01:25:06,170 Can I do so without incurring 1949 01:25:06,170 --> 01:25:07,280 another filing fee?" 1950 01:25:09,960 --> 01:25:12,490 The TMA went into effect, 1951 01:25:14,870 --> 01:25:20,470 I believe it was January 2nd of 2021. 1952 01:25:20,470 --> 01:25:23,025 We recognized that there was not a 1953 01:25:23,025 --> 01:25:27,264 lot of notice about the new changes 1954 01:25:27,264 --> 01:25:31,325 and so we posted the LOP tips page 1955 01:25:31,325 --> 01:25:36,035 on the website for the USPTO. 1956 01:25:36,040 --> 01:25:42,270 The index requirements, we began 1957 01:25:42,270 --> 01:25:45,150 enforcing the index requirement in August, 1958 01:25:45,150 --> 01:25:48,948 but it was always part of the new rule, 1959 01:25:48,950 --> 01:25:52,790 effective January 2nd of 2021. 1960 01:25:52,790 --> 01:25:56,014 My advice as far, as for the letter of 1961 01:25:56,014 --> 01:25:59,771 protest that you filed on November 5th, if 1962 01:25:59,771 --> 01:26:04,337 evidence was required for your objection 1963 01:26:04,340 --> 01:26:07,052 and you did not provide an index, that 1964 01:26:07,052 --> 01:26:08,818 particular letter of protest will not 1965 01:26:08,818 --> 01:26:10,852 be considered because it does not 1966 01:26:10,852 --> 01:26:13,278 have an index, and index is required 1967 01:26:13,278 --> 01:26:14,286 for the objection. 1968 01:26:14,290 --> 01:26:17,578 The remedy is to file a new letter 1969 01:26:17,578 --> 01:26:20,782 of protest with an index for the 1970 01:26:20,782 --> 01:26:23,333 evidence and that would be a new letter of 1971 01:26:23,333 --> 01:26:25,557 protest and a new filing fee would 1972 01:26:25,557 --> 01:26:28,050 be due with that letter of protest. 1973 01:26:30,600 --> 01:26:34,470 "OK, the next one, John, is looking to the 1974 01:26:34,470 --> 01:26:38,810 TMEP provision about LOP's and it indicates 1975 01:26:38,810 --> 01:26:41,722 LOP should include only a simple statement 1976 01:26:41,722 --> 01:26:45,117 of the proposed legal grounds for refusing 1977 01:26:45,117 --> 01:26:47,707 registration or issuing a requirement, 1978 01:26:47,710 --> 01:26:49,754 together with succinct, factual, 1979 01:26:49,754 --> 01:26:51,798 objective evidence to support 1980 01:26:51,798 --> 01:26:53,929 the refusal or requirement. 1981 01:26:53,930 --> 01:26:57,192 It should not include arguments, and I 1982 01:26:57,192 --> 01:26:59,439 think that's where the question is focused. 1983 01:26:59,440 --> 01:27:01,729 The part about it should not include 1984 01:27:01,729 --> 01:27:04,568 arguments. Could you clarify that?" 1985 01:27:04,570 --> 01:27:08,122 Well, yes, I, I think, I think what 1986 01:27:08,122 --> 01:27:10,954 they're asking is on the evidence itself. 1987 01:27:10,954 --> 01:27:13,984 Should it include, it should, it should, 1988 01:27:13,984 --> 01:27:16,708 or it should not include arguments? 1989 01:27:16,710 --> 01:27:23,060 Umm, or in their statement. Well, 1990 01:27:23,060 --> 01:27:26,532 we don't need it. If the protester 1991 01:27:26,532 --> 01:27:28,020 wants to present 1992 01:27:28,020 --> 01:27:32,766 a further explanation of their objection 1993 01:27:32,770 --> 01:27:35,160 in their letter of protest, 1994 01:27:35,160 --> 01:27:38,380 they can do that in the form. 1995 01:27:38,380 --> 01:27:41,964 Some protesters write it on a piece of 1996 01:27:41,964 --> 01:27:45,017 paper and attach that to the letter of 1997 01:27:45,017 --> 01:27:46,720 protest form, but that's not evidence. 1998 01:27:46,720 --> 01:27:47,200 You know, 1999 01:27:47,200 --> 01:27:51,106 that's not, not considered as evidence. 2000 01:27:51,110 --> 01:27:53,420 So, 2001 01:27:53,420 --> 01:27:56,340 If they want to, to, to flesh out 2002 01:27:56,340 --> 01:27:58,140 their likelihood of confusion 2003 01:27:58,140 --> 01:27:59,640 argument or flesh out their 2004 01:27:59,640 --> 01:28:02,220 merely descriptiveness argument, 2005 01:28:02,220 --> 01:28:03,960 they can do that, 2006 01:28:03,960 --> 01:28:06,570 but they cannot do that on 2007 01:28:06,678 --> 01:28:08,658 the evidence itself, 2008 01:28:08,660 --> 01:28:14,456 or on the index for the evidence. 2009 01:28:14,460 --> 01:28:16,290 I hope that, that clarifies. 2010 01:28:18,320 --> 01:28:20,568 "OK, John, we're going to have the last 2011 01:28:20,568 --> 01:28:22,979 one, as the last question, because we're 2012 01:28:22,979 --> 01:28:25,409 hitting our, our time. And you know, 2013 01:28:25,410 --> 01:28:27,210 there have been really a lot 2014 01:28:27,210 --> 01:28:28,410 of good questions submitted 2015 01:28:28,466 --> 01:28:29,858 that we could not get to, 2016 01:28:29,860 --> 01:28:32,172 and we'll have to figure out whether we 2017 01:28:32,172 --> 01:28:33,910 will separately be able to follow up. 2018 01:28:33,910 --> 01:28:35,534 I don't want to make a commitment 2019 01:28:35,534 --> 01:28:36,819 as to that right now, 2020 01:28:36,820 --> 01:28:39,964 but let's wrap up, John, with this question: 2021 01:28:39,970 --> 01:28:42,728 Can we manually type the access date 2022 01:28:42,728 --> 01:28:46,377 onto a page where we insert a screenshot? 2023 01:28:46,380 --> 01:28:47,844 Or, must the access 2024 01:28:47,844 --> 01:28:50,040 date actually appear on the screenshot 2025 01:28:50,040 --> 01:28:53,118 when we do take that screenshot?" 2026 01:28:53,120 --> 01:28:53,860 Excellent question, 2027 01:28:53,860 --> 01:28:56,080 I'm so glad you asked that. 2028 01:28:56,080 --> 01:28:58,577 You can manually put it on there. Umm, 2029 01:28:58,577 --> 01:29:02,280 as long as we can verify it, it's fine. 2030 01:29:02,280 --> 01:29:05,255 So, so if you need to type 2031 01:29:05,255 --> 01:29:08,310 it in onto the screenshot, 2032 01:29:08,310 --> 01:29:11,026 if that's what your computer and the 2033 01:29:11,026 --> 01:29:13,128 software that you have will, will, 2034 01:29:13,128 --> 01:29:16,650 if that's as far as it can go in terms of 2035 01:29:16,650 --> 01:29:21,230 capturing the URL and or the date, then 2036 01:29:21,230 --> 01:29:22,942 that will be sufficient. 2037 01:29:22,942 --> 01:29:26,939 But if you, if you provide it, uh, what 2038 01:29:26,939 --> 01:29:28,962 I'd like to do, though is, is 2039 01:29:28,962 --> 01:29:30,740 to just to clarify that. 2040 01:29:30,740 --> 01:29:33,326 That should be on the evidence, 2041 01:29:33,330 --> 01:29:35,970 not in the LOP form. 2042 01:29:35,970 --> 01:29:38,742 Uh, it should be on that page of evidence, 2043 01:29:38,750 --> 01:29:40,340 the URL and the date. 2044 01:29:43,620 --> 01:29:44,676 "OK, again, John, 2045 01:29:44,676 --> 01:29:47,140 we received a lot of good questions, 2046 01:29:47,140 --> 01:29:48,620 some of them quite honestly 2047 01:29:48,620 --> 01:29:50,650 had five or six parts to them, 2048 01:29:50,650 --> 01:29:52,904 which were very difficult to try to, 2049 01:29:52,910 --> 01:29:54,922 you know, ask out loud, but we'll, 2050 01:29:54,922 --> 01:29:57,570 we'll see if we can have a follow up. 2051 01:29:57,570 --> 01:29:59,418 But otherwise, I think we will need 2052 01:29:59,418 --> 01:30:01,683 to wrap up. And again, apologies that 2053 01:30:01,683 --> 01:30:03,795 there was a little technical glitch 2054 01:30:03,861 --> 01:30:05,856 where I was dropped from the call, 2055 01:30:05,860 --> 01:30:08,196 but I'm glad we could get back in." 2056 01:30:08,200 --> 01:30:08,690 Me too.