Perhaps among the most frustrating aspects of the trademark application process is the seemingly endless amount of time involved, from filing the application to ultimately (fingers crossed!) receiving a registration certificate. Indeed, when an applicant files a trademark application with the USPTO, it is certainly not approved right away and it may very well be several months before an examiner at the Trademark Office reviews the application for approval.
During the review process, the examining attorney considers two fundamental questions; is the trademark sufficiently “distinct” given the goods/services provided in the application and is there a conflict between the trademark application and any trademarks that are either pending or registered with the USPTO.
If the trademark is approved for publication, it will post to the Official Gazette and any legitimate Opposer has the opportunity to submit an official Opposition complaint to the Trademark Trial and Appeal Board (TTAB) arguing why the trademark should not issue.
However, what happens if a potential Opposer doesn’t want to wait until the trademark is already preliminarily approved? In comes the Trademark Letter of Protest.
WHAT IS A TRADEMARK LETTER OF PROTEST?
A Letter of protest is an informal, and yet still powerful, mechanism by which a third party may flag potential issues with a newly applied for trademark application and make the case for the rejection of the trademark application. Letters of Protest are submitted to, and reviewed by, the Office of the Deputy Commissioner for Trademark Examination Policy (Deputy Commissioner) and if deemed sufficiently concerning, will be passed on to the examining attorney.
WHAT CAN A TRADEMARK LETTER OF PROTEST BE FILED?
Time is of the Essence! A letter of protest can only be filed while the prospective trademark application is still “pending”; it can be submitted by any outside party who opposes the registration of the mark and in theory, provides the examining attorney with information they may not have known during their review of the trademark application.
WHAT ARE THE GROUNDS FOR FILING A TRADEMARK LETTER OF PROTEST?
Letters of Protest that are strictly “adversarial” will be immediately rejected along with those that are obviously filed as litigious tools to delay the registration process. Letters of protest must include fact-based evidence and should be entirely neutral and objective in nature.
The following are some of the most common one might file a letter of protest to with the USPTO:
- The trademark being applied for is descriptive or generic in nature. Critically, this particular objection must be substantiated with evidence that clearly demonstrates that the mark is indeed descriptive/generic.
- The third party may believe that the trademark being applied for is too similar to the existing trademark and therefore should trigger a 2(d), Likelihood of Confusion rejection.
- The trademark applicant is currently in litigation for trademark infringement and the third party files a request to suspend the prospection of the application until the litigation is resolved.
Again, a letter of protest should be filed before the trademark application is reviewed by the examining attorney and published to the Official Gazette. Of course, while there are certain exceptions to this maxim (if the objector did not have access to the relevant information in a timely manner), it is important to meet timing-requirements.
HOW DOES SOMEONE FILE A LETTER OF PROTEST?
The letter of protest is your opportunity to explain why a trademark should be denied. It is important that you follow these very specific instructions when filing a letter of protest.
- The letter must be filed on the Letter of Protest page at my.uspto.gov.
- The letter must include a physical correspondence address.
- The letter must clearly identify the reasons that the USPTO should refuse registration (including any objective evidence, organized in a separate and itemized index).
- A separate chart chronicling multiple registrations and pending applications, if appropriate.
If the letter is submitted correctly and with compelling evidence, the letter will be forwarded to the examining attorney. It is solely the deputy commissioner’s decision whether or not to forward the letter to the examiner.
Due to the specific requirements of the process, it is highly recommended that you hire a trademark attorney to help you create and submit a letter of protest.
Once submitted, you can monitor the progress of your letter of protest at the Trademark Status and Document Retrieval website (http://tsdr.uspto.gov/).
WHAT WILL CAUSE A LETTER OF PROTEST TO BE DENIED?
A letter of protest will be denied by the deputy commissioner if it contains any of the following:
- Post 30-Day Window: If the objector files the letter more than thirty days (30) after the publication of the trademark, the letter will likely be denied
- Irrelevant subject matter: Stick to the facts and don’t include anything that sounds like pure opinion or speculation. Remember, the Protest Letter should be drafted to be as fact-oriented as possible. Letters of protest absolutely should not include claims of prior use, fraud, or actual consumer confusion.
- Common-law trademark use: A letter of protest will be denied if it involves common-law use of a trademark. Even state registrations will not qualify. Any protest must be directly related to a pending application at the federal level and the cited trademark/s should have active serial numbers and/or registration numbers.
- Disputes of ownership: If the ownership of a trademark is in dispute, then it can’t be rectified with a letter of protest. These matters are outside the purview of examining attorneys.
- Commission of fraud: If someone commits fraud when applying for their trademark through the USPTO, then a third party can file a notice of opposition or petition to cancel. But a letter of protest isn’t appropriate in instances of suspected fraud.
KEY CONSIDERATIONS WHEN DRAFTING A TRADEMARK LETTER OF PROTEST
Preparing an impactful letter of protest requires in-depth legal knowledge and factual precision. Several key drafting considerations include:
- Clearly articulate valid grounds for refusal with specific citations to the Lanham Act and TMEP
- Thoroughly analyze the relatedness of goods/services under the “related goods” test
- Compare marks elements side-by-side under the “DuPont factors” used to assess likely confusion
- Present concrete evidence of actual confusion if available
- Reply directly and convincingly to any contrary arguments set forth by the applicant
- Follow all procedural and evidentiary rules meticulously
Experienced trademark practitioners will know how to emphasize certain points and bundle different arguments in a complimentary way for maximum impact. For example, highlighting outrageous specimens submitted by the applicant provides additional weight to the claims regarding likelihood of confusion with protestor’s registered marks. A compelling narrative adds power at each phase of analysis.
Consultation with qualified trademark counsel when preparing a letter of protest is thus highly advisable to incorporate all the legally significant details into a cohesive submission.
FORMAT OF A TRADEMARK LETTER OF PROTEST
A letter of protest is concise and should not be considered a legal brief. It is informational in nature and again, because of its “objectivity” requirement, should read like an information sheet. A trademark letter of protest will likely contain the following:
- Header: Be sure to list the serial number, mark, applicant’s name, and filing date of the application you’re protesting.
- Introduction: The opening paragraph should summarize the claim and your main reason for writing the letter of protest.
- Primary claim: Explain in greater detail why the trademark application should be denied.
- Evidence: Relevant evidence which will inform the USPTO of the legitimacy of the letter should be succinct and organized in an accompanying index (a requirement when evidence consists of more than 75 pages). Remember, your goal is to make the Office’s job easy rather than difficult in understanding your concerns. The index must be on plain paper.
- Contact info: Be sure to include your or your attorney’s name, phone number, and email address.
Failure to include any of these vital pieces of information could result in your letter of protest being rejected. Again, it is in your best interest to hire a trademark attorney to assist you with creating and submitting a letter of protest.
WHAT HAPPENS IF MY LETTER OF PROTEST IS DENIED?
If the Deputy Commissioner decides to not honor the Letter of Protest, the objector unfortunately, cannot file a request for consideration. However, in the event that the Deputy Commissioner denies the letter and the opposer is still intent on fighting the admission of the new trademark, there are several options available to him. Perhaps most common, the Opposer will need to file a Trademark Opposition proceeding with the TTAB once the mark is published to the Official Gazette. Missed this chance too? Once the trademark officially obtains a registration certificate, the Opposer can file a Cancellation Proceeding with the TTAB.
RESPONDING TO OFFICE ACTIONS AFTER SUBMITTING A LETTER OF PROTEST
If the trademark examiner issues an initial refusal based on a letter of protest, the applicant can submit arguments and evidence to overcome the refusal and obtain registration – such as proof of five years of substantially exclusive use. It is crucial for the protestor to actively monitor the application and respond appropriately to any submissions from the applicant seeking to register over their objections.
One common response is for the applicant to amend the application to narrow the goods/services identification or even alter some aspects of the proposed mark itself. These amendments could theoretically remove the likelihood of confusion with protestor’s marks. However, any amendments must comply with statutory and regulatory requirements on material alterations. The protestor should thoroughly analyze the applicability of these amendments to determine if grounds for objection still exist even against the altered application.
If the examiner withdraws the initial refusal and approves the application for publication based on the applicant’s response, the protestor can then choose to initiate a formal opposition proceeding. This involves preparing a detailed notice of opposition before the new deadline set relative to the revised application’s republication date. Experienced counsel can provide strategic advice on the best path forward at each potential stage of the post-letter prosecution process.
AFTER REGISTRATION: CANCELLATION PROCEEDINGS
If efforts during the application stage prove unsuccessful, the protestor can initiate cancellation proceedings against a registration once the mark officially registers. Grounds for cancellation petitions mirror those applicable for letters of protest, such as abandonment due to nonuse or that the mark has become generic. Petitioning for cancellation begins an inter partes proceeding allowing both parties to submit arguments and evidence regarding the validity of the challenged registration.
One key difference in cancellation proceedings is that for petitions filed more than five years from the contested registration date, the petitioner bears the additional burden of proving fraud in procurement or that the mark has become generic. So if rights in a confusingly similar mark are being enforced through commercial activity, it becomes vital to take action via letter of protest or opposition before these limitations apply.
Similar to trademark oppositions, cancellation disputes can progress through various stages of review by the Trademark Trial and Appeal Board, settlement negotiations, and potential appeals to federal court. Trademark counsel experienced in cancellation procedures can navigate clients through this complex process to produce the best outcome possible under the circumstances once a conflicting registration formally issues.
IF SOMEONE IS CHALLENGING YOUR TRADEMARK, THE TIME TO ACT IS NOW
If you think that someone is infringing on your trademark and you are considering filing a letter of protest, please contact us for a free consultation. Our attorneys are here to help.
