What is a Letter of Protest Against a Trademark Application?

A Letter of Protest is filed with the United States Patent and Trademark Office (USPTO) for the purpose of notifying the USPTO that federal registration of a mark in a pending trademark application should be refused.  It is essentially a way for a third-party (referred to as the “protestor”) to aid in the review of a trademark application in a manner that preserves the integrity and objectivity of the application examination process.  The name of the protestor and/or its legal representative is kept confidential so that the examining attorney remains unbiased when reviewing the evidence submitted with the Letter of Protest.  In addition, the Letter of Protest itself is not entered into the public application record, but anybody who wishes to request a copy can do so by contacting the USPTO via email.

What is the Time Period for Filing a Letter of Protest?

Frankly, it’s always best practice to file a Letter of Protest as soon as possible.  The closer to the application filing date the better.  Nevertheless, a Letter of Protest must be filed no more than 30 days after the trademark application is published for opposition.  However, there are two exceptions to this rule:

• Since applications for marks that will register on the Supplemental Register are not published for opposition, a Letter of Protest should be submitted as soon as possible so that the USPTO has sufficient time to take action.
• If the application is a request for an extension of protection of an international registration under Section 66(a) (the Madrid Protocol), the Letter of Protest must be filed (1) no more than 30 days after the trademark application is published for opposition, and (2) no more than 18 months after the application was transmitted to the USPTO by the International Bureau (IB).

Please note that filing an extension of time to oppose an application does not extend the deadline for filing a Letter of Protest.

If you fail to timely file a Letter of Protest, then your only option would be to file a trademark opposition against the application (if there’s still time remaining in the opposition period to do so) or a trademark cancellation after the trademark registration issues.

What Issues are Appropriate to Raise in a Letter of Protest?

I think it’s probably easier to first address three common issues that a protestor cannot raise in a Letter of Protest:

• The protestor cannot claim or present evidence of earlier common law use of a trademark or state registration of a trademark
• The protestor cannot claim or present evidence that the applicant listed in the application is not the proper owner of the mark
• The protestor simply disagrees with an examining attorney’s examination of an application

Now, there are many grounds for refusal that a protestor is permitted to raise.  Here are a few common examples:

• The mark is generic or fails to function as a trademark
• The mark is merely descriptive, geographically descriptive, deceptive, deceptively misdescriptive, or geographically deceptively misdescriptive
• The mark is primarily merely a surname
• The mark is likely to cause confusion with an existing federally registered trademark or a mark in a prior-pending application
• The mark falsely suggests a connection with the protestor or another party
• The specimens submitted with the application are not actually in use

What Must Be Included?

I strongly advise you to carefully review Section 1715.05 of the Trademark Manual of Examining Procedure (TMEP), which outlines the type and amount of evidence that can be included with a Letter of Protest, as well as how such evidence must be organized and presented.  Here are the highlights:

• The Letter of Protest form itself should only include a simple statement of the legal grounds for refusing registration
• You may submit copies of relevant trademark applications and trademark registrations
• You may submit relevant website printouts and pages from printed publications or articles
• Only 10 items of evidence may be submitted in support of a single ground for refusal
• Only 75 pages of evidence may be submitted with a Letter of Protest in total
• You must include a separate itemized index listing each item of evidence

Under no circumstances can you present any arguments in support of your claim, use subjective terms to identify or describe your evidence, or identify the protestor and/or its legal representative anywhere on the index.  You are only permitted to submit objective and relevant evidence pertaining to the ground(s) on which you believe the USPTO should issue a refusal.

How Do You File a Letter of Protest?

A Letter of Protest must be filed electronically using the Letter of Protest form provided by the USPTO and must be accompanied by the required fee.  The index and each item of evidence must be provided as an electronic attachment to the form.

What Happens After Filing?

After filing the Letter of Protest, the Deputy Commissioner of the USPTO will determine whether it complies with all legal requirements.  If it is found to be non-compliant, then the submitted evidence will not be included in the application record.  The protestor’s only recourse would be to file a new Letter of Protest (assuming there’s still time remaining to do so).

On the other hand, if the Deputy Commissioner deems the Letter of Protest to be fully compliant, then the Deputy Commissioner will enter the protestor’s evidence into the application record.

If the compliant Letter of Protest was filed before the application was published for opposition, the examining attorney must consider the evidence, but the examining attorney is not required to issue a refusal based on such evidence.  If the examining attorney decides to issue a refusal, the applicant would then have the opportunity to submit evidence and arguments to attempt to overcome the refusal.

In contrast, if the compliant Letter of Protest was filed on or after the date of publication, the examining attorney generally must issue a refusal based on the protestor’s evidence.  Again, the applicant would then have the opportunity to submit evidence and arguments against the refusal.

Do You Need Help Filing a Letter of Protest?

I’m experienced US trademark attorney Morris Turek.  If you require assistance with preparing and filing a Letter of Protest against a pending trademark application, I would be happy to help.  I can be reached direct at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or through the contact form located toward the bottom of this page.  I look forward to hearing from you soon.