A Letter of Protest is a formal document submitted to the US Patent and Trademark Office (USPTO) to challenge a trademark application that is a pending application for trademark registration and may infringe on an existing trademark.
This essential tool helps protect trademark rights and prevent consumer confusion by providing the USPTO with relevant evidence and arguments to refuse registration of the protested application.
What is a Letter of Protest?
A trademark protest letter serves as a cost-effective mechanism for challenging trademark applications before they proceed to registration.
The primary goal of a Letter of Protest is to provide the USPTO with relevant evidence and arguments to prevent trademark registration of the protested application.
Understanding the purpose and importance of a Letter of Protest, and knowing when and how parties must submit the Letter of Protest to the USPTO for consideration, is crucial for effective trademark enforcement.
Grounds for Filing a Letter of Protest
When you’re thinking about whether to file a Letter of Protest, you’ll want to identify the specific grounds that actually justify challenging a trademark application.
The most common grounds you’ll encounter include:
- A likelihood of confusion with an existing trademark
- Descriptiveness
- Genericness, or
- Other registrability issues that trademark law spells out pretty clearly.
You can read more about these issues in my post about why a trademark might be refused.
Your protest letter should clearly identify the primary claim and be backed up by objective evidence — think prior registrations or pending applications that might conflict with the new trademark you’re challenging.
According to the Trademark Manual of Examining Procedure (TMEP), other valid grounds can include issues with the specimen of use or how the goods and services are classified.
A trademark attorney can help you pinpoint the most relevant grounds for your protest and make sure that the evidence you submit actually relates to the refusal you’re seeking.
It’s crucial that you file your protest letter with only evidence that’s pertinent to the grounds for refusal, because examining attorneys rely on this information to make informed decisions about registration.
There are also strict limits as to how much information you can provide, so you need to be aware of these guidelines when preparing your letter.
Gathering Relevant Evidence and Information
Gathering relevant information is a critical step in crafting an effective Letter of Protest, as it provides the foundation for the arguments and evidence presented in the letter. Relevant information may include prior registrations, common law trademark use, and evidence of actual consumer confusion. Other evidence may also include documents, witness statements, or expert opinions that demonstrate the likelihood of confusion or other grounds for refusal.
News articles, elected officials’ statements, and other credible sources can also potentially be used to support the protest letter’s arguments. It all depends on the specific argument being made.
Ensuring that the evidence is properly formatted and submitted can help facilitate the review process and increase the chances of a successful protest.
Structuring Your Protest Letter
Structuring the protest letter is crucial for effective communication with the USPTO and the examining attorney. The letter should clearly state the grounds for the protest, provide relevant evidence, and include a persuasive argument for refusing registration.
Using a clear and concise writing style, with proper headings and formatting, can improve the letter’s readability and impact. The first paragraph should immediately identify the protested application by its serial number and state the reason for your protest.
An itemized index must accompany the submission, briefly describing each piece of evidence and explaining its relevance. A separate chart or table can help organize multiple registrations or complex evidence for easier review by the examining attorney.
Filing Your Letter of Protest
Filing a Letter of Protest involves submitting a well-prepared protest letter along with all relevant evidence to the Office of the Deputy Commissioner for Trademark Examination Policy. The process is streamlined through the Trademark Electronic Application System (TEAS), which provides a dedicated form for this purpose.
Your protest letter should be concise, focusing solely on the specific grounds for refusal and including only evidence that’s directly related to those grounds. You don’t want to muddy the waters with irrelevant materials that could hurt your case, or overwhelm the examiner with too much information.
Key filing requirements include:
- Submit through the Trademark Electronic Application System (TEAS)
- Include itemized index describing each piece of evidence
- Focus on specific grounds for refusal
- Provide only directly related evidence
- Submit to proper physical correspondence address if filing by mail
It’s vital to follow the USPTO’s instructions carefully to ensure your protest is submitted correctly and actually gets considered during the review process.
A trademark attorney can assist you in preparing the protest letter, organizing that itemized index, and ensuring that all requirements are met. We’ve filed several of these and had a lot of success in staving off potential conflicting trademarks by providing the prior evidence to the examiner ahead of their examination.
USPTO Review Process and Procedures
Trademark office procedures play a significant role in the protest process, as they govern how the USPTO reviews and responds to letters of protest. Understanding these procedures can help the protesting party navigate the system and ensure that their letter is submitted correctly.
The USPTO’s staff will first review your Letter of Protest, to make sure it is relevant to the application at hand and that it conforms to the USPTO’s requirements. Then, they will pass it on to the examining attorney.
The examining attorney will then review your protest during their examination of the pending application. If they agree with your protest, they may refuse registration based on the grounds and evidence you’ve provided (as well as their own judgment).
Familiarity with the Trademark Electronic Application System (TEAS) and other USPTO tools can also facilitate the protest process. The review process typically occurs during the normal course of trademark examination – that is to say, it can also be a bit of a long wait until you hear from them.
What Happens After Filing
Once you’ve filed that Letter of Protest, you’re going to want to keep a close eye on what happens next with the trademark application you’re challenging.
If the examining attorney refuses registration based on the specific grounds you outlined in your protest letter, you can consider your protest successful.
However, if the refusal comes back on completely different grounds, or if that application somehow still manages to proceed to registration, you’re not out of options.
You may need to consider additional actions like filing a Notice of Opposition or initiating a Petition to Cancel the registration.
The key here is ongoing monitoring — you don’t want to miss critical deadlines or developments that could impact your trademark rights. A trademark attorney can be invaluable in this process, helping you track the application’s status and interpret USPTO actions.
Understanding the Role of a Trademark Attorney
A trademark attorney plays a vital role in the process, in a few ways:
- First, in crafting an effective Letter of Protest, as they have the expertise to navigate the complex trademark law and USPTO procedures.
- Then, in keeping track of the pending application’s status through their trademark docketing system, to monitor for updates.
- Lastly, to take further action, like opposing the registration, if needed.
Hiring a trademark attorney can significantly improve the chances of a successful protest, as they can provide important guidance on gathering relevant evidence and ensuring all other requirements for a successful protest are met, as well as structuring the protest letter.
Refusal of Registration and Appeals
Now, let’s look at it from the other side.
If the examining attorney refuses registration of your trademark application as a result of the Letter of Protest, you have the right to:
- First, respond to the (usually) Non-Final Office Action refusal, to hopefully convince the examining attorney that your trademark should move on to registration; and
- To appeal any “final” decision to the Trademark Trial and Appeal Board (TTAB). During the appeal, the TTAB will review the refusal and consider any additional evidence or legal arguments you submit.
If the TTAB upholds the refusal, you can still seek further review in federal court — though you’ll want to carefully evaluate whether the additional costs and time investment make sense for your situation.
In some cases, the party who filed the Letter of Protest may also consider pursuing legal action in federal court to prevent your use of the mark (they typically filed the Letter of Protest for a reason, to stop your trademark from being used).
Avoiding Common Mistakes
Avoiding common mistakes is essential for crafting an effective Letter of Protest, as errors can negatively impact the protest’s chances of success.
Common mistakes include failing to provide relevant evidence, using inflammatory language, or submitting the letter incorrectly.
Other frequent errors include submitting evidence that isn’t directly related to the grounds for refusal, missing filing deadlines, or failing to properly organize the submission with an itemized index. Some parties also make the mistake of including too much irrelevant information, which can dilute the impact of their strongest arguments.
By being aware of these potential pitfalls, parties can take steps to avoid them and increase the effectiveness of their protest letter. Working with experienced legal counsel can help identify and avoid these common mistakes.
Letters of Protest as a Strategic Tool
Letters of protest provide a cost-effective and efficient means of challenging trademark applications that may infringe on existing trademarks.
They’re particularly valuable because they allow you to raise concerns early in the process, before the application proceeds to publication and potential registration. This can save you from having to spend large amounts on opposition and cancellation filing fees, because you’re hopefully stopping the trademark application before it reaches that advanced stage.
By understanding the role of letters of protest in trademark enforcement, parties can better navigate the complexities of trademark law and protect their intellectual property rights.
This tool is especially useful when you have strong evidence of likelihood of confusion or other clear grounds for refusal.
Frequently Asked Questions
What is a protest letter?
A protest letter is a formal document submitted to the USPTO challenging a pending trademark application. It provides evidence and arguments for why the application should be refused registration based on specific legal grounds.
How do you write a Letter of Protest?
To write an effective Letter of Protest, identify clear grounds for refusal, gather relevant evidence, structure your arguments logically, and submit everything through the proper USPTO channels with an itemized index of evidence.
What is the purpose of the Letter of Protest?
The purpose is to provide the USPTO examining attorney with evidence and arguments that support refusing registration of a trademark application that may conflict with existing rights or fail to meet registration requirements.
What are the reasons for issuing a Letter of Protest?
Common reasons include likelihood of confusion with existing trademarks, descriptiveness or genericness of the proposed mark, prior registrations or common law rights, and other registrability issues under trademark law.
How do you write a good protest letter?
A good protest letter clearly identifies the grounds for refusal, provides relevant evidence, uses persuasive but professional language, follows USPTO formatting requirements, and includes a proper itemized index of supporting materials.
Conclusion
Crafting an effective Letter of Protest requires careful consideration of various factors, including relevant evidence, persuasive language, and trademark office procedures. By understanding the importance of a well-structured protest letter and the role of a trademark attorney, parties can increase their chances of a successful protest and protect their trademark rights.
Effective communication with the USPTO and avoiding common mistakes can also contribute to a successful outcome. Remember that letters of protest are just one tool in trademark enforcement, but they can be highly effective when used properly and supported by strong evidence.
If you need assistance with filing a Letter of Protest or defending against one, click here to set up a consultation with an experienced trademark attorney.
