An underutilized tool in the trademark process is the “Letter of Protest.” When an application is pending that some other party believes should be refused by the USPTO – most often because of a conflict with a registered trademark under Section 2(d) of the Trademark Act or because it is descriptive or generic – the outside party may file a Letter of Protest with the Comissioner’s office requesting that the issue be brought to the attention of the Examiner responsible for the pending application.
This is a great tool because, if successful, it is substantially cheaper than the Opposition or Cancellation process. And because, if successful, it blocks the application sooner than the opportunity to file an Opposition of Cancellation.
See below for a sample (redacted of course) of an actual Letter of Protest. The letter itself is fairly brief and to the point. It is not proper to make detailed arguments as to why the mark is confusingly similar to a registered mark or why the mark is descriptive or generic. The letter should instead just point the USPTO to the evidence or records that it believes should be considered in order to reach the conclusion.
Of course, sometimes use of the mark by the applicant is just as important as the application – and a Letter of Protest has no direct effect on the usage. But in addition to blocking the application if it is successful, the Letter of Protest can send a signal to the Applicant that the outside party is very aware of the Applicant and is monitoring the trademark carefully.
Here are excerpts from the USPTO’s detailed information of Letters of Protest from the Trademark Manual of Examining Procedure (TMEP):
1715 Letters of Protest in Pending Applications
A letter of protest is an informal procedure created by and existing at the discretion of the USPTO, whereby third parties may bring to the attention of the USPTO evidence bearing on the registrability of a mark.
Letters of protest are reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy (“Deputy Commissioner”) to determine whether the submitted information should be given to the examining attorney for consideration. To preserve the integrity and objectivity of the ex parte examination process, the letter of protest never becomes part of the application file and the Deputy Commissioner acts on the letter of protest without consulting with the examining attorney. The Deputy Commissioner considers only the record in the application and the evidence submitted by the protestor. BPJ Enterprises, 7 USPQ2d at 1378.
The Deputy Commissioner will grant a letter of protest filed before publication where it is determined that the evidence is relevant and may support any reasonable ground for refusal appropriate in ex parte examination.
1715.01 Appropriate and Inappropriate Subjects to be Raised in Letter of Protest
Adversarial arguments in letters of protest are not sent to the examining attorney. These objections to registration should be made in an opposition proceeding after publication or, in the case of the Supplemental Register, a cancellation proceeding after registration. The letter of protest procedure may not be used to circumvent the requirements for filing an opposition. The USPTO also denies letters of protest that do not include factual, objective evidence.
1715.01(a) Issues Appropriate as Subject of Letter of Protest
Appropriate subjects for letters of protest concern issues that the examining attorney has the authority and resources to pursue to a legal conclusion without further intervention by third parties. The following are examples of the most common areas of protest:
(1) A third party files an objection to the registration of a term because it is allegedly generic or descriptive. The objection must be accompanied by evidence of genericness or descriptiveness.
(2) A third party notifies the USPTO of the existence of a federally registered mark or prior-pending application and alleges that there is a likelihood of confusion between this mark and the mark in the application that is the subject of the letter of protest.
(3) A third party files a request that prosecution of an application be suspended because of pending litigation claiming infringement based on the applicant’s use of the applied-for mark.
(4) Registered marks are being used inappropriately in identifications of goods and services for particular applications. (See TMEP §1402.09.)
(5) A third party notifies the USPTO of the existence of a subsequently filed U.S. application and alleges that the application contains a proper claim of priority under §44(d) to which the third party is entitled and that there is a likelihood of confusion between its mark and the mark in a prior-filed application that is the subject of the letter of protest. See TMEP §§1003.05 and 1904.01(e).
For more details from the USPTO, see also Examination Guide 4-08 LETTERS OF PROTEST IN PENDING TRADEMARK APPLICATIONS Issued November 21, 2008
For an interesting discussion of how a letter of protest may have been used in a recent dispute, see DuetsBlog: Chick-fil-A Goes Stealth in “Eat More Kale” Trademark Dispute?