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.
Need to protest a trademark application? Contact US patent and trademark attorney Vic Lin at 949-223-9623 or email vlin@icaplaw.com to explore how we can help you protect your trademark rights.
When should a letter of protest be filed?
It is best to file a letter of protest as early as possible, and preferably before a trademark application is approved for publication. Once the 30-day opposition window has already been scheduled, then a potential challenger might as well wait for the publication period to oppose the mark.
A letter of protest filed during the opposition period 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 trademark application protest?
A proper letter of protest must meet the following requirements:
- file online using the TEAS form
- include a correspondence and email address for USPTO to send the protest decision
- clearly identify the grounds for refusing registration of the mark
- (highly recommended) all pieces of evidence along with a summary of the evidence
When more than 10 pieces of evidence are submitted, a separate index of the evidence should be attached.
What issues can be raised in a protest of a trademark application?
Here’s an exemplary list of appropriate subjects:
- generic or merely 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)]
- the protested trademark is not in federally lawful use in commerce;
- the application includes a suspicious submission that violates USPTO rules (e.g., domicile address is improper, email address for a party subject to an Order for Sanctions, unauthorized signatory, etc.)
- the mark fails to function as a source identifier
See TMEP 1715.01(a).
Here’s an exemplary list of inappropriate subjects:
- earlier common-law trademark 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 the examination of the mark should be submitted. The letter of protest itself will not be forwarded 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.
What should not be included in a trademark application protest?
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.
