A letter of protest is an informal procedure that allows third parties to bring to the attention of the USPTO evidence bearing on the registrability of a mark. A letter of protest will only be accepted if it presents an issue that can be dealt with by an examining attorney in the course of the ex parte examination of a trademark application. Trademark Manual of Examining Procedure (TMEP) §1715.01. The letter of protest procedure applies only to pending applications and is intended to aid in examination without causing undue delay and without compromising the integrity and objectivity of the ex parte examination process.
The most common grounds for accepting a letter of protest include: likelihood of confusion with a U.S. trademark registration or prior pending application; descriptiveness/genericness of the mark, use of a registered mark in the identification of the goods/services, or a false association with the protestor. A letter of protest should not be submitted, and will never be accepted, if the issue presented relates to: common-law prior use, an ownership dispute, fraud, or a mere disagreement with the examination conducted by the examining attorney or with the examining attorney's exercise of judgment. Issues such as these are more appropriately handled in an inter partes proceeding before the Trademark Trial and Appeal Board. Further, the USPTO denies letters of protest that do not include factual, objective evidence.
Some helpful tips regarding the procedure for filing a letter of protest, and the nature of the evidence required, are listed below.
When/How to File
- File the letter of protest as soon as possible after the subject application is filed and preferably before publication. Pre-publication letters of protest are accepted if the evidence is relevant and supports a reasonable ground for refusal. After publication, a letter of protest is only accepted if the evidence supports a clear error on the part of the USPTO in approving the mark for publication. A letter of protest filed after the thirty-day opposition period is denied as untimely.
- Always file online using the Trademark Electronic Application System (TEAS) "Letter of Protest" form.
- Always provide a correspondence address since letter of protest decisions are sent by first-class mail and not by e-mail.
- Send the letter of protest ONLY once- do NOT send electronically and then again by facsimile or mail.
- Clearly identify the grounds for the refusal or requirement you would like considered.
- If you wish to identify multiple prior pending applications and registrations that could support a likelihood of confusion refusal, the applications and registrations should be listed on a separate chart clearly identifying the registration or serial number(s), the mark(s), and the identified relevant goods or services with the appropriate International class number(s).
- It should be a rare situation in which more than 75 pages of evidence is necessary to support a proposed legal grounds for refusal. If you must submit more than 75 pages, the letter of protest will be denied if it does not contain (1) a detailed explanation why more than 75 pages of evidence is necessary and (2) is not accompanied by a separate itemized index. The index should provide a concise factual description of each category or form of evidence included and should never identify the protestor or contain arguments.
- It is highly recommended that for all submissions of any evidence, to assist in analyzing the material, that an index of the evidence as described above be included. If the letter of protest applies to more than one application, a separate letter of protest for each application must be filed.
- Submit factual, objective evidence that is relevant to examination of the mark. Only evidence relevant to the grounds for protest will be forwarded to the examining attorney if the letter of protest is accepted. The letter of protest itself, and any arguments included therein, is not forwarded to the examining attorney for consideration.
- Evidence submitted should be succinct in nature and consist of quality submissions that are relevant to the grounds being considered and support a reasonable ground for making the refusal or issuing the requested requirement.
- Evidence submitted with a letter of protest should not duplicative and should be culled down to the most relevant evidence. For example, where numerous examples of relevant third-party registrations or web pages exist, it is unnecessary to provide them all; generally the most relevant ten to fifteen examples should be submitted. More than fifteen examples generally will be considered duplicative and unnecessary and may result in the letter of protest being denied without further consideration on the merits. See TMEP 1715.04(b)
- If the issue is a likelihood of confusion with federally registered marks or prior pending applications and the goods/services are identical, you need only submit the relevant registration or application serial number(s). Copies of registration certificates or printouts from the USPTO database are not needed.
- If the issue is a likelihood of confusion and the goods and services are not identical, then objective third party evidence showing the relatedness of the goods/services should be provided. If the evidence includes third-party registrations, a mere list of the registrations or a copy of a search report is not proper evidence of such registrations and all submitted registrations must be based on use of the mark in commerce.
- If the issue is descriptiveness/genericness of the mark, evidence showing use by others of the mark or portions of the mark in a descriptive or generic manner, or excerpts from the dictionary showing the meaning of the mark, is appropriate. However, merely submitting a list of web sites is not sufficient and a letter of protest merely including such a list will be denied. See Trademark Manual of Examining Procedure (TMEP) §710.01(b) for guidance on the transitory nature of Internet postings.
- If the issue is descriptiveness/genericness and the evidence includes third-party registrations, a mere list of the registrations or a copy of a search report is not proper evidence of such registrations. Copies of the registration certificates should be included. See TMEP §710.03 regarding evidence of third-party registrations.
- TSDR printouts of the prosecution history for the protested application should not be submitted. This information is part of the USPTO records and will be reviewed as needed.
- If new additional evidence may support a refusal already made by the examining attorney, this evidence may be submitted and a letter of protest might be accepted if the evidence is not redundant.
- NEVER include with the letter of protest the following: information of alleged prior use; evidence of alleged incidents of actual confusion; or alleged fraudulent activity or declarations supporting your letter of protest. These matters and evidence are more appropriate for inter partes proceedings.
Further information on letters of protest can be found in TMEP §1715.