215 Effect of Letter of Protest
A third party that has knowledge of facts bearing upon the registrability of a mark in a pending application may bring such information to the attention of the Office by filing, with the Office of the Deputy Commissioner for Trademark Examination Policy ("Deputy Commissioner"), a "letter of protest," that is, a letter that recites the facts and is accompanied by supporting evidence. [ Note 1.] The Deputy Commissioner will determine whether the letter of protest should be "granted," that is, whether the information or evidence should be given to the examining attorney for consideration. [ Note 2.]
A letter of protest may be filed either before or after publication of the subject mark for opposition. However, a letter of protest filed after publication ordinarily must be filed within thirty days after publication in order to be considered timely, and will usually be denied as untimely if filed more than thirty days after publication. [ Note 3.] In the case of a published application that is not the subject of an opposition, if the letter of protest is granted, jurisdiction over the application will be restored to the examining attorney to take appropriate action on the letter of protest. If the application is the subject of an opposition, any request for restoration of jurisdiction and remand of the application to the examining attorney must be directed to the Board. [ Note 4.]
The filing of a letter of protest, whether before or after publication of the mark, does not stay the time for filing an opposition or an extension of time to oppose the subject mark. [ Note 5.] If a party files a letter of protest before publication but the subject mark still publishes for opposition, then the party must timely file a request for extension of time to oppose, if it wishes to preserve its right to oppose. Similarly, if a party that files a letter of protest after publication wishes to preserve its right to oppose, it too must file a timely request for an extension of time to oppose. [ Note 6.] Regardless of when the letter of protest was filed, if the subject mark has been published for opposition, the party may choose to file a notice of opposition instead of a request for extension of time to oppose.
If a potential opposer indicates, in a first or a subsequent request for an extension of time to oppose, that it has filed a letter of protest (not yet determined by the Deputy Commissioner) with respect to the subject mark, such filing will constitute good cause for extensions of time to oppose aggregating up to 120 days from the date of publication of the mark. However, the filing will not constitute extraordinary circumstances justifying an extension of time beyond 120 days from publication. The Board will not suspend the time for filing an opposition or subsequent extension pending consideration of a letter of protest. See TBMP § 209.01.
If a potential opposer indicates, in a first or a subsequent request for an extension of time to oppose, that a different party has filed a letter of protest (not yet determined by the Deputy Commissioner), with respect to a mark that is the subject of the potential opposer’s request for an extension of time to oppose, the filing of the letter of protest will not be considered by the Board to constitute good cause for the granting of an extension to the potential opposer. In other words, a potential opposer may not rely on the filing of a letter of protest by a different party to establish good cause for its own extension of time to oppose.
Typically, a letter of protest is filed and granted before the mark is published. In such case, the examining attorney retains jurisdiction over the application and decides whether to issue a refusal based on the evidence submitted with the letter of protest. [ Note 7.] Sometimes, a letter of protest is filed before the mark has been published for opposition but the Deputy Commissioner does not grant the letter of protest until after the mark has been published. In such case, if the mark has not been opposed, and the examining attorney determines that a refusal or requirement must be made based on the information contained in the letter of protest, the examining attorney must request that the Deputy Commissioner restore jurisdiction so that the examining attorney may take action on the application. [ Note 8.] If the mark has been opposed, jurisdiction rests with the Board, and therefore the examining attorney must request that the Board remand the application for the purpose of making a refusal or requirement based on the relevant evidence submitted with the letter of protest. [ Note 9.] On the other hand, if a letter of protest is filed after the mark has been published, and the Deputy Commissioner grants the letter of protest, then regardless of whether an extension of time request to oppose the application is pending, the Deputy Commissioner will restore jurisdiction to the examining attorney for the purpose of making a refusal or requirement based on the relevant evidence submitted with the letter of protest. [ Note 10.] If the mark is the subject of an opposition when the Deputy Commissioner grants a letter of protest, jurisdiction rests with the Board, and therefore the examining attorney must request that the Board remand the application for the purpose of making a refusal or requirement based on the relevant evidence submitted with the letter of protest. [ Note 11.]
If the Deputy Commissioner grants a letter of protest filed with respect to an application that is the subject of a first or subsequent request for an extension of time to oppose, the Board may address the consequences of the grant in any order on any further request to extend, or when instituting an opposition.
Examples are described below:
Grant of Letter of Protest During Extension of Time:
Sometimes, when an extension of time to oppose is granted, a letter of protest also has been granted, but jurisdiction over the application may or may not have been restored to the examining attorney, as discussed above. If jurisdiction has not been restored, then the question of registrability is not before the examining attorney and the opposition period, and any request for extension of time to oppose or notice of opposition which may be filed, will be processed as usual. If jurisdiction has been restored and the examining attorney has issued an Office action asserting a refusal or a requirement, and if a well-taken first or subsequent request for an extension of time to oppose is reviewed during this time, a Board administrative staff member may prepare an order notifying the potential opposer and applicant that the letter of protest has been granted, and jurisdiction over the application restored to the examining attorney who has issued an Office Action; and that neither the issuance of an action by the examining attorney nor the filing of a response and/or amendment by the applicant relieves the potential opposer of the responsibility of filing an opposition, or a further request for extension of time to oppose, prior to the expiration of the previous request. While the Board attempts to provide such information to the applicant and potential opposer in every instance in which a letter of protest has been granted, jurisdiction has been restored, and an office action has issued, if the Board fails to do so, the potential opposer is not excused from the noted responsibilities.
Grant of Letter of Protest During Opposition:
If a party files a timely opposition while a letter of protest is pending, but not yet determined by the Deputy Commissioner, the Board will institute the opposition as it normally would. If the letter of protest (filed before or after publication of the subject mark) subsequently is granted, the examining attorney may seek remand of the application from the Board. [ Note 12.] If the Board remands the application back to the examining attorney, the opposition will be suspended for as long as the question of registrability of the subject mark is before the examining attorney.
Please Note: A Trademark Act § 66(a) application may not be remanded under 37 C.F.R. § 2.130.
If a party files a timely opposition after a letter of protest has been granted and after jurisdiction has been restored to the examining attorney, the Board will normally institute and suspend the opposition until the registrability of the mark has been finally determined by the examining attorney. To ensure suspension under such circumstances, the opposer should concurrently, but in a filing separate from the notice of opposition, move to suspend the opposition, citing the restoration of jurisdiction as the reason for suspension, when filing the notice of opposition.
If an opposed application is abandoned by the applicant for non-response to an Office action issued after jurisdiction has been restored to the examining attorney, or if a refusal made by the examining attorney is upheld on appeal, judgment will not be entered against the applicant under 37 C.F.R. § 2.135. Instead, the Board may resume the suspended opposition, giving opposer time to indicate whether it wishes to go forward to obtain a determination on the merits or to have the opposition dismissed as moot. If, however, applicant files a written abandonment without the written consent of every adverse party, judgment will be entered against applicant under 37 C.F.R. § 2.135. See TBMP § 602.01.
If the examining attorney subsequently withdraws any refusal or requirement issued in regard to an opposed application in which jurisdiction had been restored to the examining attorney, or if any refusal of registration is reversed on appeal, the Board should be notified for resumption of the suspended opposition. Republication of a mark following restoration of jurisdiction should be very rare, but if the mark is republished, and if the change reflected in the republication is one that might have an effect upon the opposition, the Board will resume the opposition and issue an order notifying opposer and applicant of the republication. The Board will note the reason for republication; explain that the opposition will be determined on the basis of the application as amended; and allow the opposer time to indicate whether it wishes to proceed with the opposition against the amended application, or have the opposition dismissed as moot. If opposer chooses to go forward, appropriate dates will be reset.
NOTES:
1. TMEP § 1715. See In re Urbano, 51 USPQ2d 1776, 1778-79 n.5 (TTAB 1999) (letter of protest provided additional information to the examining attorney to support a refusal); In re BPJ Enterprises Ltd., 7 USPQ2d 1375, 1379 (Comm’r 1988) (if examining attorney did not consider issue raised in letter of protest and letter is supported by evidence that would support a refusal, it should be granted; letter reviewed under former standard asking whether letter presented "prima facie" evidence for refusal); In re Pohn, 3 USPQ2d 1700, 1703 (Comm’r 1987) (guidelines for timeliness of letter of protest).
2. See TMEP § 1715. For information concerning the standard applied by the Deputy Commissioner in determining whether a letter of protest should be granted, see TMEP § 1715.02 (Letter of Protest Filed Before Publication), and TMEP § 1715.03 (Letter of Protest Filed on the Date of Publication or After Publication).
3. TMEP § 1715.03(b) ("Letters of protest filed more than 30 days after publication are generally denied as untimely."). But compare Kohler Co. v. Honda Giken Kogyo K.K.,125 USPQ2d 1468, 1474 (TTAB 2017) (letter of protest granted four months after date of publication) with In re G. Heileman Brewing Co., 34 USPQ2d 1476, 1478 (Comm’r 1994) (letter of protest, filed more than a year after publication and accompanied by evidence of descriptiveness which was available 2 months prior to publication, was untimely); In re BPJ Enterprises Ltd., 7 USPQ2d 1375, 1379 (Comm’r 1988); In re Pohn, 3 USPQ2d 1700, 1703 (Comm’r 1987). Cf. National Cable Television Association Inc. v. American Cinema Editors Inc., 19 USPQ2d 1424 (Fed. Cir. 1991) (letter of protest filed after registration issued deemed "an ineffectual gesture").
4. TMEP § 1715.03(c) ("However, if an opposition has been instituted, the Board has jurisdiction over the application. TMEP § 1504.02. Therefore, upon request, the Board will generally restore jurisdiction and remand the application to the examining attorney"). See 37 C.F.R. § 2.130; TMEP § 1504.02.
5. TMEP § 1715.03(e); In re Pohn, 3 USPQ2d 1700, 1703 (Comm’r 1987).
6. See In re BPJ Enterprises Ltd., 7 USPQ2d 1375, 1377 (Comm’r 1988).
7. See TMEP § 1504.01. Accord, Sheetz of Delaware, Inc. v. Doctor's Associates Inc., 108 USPQ2d 1341 (TTAB 2013) (letter of protest determined during prosecution of application submitted as evidence by opposer during trial).
10. See TMEP § 1715.03(c).
11. See TMEP § 1715.03(c).
12. See 37 C.F.R. § 2.130; TMEP § 1715.03(c). See also TMEP § 1504.02.