Trademark Blog

What is a Letter of Protest Against a Trademark Application?

Letter of Protest

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 Consent of a Living Individual for Trademark Registration Purposes?

consent of a living individual

The consent of a living individual is required by the United States Patent and Trademark Office(opens in new tab) (USPTO) if you’re seeking to register a trademark that either (1) identifies a particular living individual, or (2) identifies a deceased president of the United States during the life of his/her widow. Without such written consent, the USPTO is obligated by law to refuse registration of your trademark on either the Principal Register or Supplemental Register. The purpose of this requirement is to protect the rights people have in their own identities and to ensure that consumers aren’t misled about who is responsible for a product or service. Because most people aren’t applying to register trademarks identifying deceased U.S. presidents during the lives of their widows, I will focus this article solely on marks that identify particular living individuals. However, if you want to learn more about that topic, or review the rules concerning consent of a living individual in general, I suggest you read Section 1206 of the Trademark Manual of Examining Procedure (TMEP(opens in new tab)).

What is a Request to Divide a Trademark Application?

request to divide

A Request to Divide is filed with the United States Patent and Trademark Office(opens in new tab) (USPTO) for the purpose of dividing specific products and/or services into one or more separate trademark applications. In other words, the owner of a trademark application can essentially remove products/services from its current application (called the “parent” application) and place them into one or more new applications (called the “child” applications). The child applications retain the same filing date as the parent application, but each one receives a new serial number. After a Request to Divide is granted, each child application is treated independently from one another and from the parent application.

What is an Oral Hearing in a Trademark Opposition or Trademark Cancellation?

oral hearing

An oral hearing in a trademark opposition or trademark cancellation provides each party a final opportunity to explain and emphasize their strongest arguments, as well as to rebut and refute the other party’s arguments. Although the oral hearing doesn’t become part of the evidentiary record (unlike the testimony and documents submitted during a party’s trial period), it does give each party a chance to persuade the Trademark Trial and Appeal Board (TTAB) that its legal position is the strongest and that the TTAB should rule in its favor.

What is the Discovery Period in a Trademark Opposition or Trademark Cancellation?

Discovery Period

The discovery period in a trademark opposition or trademark cancellation is the time during which each party may request information and documents from the other party. The primary purpose of discovery is to (1) seek relevant information and facts that may be helpful or harmful to each party’s case, (2) obtain most (if not all) of the documents and things that each party may use to support its case during its trial period, and (3) determine which facts are not in dispute so that the matters that must be resolved by the Trademark Trial and Appeal Board (TTAB) at trial are narrowed down.

Oftentimes, the parties in a trademark opposition or cancellation are able to reach a settlement after the discovery period has closed. This is because each party has had the opportunity to review the other party’s evidence and is now in a better position to understand the strengths and weaknesses of their respective cases. In other words, the parties may not want to risk an adverse judgment by the TTAB if the information and documents disclosed during discovery indicate that the TTAB is likely to rule in one way or the other.