1207.06    Letter of Protest Evidence

A third party that has objective evidence bearing upon the registrability of a mark in a pending application may bring such evidence to the attention of the Office by filing, with the Office of the Deputy Commissioner for Trademark Examination Policy, a "letter of protest" that complies with the requirements of 37 C.F.R. § 2.149. [ Note 1.] The Deputy Commissioner will determine if the submission complies with the requirements of Trademark Rule 2.149 and whether any submitted evidence should be included in the application record for consideration by the examining attorney. See TBMP § 215. During prosecution, evidence included in the application record as a result of the letter of protest procedure and relied upon by the Examining Attorney or submitted with any Office action will be considered by the Board as evidence of record. [ Note 2.] If the examining attorney issues an Office action that includes any materials submitted with the letter of protest, that material becomes part of the record of the application for appeal. See TBMP § 1207.06.

Proceedings in an ex parte appeal will not be suspended pending determination by the Deputy Commissioner of a letter of protest. However, if the Deputy Commissioner determines that the letter of protest submission complies with the requirements of Rule 2.149 and includes submitted evidence in the application record, and the examining attorney wishes to rely on the evidence to support the appealed refusal of registration and have it made of record in the appeal, the examining attorney may file a written request with the Board, pursuant to 37 C.F.R. § 2.142(d)(1), to suspend the appeal and remand the application for further examination. See TBMP § 1207.02 for information concerning a request for remand for additional evidence.

The request must be filed prior to the rendering of the Board’s final decision on the appeal, and must be accompanied by the additional evidence included in the record as a result of the letter of protest procedure that is sought to be relied upon. See TBMP § 1207.02. In addition, the request must include a showing of good cause therefor, in the same manner as any other request to remand for additional evidence. See TBMP § 1207.02 for information concerning good cause for a remand for additional evidence.

Evidentiary value of material submitted by a third party through the letter of protest procedure will depend on whether it meets evidentiary requirements for authentication or foundation, identified as to nature or source. [ Note 3.]

NOTES:

 1.   See TMEP § 1715 et seq.

 2.   See In re International Watchman, Inc., 2021 USPQ2d 1171, at *2 n.2 (TTAB 2021) ("To be clear, only the evidence submitted with the Letter of Protest Memorandum and relied upon by the Examining Attorney is part of the record."); In re Information Builders Inc., 2020 USPQ2d 10444, at *5 n.11 (TTAB 2020) (evidence submitted with the Letter of Protest Memorandum and relied upon by the examining attorney was properly of record), appeal dismissed, No. 20-1979 (Oct. 20, 2020).

 3.   See In re Information Builders Inc., 2020 USPQ2d 10444, at *5 n.11 (TTAB 2020) ("…the evidence submitted with the Letter of Protest Memorandum does not carry any more weight than the other evidence submitted during prosecution. … we have considered each piece of evidence, including the evidence submitted with the Letter of Protest Memorandum, for whatever probative value it merits."), appeal dismissed, No. 20-1979 (Oct. 20, 2020); In re Urbano, 51 USPQ2d 1776, 1778-79 and 1778 n.5 (TTAB 1999) (documents submitted in connection with the letter of protest were of limited evidentiary value because no affidavits or other evidence establishing foundation, and no information establishing authenticity or source).