What is a letter of protest against a trademark application?

Third parties may challenge a pending trademark application by submitting a letter of protest to the USPTO. Protests differ from trademark oppositions which can only be filed during the published for opposition time period. A protest is, therefore, a way to challenge a trademark application at an earlier stage.

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 potential 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 against a trademark application?

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 be inappropriate to include the information that should be reserved for inter partes proceedings (i.e., oppositions). For example, trademark protests should omit the following types of evidence:

  • alleged prior use
  • actual confusion
  • fraud

How to find out if your protest against a trademark application was successful

A trademark protest is successful when the examining attorney issues an Office Action rejecting the trademark application. If the grounds for refusing registration echo your arguments, then you’ll know your protest was persuasive.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com