USPTO Letter of Protest

A Trademark Letter of Protest (LOP) in the context of trademark law is a mechanism that allows third parties to provide the United States Patent and Trademark Office (USPTO) with evidence concerning a trademark application's registrability. This procedure enables individuals or entities who believe that a pending trademark should not be registered to submit evidence to the USPTO before the trademark's official examination. Understanding the intricacies of Letters of Protest, including their purpose, process, and implications, is crucial for anyone involved in trademark protection or enforcement.

A letter of protest can be filed if the examiner erroneously failed to raise substantive grounds for rejection of the application Letters of Protest and Supporting Evidence Checklist. The legal basis for a letter of protest may include claims that the mark in the application is likely to be confused with the mark in an existing federal registration, prior pending application, or application with an earlier filing date or priority claim, the mark is generic, the mark is merely descriptive or misdescriptive, or the applicant should disclaim an element of the mark on that basis, and other grounds § 26B.03 Letters of Protest.

The letter of protest procedure was historically an informal practice but was codified by the Trademark Modernization Act (TMA) of 2020 Letters of Protest and Supporting Evidence Checklist. The TMA provided a statutory basis for the procedure in the Lanham Act soon after the USPTO had enacted relevant regulations. The Act provides that a third party “may submit for consideration for inclusion in the record of an application evidence relevant to a ground for refusal of registration” § 26B.03 Letters of Protest.

The Purpose of Letters of Protest

The primary purpose of a Letter of Protest is to ensure that the USPTO is aware of potential issues with a trademark application that may not be evident during the standard examination process. These issues can range from prior existing marks that could cause confusion, to the mark being generic or descriptive.

Often the Letter or Protest is filed by a party who believes the application is too similar to their trademark or trademarks. Other times, trademarks are filed to prevent one competitor from locking down a descriptive word that others want to use for their goods/services. The goal is not to initiate formal opposition proceedings but to assist the examining attorney by providing relevant information that could affect the registrability of the mark.

The legislative history of the letter of protest procedure shows that the practice of allowing letters of protest during the initial examination of a registration has been ongoing for decades at the USPTO § 26B.03 Letters of Protest. The USPTO changed the standard of review for letters of protest filed before a trademark application is published for opposition in 2008. The letter of protest procedure is not a substitute for an opposition proceeding, and it may not be used as a means to delay registration or to present purely adversarial arguments Examination Guide 4–08 Letters of Protest in Pending Trademark Applications.

The Process of Filing a Letter of Protest

Filing a Letter of Protest involves a specific process defined by the USPTO. The procedure is designed to be expedited and ex parte, meaning it is handled without involving the trademark applicant directly. A successful LOP must meet certain criteria:

1. Timeliness: The LOP should be filed as soon as possible after the publication of the trademark application, ideally before an examining attorney is assigned.
2. Relevance: The evidence submitted must be directly relevant to the grounds for protest, such as prior art or statutory bars to registration.
3. Objectivity: The LOP must include objective evidence, not merely opinions or legal arguments.

The evidence can include items such as existing trademark registrations, published applications, or materials demonstrating the generic use of a term. If the Letter of Protest is accepted, the evidence is forwarded to the examining attorney for consideration during the application review process. The Letter of Protest does not consider common-law use of trademarks.

Grounds for a Letter of Protest

Common grounds for filing a Letter of Protest include:

1. Likelihood of Confusion: Evidence showing a confusingly similar mark already in use and registered.
2. Descriptiveness or Genericness: Demonstrations that the mark describes an entire category of goods or services, rather than indicating a unique source.
3. Deceptiveness: Information proving that the mark is likely to deceive or mislead consumers about the nature, quality, or geographic origin of the goods or services.

Timing of Letters of Protest

The most appropriate time for filing a letter of protest is before examination, and in any event before publication of a mark, because the purpose of the letter of protest is to assist the USPTO in the examination of an application.

A letter of protest may be filed before publication or up to 30 days after publication, although the burden of proof is higher after publication. Submitting a letter of protest does not foreclose an opposition proceeding (but will not extend the deadline for filing a notice of opposition). LOPs filed 30 days after publication won't be considered.

Because applications that will issue on the Supplemental Register are not published for opposition, letters of protest should be filed as soon as possible after the filing of such an application.

Strategies - Preventative Letter of Protest

filing a letter of protest as a preventative measure before examination is a strategic and cost-effective way to try to stop a potentially infringing trademark application from being registered. Here are the key points about this approach:

1. It is best to file a letter of protest as soon as possible after the potentially infringing trademark application is filed, and preferably before it is examined by a USPTO examining attorney. This allows you to present relevant evidence to the examiner before they review the application.
2. Pre-examination letters of protest must identify the relevant grounds for refusal or requirements that are appropriate in ex parte examination, and provide relevant objective evidence to support those grounds. This could include evidence of likelihood of confusion with your prior registered mark, or that the applied-for mark is generic or descriptive.
3. The goal is to have the USPTO examining attorney issue an office action refusing registration of the mark, which can prevent the need for you to later file a costly and time-consuming opposition proceeding. The letter of protest itself is not an adversarial proceeding.
4. If the letter of protest is accepted, the evidence submitted will be included in the application record for consideration by the examining attorney. However, the letter of protest itself and any legal arguments will not be forwarded to the examiner.
5. Filing a pre-examination letter of protest does not stay or extend the deadline for later filing a notice of opposition. So it does not replace the possible need for an opposition if the application still proceeds to publication. But it provides an efficient first opportunity to try to block the application.

In summary, a pre-examination letter of protest allows a trademark owner to proactively present evidence to the USPTO examining attorney as to why a new trademark application should be refused, without directly engaging in an adversarial proceeding with the applicant.

Implications of Letters of Protest

The implications of a Letter of Protest can be significant for both the trademark applicant and the protesting party. For the applicant, an LOP can lead to additional scrutiny by the USPTO, potentially resulting in the refusal of their application. For the protesting party, a successful LOP can prevent a problematic trademark from being registered, protecting their own interests and those of the public.

Key Considerations

While the Letter of Protest is a valuable tool, it is not without limitations. The protesting party does not become a party to the examination process and will not be officially notified of the outcome (ex-parte). Furthermore, if the LOP is not accepted, or if the evidence does not convince the examining attorney to refuse registration, the protesting party's options are limited. They may need to wait until the mark is published for opposition or potentially challenge the registration after it is granted.

Strategic Use of Letters of Protest

From a strategic standpoint, Letters of Protest can be an effective early intervention against potentially infringing or problematic trademarks. By providing the examining attorney with crucial evidence before the mark is registered, third parties can potentially avoid more costly and protracted opposition or cancellation proceedings. However, the decision to file an LOP should be made with careful consideration of the evidence at hand and the potential impact on the filer's broader intellectual property strategy.

There are a few other strategies related to letters of protest that can be used in trademark enforcement and protection:

1. Trademark monitoring and early filing of letters of protest

• Implementing a trademark monitoring or watch service to identify potentially infringing applications as early as possible.
• Filing letters of protest as soon as problematic applications are detected, preferably before they are examined or published for opposition.
• Early intervention with a letter of protest can be more cost-effective than later opposition or cancellation proceedings.

2. Submitting relevant evidence with the letter of protest

• Including objective evidence that supports the grounds for refusal, such as existing registrations, examples of descriptive/generic use, or false connection.
• Providing evidence that the examining attorney may not easily find on their own, to supplement the examination record.
• Submitting a concise, well-organized letter with an itemized index of evidence.

3. Combining letters of protest with other enforcement mechanisms

• Filing a letter of protest does not preclude later filing a notice of opposition if the application still proceeds to publication.
• For already registered marks, a letter of protest is not appropriate, but a cancellation proceeding may be an option.
• Letters of protest can be part of a broader trademark enforcement strategy that may also include opposition, cancellation, and infringement litigation.

4. Considering letters of protest as both an offensive and defensive tool

• Monitoring for letters of protest filed against your own applications to be prepared to respond to any issues raised.
• Proactively filing letters of protest against others' applications to block registration of marks that could dilute or impair your own marks.

Conclusion

Letters of Protest offer a preemptive means for third parties to influence the trademark examination process by providing the USPTO with relevant evidence against the registrability of a mark. While not a substitute for formal opposition, an LOP can play a critical role in protecting the integrity of the trademark register and preventing the registration of marks that could cause confusion, are descriptive or generic, or are otherwise unregistrable. Understanding when and how to effectively utilize this tool is essential for navigating the complexities of trademark law and protecting one's intellectual property rights.