What is a letter of protest?

Third parties may challenge an early stage trademark application by submitting a letter of protest to the USPTO.

When should a letter of protest be filed?

The letter of protest provides an earlier option for challenging trademark applications that have not yet reached approval for publication (i.e., when the mark is published for opposition). If the 30-day window for an application has already been scheduled, then a putative challenger might as well wait for the publication period to oppose the mark.

While a letter of protest may be filed during the opposition period, the protest letter will be accepted only if the evidence supports a clear error on the part of the USPTO in approving the mark for publication. Any protest letter filed after 30 days from the date of publication will be considered untimely.

What are the requirements of a letter of protest?

A proper letter of protest must meet the following requirements:

  • file online using the TEAS form
  • include a correspondence address for USPTO to snail mail the protest decision (protest decisions will not be emailed)
  • clearly identify the grounds for refusing registration of the mark
  • (highly recommended) an itemized index of evidence submitted

What issues can be raised in a letter of protest

Here’s an exemplary list of appropriate subjects:

  • generic or descriptive mark
  • likelihood of confusion with registration or prior-pending application for similar mark
  • likelihood of confusion with subsequently filed application having a priority claim to an earlier-filed foreign application [Section 44(d)] or a Madrid Protocol application [Section 66(a)]

See TMEP 1715.01(a).

Here’s an exemplary list of inappropriate subjects:

  • earlier common-law use without a registration or prior-pending application
  • applicant is not the proper owner of the mark
  • fraud

See TMEP 1715.01(b).

What evidence would be appropriate to submit in a letter of protest?

Only factual, objective evidence relevant to examination of the mark should be submitted. The letter of protest itself will not be forward to the examining attorney for consideration.

If a protestor is asserting likelihood of confusion with a registered mark or prior pending application and the goods/services are identical, then only the relevant registration or application serial numbers need to be submitted. If the goods/services are not identical, then objective third party evidence showing the relatedness of the goods/services should be submitted.

It would never be appropriate to include the following information that should be reserved for inter partes proceedings (i.e., oppositions or cancellations):

  • alleged prior use
  • actual confusion
  • fraud
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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
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Vic Lin

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