The Dos and Don’ts of Letters of Protest

We think letters of protest are so great that we wrote our very first blog post about them.

You might remember from Tore DeBella’s post that we often file letters of protest in an attempt to persuade the U.S. Patent and Trademark Office to refuse registration of third-party trademark applications.  Such letters can help delay or even avoid having to file costly oppositions – if you follow the rules, that is.  Some highlights of the rules are as follows.

Despite its adversarial title, a letter of protest should contain only factual evidence so that it doesn’t compromise the objectivity of the USPTO’s examination process.  To that end, the evidence attached to a letter of protest should not identify the trademark owner who filed the letter of protest.  (To be clear, the owner’s name is included in the letter itself.  Generally, however, only the attached evidence is forwarded to the USPTO Examining Attorney for his or her consideration.)  The USPTO also considers irrelevant prior use of a mark, actual instances of consumer confusion, and ownership of unregistered marks – this evidence is better suited for an opposition proceeding.

One of the most common types of letters of protest asks the USPTO to refuse registration on the ground of likelihood of confusion with an existing registration or earlier-filed application.

Let’s say a trademark owner notices that a mark in a recently-filed application is confusingly similar to the owner’s previously-applied-for or registered mark.  If both parties’ applications/registrations cover identical products or services, your letter of protest evidence could consist of the serial or registration number of the earlier application or registration.  Easy as that!

If the parties’ applications/registrations cover related products or services, the USPTO requires the trademark owner to show that the products or services are indeed related.  One way to show relatedness is to attach copies of third-party registrations based on “use in commerce” that encompass both parties’ products and services within the same registration.

Finally, when it comes to letters of protest, less is more.  We mean it:  the USPTO may deny a letter if it’s too long!  Include only the most relevant evidence, i.e., no more than 10 to 15 examples.  In rare cases when there is a good reason to submit more than 75 pages of evidence, the USPTO requires trademark owners to include an index to help the USPTO parse the evidence.

This entry was posted in Letters of Protest and tagged by Kelly Horein.
Kelly Horein

About Kelly Horein

Kelly M. Horein is an associate on the Trademarks team of the firm’s Intellectual Property Practice Group. Kelly’s practice encompasses all aspects of brand management, including domestic and international trademark clearance, registration, and enforcement. When litigation is necessary, Kelly assists clients with disputes, including trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, and trademark litigation in federal court. In addition, Kelly prepares and negotiates intellectual property agreements, counsels businesses on website development and social media issues, and assists them with assessing product packaging for compliance.