215 Effect of Letter of Protest
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 ("Deputy Commissioner"), 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 letter of protest 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. [ 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 must be filed within thirty days after publication in order to be considered timely. [ Note 3.] In the case of a published application that is not the subject of an opposition, if the Deputy Commissioner determines that the submission complies with the requirements of Trademark Rule 2.149 and submitted evidence will be included in the application record, jurisdiction over the application will be restored to the examining attorney to take appropriate action. This procedure applies regardless of whether a request for an extension of time to oppose the application is pending. If an opposition has been instituted, the Board has jurisdiction over the application and will restore jurisdiction to the examining attorney upon request. [ 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 of time to oppose 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 a determination whether submitted evidence should be included in the applicaiton record is made 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 included in the record. [ Note 7.] Sometimes, a letter of protest is filed before the mark has been published for opposition but the Deputy Commissioner does not review the submission 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 evidence included in the application record, jurisdiction will be restored to the examining attorney to take action on the application. [ Note 8.] In any case where an opposition has already been instituted when the Deputy Commissioner makes a determination to include evidence submitted with a letter of protest in the application record, jurisdiction rests with the Board, and therefore a request must be made to the Board to remand the application to the examining attorney to take a specific action. [ Note 9.]
If the Deputy Commissioner includes evidence submitted with a letter of protest in the record of 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 determination in any order on any further request to extend, or when instituting an opposition.
Examples are described below:
Determination Made on Letter of Protest During Extension of Time:
Sometimes, when an extension of time to oppose is granted, a determination also has been made to include evidence submitted with a letter of protest in the application record. 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 jurisdiction over the application was restored to the examining attorney who has issued an Office action as a result of evidence submitted with a letter of protest being included in the record; 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 the letter of protest procedure results in jurisdiction being restored to the examining attorney and issuance of an Office action, if the Board fails to do so, the potential opposer is not excused from the noted responsibilities.
Determination Made on Letter of Protest During Opposition:
If a party files a timely opposition while a letter of protest is pending review by the Deputy Commissioner, the Board will institute the opposition as it normally would. If the Deputy Commissioner subsequently determines that the letter of protest (filed before or after publication of the subject mark) is compliant and includes evidence in the application record, a request to remand the application to the examining attorney will be made to the Board. [ Note 10.] 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 determination has been made to include evidence submitted with a letter of protest in the application record 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:
2. See TMEP § 1715. For information concerning the standard applied by the Deputy Commissioner in determining whether evidence submitted with a letter of protest should be entered into the record, see TMEP § 1705.03 (Letter of Protest Filed Before Publication), and TMEP § 1705.04 (Letter of Protest Filed on the Date of Publication or After Publication).
3. 37 C.F.R. § 2.149(c), TMEP §1715.02("Letters of protest filed more than 30 days after publication are untimely.").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)and TMEP § 1715.04(b) . See also 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 submitted during prosecution of the application and later submitted under notice of reliance as evidence by opposer during trial).
10. See 37 C.F.R. § 2.130; TMEP § 1715.03(c). See also TMEP § 1504.02.