What is a Letter of Protest in a Trademark Application?

Letters of Protest are underused tools in the toolbox of the trademark application process to block the registration of a mark. The Letter of Protest is a strategic maneuver designed to influence the United States Patent and Trademark Office’s (USPTO) decision-making process without initiating a formal opposition or cancellation proceeding filed in the Trademark Trial and Appeal Board, but by providing evidence to the USPTO of the likelihood of confusion between an applied-for mark and your registered trademark. The goal of the letter of protest is to have the USPTO examining attorney issue an office action based upon a likelihood of confusion between the applied-for mark and your registered trademark.

Drafting a Notice of Opposition in the Trademark Trial and Appeal Board can take time and have higher filing fees than drafting the protest letter.

Understanding the Letter of Protest

At its core, the Letter of Protest allows third parties to present the USPTO with reasons why a pending application should not be approved. This might be due to a potential conflict under Section 2(d) of the Trademark Act, or because the mark in question is deemed descriptive or generic. By filing a Letter of Protest, you’re essentially asking the Commissioner’s office to alert the Examiner to these concerns, providing an opportunity to block a problematic application early in the process.

Why opt for a Letter of Protest? The reasons are twofold:

1. Cost Efficiency: Successfully blocking an application through this method is significantly less expensive than going through opposition or cancellation proceedings.
2. Timeliness: A Letter of Protest can halt a conflicting application earlier, preventing potential legal battles down the line.

However, it’s crucial to note that the Letter of Protest is not a venue for detailed legal arguments. Instead, it’s a prompt for the USPTO to consider specific evidence or records that highlight the application’s issues.

Impact Beyond the Application

The implications of a Letter of Protest extend beyond merely blocking an application. It signals to the applicant that their potential trademark is under scrutiny, encouraging them to reconsider their strategy or prepare for possible legal challenges. This proactive approach can be invaluable in protecting your trademark rights.

The USPTO’s Stance on Letters of Protest

Derived from the Trademark Manual of Examining Procedure (TMEP), the Letter of Protest is an informal procedure at the USPTO’s discretion. It serves as a means for third parties to introduce evidence that may affect the registrability of a mark. However, it’s crucial that these submissions focus on objective, factual evidence rather than adversarial arguments.

Letters of protest are reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy (“Deputy Commissioner”) to determine whether the submitted information should be given to the examining attorney for consideration.  To preserve the integrity and objectivity of the ex parte examination process, the letter of protest never becomes part of the application file and the Deputy Commissioner acts on the letter of protest without consulting with the examining attorney.  The Deputy Commissioner considers only the record in the application and the relevant evidence submitted by the protestor.

Appropriate Subjects for a Letter of Protest

The most common reasons for filing a letter of protest by the owner of a registered trademark are:

• Claims of genericness or descriptiveness, supported by evidence.
• Notification of potentially confusingly similar registered marks or pending applications.
• Requests to suspend an application due to ongoing litigation.
• Concerns over the inappropriate use of registered marks in goods or services identification.
• Notifications regarding priority claims under Section 44(d) that might lead to confusion.

Issues such as a potential claim of common law prior use of a trademark, a claim that the applicant is not the true owner of the trademark in protested application, or a disagreement with the examining attorney’s examination decision in the protested application are inappropriate topics for a Letter of Protest.  These issues are more appropriately handled in a court of law rather than at the USPTO.

Asking for a Suspension of a Trademark Application

Normally, the writer of the letter of protest wishes to have the USPTO issue an office action.

However, the writer of the letter of protest can ask for a suspension of the target trademark application should there be special circumstances, such as litigation between the parties.  This party who wishes to request suspension of a pending application because a proceeding relevant to the registrability of the mark is pending before a court must do so by filing a letter of protest.  SeeTMEP §1715–1715.06.  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, 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 abandonment or amendment of the application that is the subject of the letter of protest.

When and How to File

Timing is critical. Letters of Protest should ideally be filed before the application’s publication to ensure consideration. The process is straightforward: submit your letter via the USPTO’s designated portal, clearly outline your objections, and back them up with organized, indexed evidence. While the deputy commissioner has the final say on forwarding your concerns to the examining attorney, a well-crafted Letter of Protest, supported by compelling evidence, stands a strong chance of influencing the examination process.

The Trademark Modernization Act of 2021 has introduced significant changes, including a two-month review period from the Letter of Protest filing date and specific filing requirements, such as a $50 fee and the necessity of an itemized evidence index.

Indexing Evidence

If the Letter of Protest contains evidence to the legal arguments made, then that evidence must be indexed or the USPTO will not consider the Letter of Protest.  The evidence must be relevant information for likelihood of confusion between the pending trademark application and the protestor’s trademark. If the itemized evidence index contains any persuasive language or arguments, or identifies protestor in any way then the USPTO will not consider the Letter of Protest.  There should be no more than 10 pages of evidence per legal theory in the Letter of Protest.  If more than 75 pages of evidence are required, the reasoning must appear in the Letter of Protest.

Avoiding Common Pitfalls

A successful Letter of Protest sticks to the facts and avoids common-law trademark arguments, disputes over ownership, and unclear subject matter. It’s about making a concise, evidence-backed case for why the USPTO should refuse registration.

What Comes Next?

Submission doesn’t guarantee success. The applicant may respond with arguments or evidence that challenge your protest. Stay vigilant, ready to address any changes to the application that might affect your original objections. If the examiner leans towards approval despite your protest, consider escalating to a formal opposition proceeding.  That said, the letter of protest is an important tool that a trademark attorney can use in order to stop thje registration of the mark that can cause confusion.

 Conclusion

The Trademark Letter of Protest is a nuanced tool that, when used correctly, can significantly impact the trademark registration process. By understanding its purpose, knowing when and how to file, and preparing to follow through on your objections, you can protect your brand effectively and efficiently.

Need professional guidance on navigating trademark challenges? Partnering with an experienced trademark law firm can provide the strategic insight needed to leverage the Letter of Protest to your advantage. For personalized advice and support, reach out to and partner with Verna Law, P.C. to navigate the trademark landscape successfully. Contact us today at anthony@vernalaw.com or 914-908-6757 to safeguard your brands and shape the future of your business.