By James Juo.

In trademark practice, a letter of protest (“LOP”) may be filed by a third party with the U.S. Patent and Trademark Office (“USPTO”) against a pending trademark application when that third party has information that may be a factual basis to refuse registration of that trademark. The USPTO will deny a letter of protest that does not include factual, objective evidence. An index itemizing the evidence also is required.

In addition to potentially blocking or otherwise affecting that pending trademark application, preparing and filing a letter of protest is substantially less expensive than an Opposition or Cancellation proceeding before the USPTO, or litigation in federal court. A letter of protest presently requires a USPTO filing fee of $50. Because the letter of protest process is for the submission of evidence, and not adversarial argument, it is not a substitute for these substantive proceedings to resolve disputes. This should be considered more like an FYI to the USPTO, rather than a form of ADR.

Possible Grounds

One common ground for a letter protest is to inform the USPTO examining attorney responsible for examining that pending application of a possible likelihood of confusion with a registered trademark to another, which would be a basis for refusal of the application under Section 2(d) of the Trademark Act. For example, a letter of protest may identify a prior application or a prior registration for a trademark confusingly similar to the applied-for trademark.

If the goods or services identified in application, and those identified in prior pending application or registration identified in the letter of protest, are not identical; then evidence of the relatedness of those goods and services would need to be submitted with the letter of protest. This may include third-party use-based registrations or third-party websites.

Prior use by another of a common law or unregistered trademark, however, would not be a proper ground for a letter of protest, as that would not be a basis for refusal during prosecution—although it may be a basis for an Opposition or Cancellation proceeding if the application is allowed by the USPTO.

Another common ground for a letter of protest is to request that prosecution of an application be suspended because of pending litigation claiming infringement based on the applicant's use of the applied-for mark. The litigation must be specifically identified and a copy of the relevant pleadings must be enclosed. The litigation must involve a federally registered mark or prior-pending application of the protestor, and the protestor must allege that there is a likelihood of confusion between this mark and the mark in the application that is the subject of the letter of protest. Normally, a court proceeding is not considered relevant to the registrability of a mark unless the remedy requested in the proceeding is cancellation, abandonment, or amendment of the application that is the subject of the letter of protest.

A letter of protest also may present evidence showing that the applied-for mark is merely descriptive or generic. The examining attorneys at the USPTO are knowledgeable about trademark law in particular, and other areas in general; but may not be familiar with all aspects of the words in an applied-for trademark and may benefit from having evidence of genericness or descriptiveness from a knowledgeable source. Evidence of descriptiveness or genericness may include excerpts from online dictionaries showing meaning of applied-for trademark; third-party websites; use-based registrations; or material from printed publications using applied-for trademark in descriptive or generic manner for same goods or services in protested application.

Evidence that the applied-for mark is a widely-used or commonplace message (for example, “Have a Nice Day”) also may be submitted in a letter of protest. Evidence of the public perception of the meaning of the message or phrase may include copies of news articles, webpages, and blogs showing people, other than applicant or protestor, using the applied-for mark in everyday speech; or which show various products bearing the commonly-used phrase on products in marketplace.

Another basis for a letter of protest is that the trademark application contains a specimen that is not in use. For example, third-party websites might be using same image of goods shown in specimen, either without applied-for trademark or with a different trademark. Or maybe the applicant has filed other applications for different marks with specimens all showing identical images of objects or websites but with different marks. Evidence also may include a forensic report demonstrating specimen was digitally created or altered or mocked-up.

Review by USPTO

Letters of protest are separately reviewed by the USPTO's Deputy Commissioner for Trademark Examination Policy Office to determine whether the submitted information should be given to the examining attorney for consideration. The USPTO considers only the record in the application and the evidence submitted by the third-party protestor. Adversarial arguments in letters of protest are not sent to the examining attorney. The letter of protest does not become part of the application file and the examining attorney is not otherwise consulted. Indeed, the examining attorney is not required to refuse registration, and may allow the application after considering the evidence submitted in the letter of protest.

Additional information about letters of protest may be found in Section 1715 of the Trademark Manual of Examination Procedures (TMEP). See also 37 C.F.R. §2.149. Practice tips for letters of protest, including an example of an itemized evidence index format, also can be found on the USPTO's website.

The trademark attorneys at Thomas P. Howard, LLC are experienced with prosecuting trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.