Letter of Protest
Not every trademark that’s applied for is granted, and this is sometimes due to a letter of protest. Letters of protest can be sent to the U.S. Trademark Office order to prevent a trademark application from receiving federal registration.
Letters of protest are generally the first step and the least costly way to try to prevent a trademark application from registering. The average Deputy Commissioner response takes about 60 days.
What is a Letter of Protest?
Once a party files a trademark application, it can take between 90 and 120 days before it is reviewed by an examiner at the Trademark Office (USPTO). Once this occurs, the examining attorney will decide whether there’s a conflict with any prior trademarks that have been approved. As soon as a trademark application is filed, a letter of protest can be filed by outside parties to let the examiner know of any conflicting trademark.
By filing a letter of protest, the protestor is giving information that may otherwise be overlooked by the examining attorney. The number of trademark applications is steadily increasing, so it is possible that a pre-existing trademark could sometimes slip through the cracks. Letters of protest cannot be used to circumvent opposition proceedings. In fact, only evidence that doesn’t require additional third-party intervention can be submitted.
The following areas are the most frequent reasons for a letter of protest:
- The applied-for trademark is descriptive or generic in nature.
- Likelihood of confusion may exist between a pending application or registered trademark.
- Pending litigation exists claiming applicant’s current use is trademark infringement.
- Subsequent submitted application has priority and a likelihood of confusion
- False association with the protestor would be created if the application is approved.
Even when a letter of protest is accepted and sent to the examining attorney, it cannot unduly delay or compromise the objectivity and integrity of the review process. Additionally, the letter needs to be submitted during the pre-publication period. After the trademark has been published in the Principal Register and the 30-day opposition period has begun, a letter of protest will only be accepted if evidence shows that the publication of the trademark was a clear error by the USPTO.
Once the 30-day opposition period has expired, any letter of protest will typically be considered untimely and denied as will a notice of opposition. At this time other means of preventing use of a trademark – such as a trademark cancellation or a trademark cease and desist letter – will need to be utilized. Regardless of the timeline or specific circumstances, though, there is typically always a way to fight a trademark registration.
How to File a Letter of Protest
Letters of protest do not go directly to the examining attorney. The Office of the Deputy Commissioner for Trademark Examination Policy – also known as the Deputy Commissioner – will evaluate the letter and decide whether the information should be forwarded to the examiner.
Due to the nuances of dealing with a trademark infringement, we highly recommend that you hire a trademark attorney to handle a letter of protest. That said, to submit a letter of protest to the Deputy Commissioner, the following process should be adhered to:
- The letter of protest must be filed on the Letter of Protest page at the USPTO.
- The letter must include a physical correspondence address.
- The letter must address all concerns and clearly identify the reasons to refuse registration.
- A separate chart should be used if multiple registrations and pending applications exist.
If submitted correctly and with appropriate evidence, the Deputy Commissioner sends the information to the examining attorney. All evidence must be objective and factual. If inappropriate claims or evidence is submitted along with an otherwise acceptable letter, they will not be sent along with the factual information.
The letter itself is never included in the application file. The Deputy Commissioner also makes a decision without consultation with the examiner. Both these requirements are meant to maintain the objectivity and integrity of the trademark application review process.
Inappropriate Subject Matter
There are also several topics that will be ignored by the Deputy Commissioner and not forwarded to the examining attorney. A letter of protest simply isn’t the appropriate avenue for these problems.
Common-Law Trademark Use
Even if all other requirements are met, a letter of protest will not be accepted if it involves common-law use of a trademark. Even state registrations will not qualify. Any protest must be directly related to a pending application or a registration in the federal system.
Disputes of Ownership
There are numerous situations in which the ownership of a trademark may be in dispute. This is also an instance, though, which cannot be rectified via letter of protest. The proof required to make this determination is outside of the authority of reviewing examiners.
Commission of Fraud
If someone commits fraud when applying for their trademark through the USPTO, a notice of opposition or petition to cancel may be filed. As is the case with disputes of ownership, this is outside of the examining attorney’s purview. Fraudulent activity could include dishonest claims of first use or withholding relevant information in an application.
Letter of Protest Evidence
The letter of protest is your opportunity to explain why a trademark should be denied directly to the Deputy Commissioner. Once the letter is accepted, though, it’s important to realize that those arguments aren’t forwarded to the examining attorney. In fact, nothing from the actual letter is passed on. The Deputy Commissioner simply sends the examiner the relevant evidence.
The information submitted is either irrelevant or outside of the authority of the reviewing attorney. You can monitor the progress of your letter of protest at the Trademark Status and Document Retrieval website. If it shows as accepted on the website, it means at least some of your evidence was appropriate and forwarded to the examiner.
Letter of Protest Sample
A letter of protest seems straightforward at first glance. These letters are typically short and to the point, so any letter of protest sample will be succinct and often just a single page long. Here’s what you can expect to be in most professionally-written letters:
- Heading: Like most professional letters, you’ll need to include a heading in your protest letter. This should be directed to the Deputy Commissioner and provide their address. You’ll also need to list the serial number, mark, applicant’s name and filing date of the application you’re protesting.
- Introductory claim: The first paragraph in your letter of protest should summarize your overall claim. Is your protest related to a likelihood of confusion? This is where you will point out that fact.
- Primary claim: The remaining bulk of the letter will explain the rationale for denying the trademark application.
- Contact information: Even though it will be included in the Trademark Electronic Application System, concluding a letter of protest with the point of contact’s name and phone number is ideal.
Every letter of protest sample should include these vital pieces of information. Failure to do so could lead to the letter being rejected. Also, having the letter come from a trademark attorney will undoubtedly have more impact.
Letter of Protest Alternatives
Even if your concerns about potential trademark infringement are justified, your letter of protest won’t always be granted. Fortunately, there are still several options at your disposal. The following are the most common.
Cease and Desist Letter
As a first step with a trademark infringement matter, we always suggest that you have a trademark attorney send a cease and desist letter. This can be done in unison with a letter or protest or possibly in lieu of one. For more information, please see our trademark cease and desist letter page.
Notice of Opposition
Trademark opposition focuses on many of the same issues as a letter of protest. Unlike a letter of protest, though, it can be filed during the 30-day opposition period without special circumstances. After the notice is filed, the applicant will have 40 days to file an answer without abandoning their application.
Discovery, testimony, arguments and other processes similar to litigation will then occur before the TTAB. The number of filed oppositions has increased every year since at least 2016.
Petition to Cancel
If a trademark has already been granted, it’s too late to file a letter of protest or to file a notice of opposition. Trademark cancellation, however, is still an option. Petitions to cancel and letters of protest can target many of the same issues, but cancellation can be used in even more situations. If actual consumer confusion or fraud took place, for instance, the TTAB can step in once a cancellation request has been made.
There are several trademark issues that should ideally be dealt with through the USPTO and TTAB. There are some situations, however, when utilizing the federal court system is the only option. After a certain period of time, for instance, a petition to cancel based on likelihood of confusion is harder to obtain. In this event, trademark litigation might be your best recourse.
The TTAB also doesn’t handle issues related to financial compensation. If you’ve suffered financial loss or reputational damage due to someone using an infringing trademark, litigation is the only way to secure monetary relief.
If you are considering filing a letter of protest or need help with an infringement issue, please contact us today.