1715.04 Information for Parties Filing Letter of Protest
Third parties who object to the registration of a mark in a pending application must never contact an examining attorney directly, either by telephone or in writing. Instead, they may submit a written request to the USPTO entitled "LETTER OF PROTEST." The letter of protest should include only a simple statement of the proposed legal grounds for refusing registration or issuing a requirement, with succinct, factual, objective evidence to support the refusal or requirement, and should not include arguments.
Because letters of protest are not part of the official application record, they must be properly designated and submitted to the USPTO. In order to ensure their proper routing and processing, the Office recommends that letters of protest be filed electronically via the Trademark Electronic Application System ("TEAS"). A separate letter of protest, including relevant evidence, must be filed for each individual application that is being protested. See TMEP §1715.04(a), (b) regarding the nature and format of evidence to be included with a Letter of Protest. In TEAS, the Letter of Protest form can be accessed by clicking on the link entitled "Petition Forms" at http://www.uspto.gov/trademarks/teas/. Otherwise, letters of protest should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy to the following fax number: 571-273-0032. This is the only fax number that may be used. Letters of protest may not be submitted by e-mail. Failure to submit the letter of protest properly may result in it being considered untimely.
Letters of protest with significant amounts of evidence may be sent via the United States Postal Service as first class mail, and addressed as follows:
Letter of Protest
ATTN: Deputy Commissioner for Trademark Examination Policy
600 Dulany Street
Alexandria, VA 22314-5793
Duplicate copies of letters of protest regarding the same application should not be sent (e.g., once electronically and then by mail or fax). Submission of duplicate documents can delay processing.
Submissions relating to a letter of protest, including requests for copies of letters of protest ( see TMEP §1715.05), should not include a request for a return receipt. If a protestor hand delivers the letter of protest or uses a private courier service, the letter of protest must be delivered to the attention of the Deputy Commissioner for Trademark Examination Policy at the Trademark Assistance Center, James Madison Building - East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, and be clearly identified as a letter of protest.
A protestor will always receive a response from the Deputy Commissioner accepting, denying, or holding moot the letter of protest, and should generally receive the response within 60 days of filing the letter. The protestor should monitor the application status by checking the TSDR database at http://tsdr.uspto.gov/ to determine whether an action accepting the letter of protest has been taken. This information will be in the public record only if the letter of protest is accepted. If a protestor has not received a response within six months of submitting a letter of protest, the protestor should contact the Petitions Office to confirm receipt of the letter of protest.
Protestors should continue to monitor the status of the application being protested because the application may be approved for publication, republication, or issuance of a registration even after a letter of protest is accepted. Ongoing monitoring will ensure protestors the opportunity to take other action (such as filing a notice of opposition) if the refusal or requirement raised as a result of the evidence referred by the letter of protest procedure is successfully overcome by the applicant. A protestor may file a second letter of protest after publication only if a substantially different basis for filing the letter of protest is raised or significant additional evidence is provided that clearly establishes a prima facie case for refusal of registration.
1715.04(a) Types of Evidence Appropriate for Letter of Protest
If the letter of protest is accepted, only evidence relevant to examination of the mark, or the registration numbers or pending application serial numbers raised as potential bars to registration, are forwarded to the examining attorney. If such evidence is not included, the letter of protest will be denied. See TMEP §1715.04(b) regarding the amount and format of evidence for letters of protest.
Note that a letter of protest should not include information or evidence concerning prior use, actual confusion, or fraudulent activity. These are not appropriate grounds for refusing registration during ex parte examination and must be addressed in an inter partes proceeding before the Trademark Trial and Appeal Board or a civil court.
The type of evidence relevant to the examination of the mark depends upon the nature of the objection raised. For example, if an objection is filed on the basis that a mark, or portion of a mark, is descriptive or generic, the protestor must submit factual, objective evidence, such as descriptive or generic use by others or excerpts from the dictionary showing the meaning of the mark. Merely submitting a list of web sites is not sufficient, and a letter of protest that only includes such a list will be denied. If third-party registrations are offered to show that the mark or a portion of the mark is descriptive, generic, or so commonly used that the public will look to other elements to distinguish the source of the goods or services, a mere list of the registrations or copy of a search report is not proper evidence of such registrations. Rather, copies of the registrations or the electronic equivalent thereof (i.e., printouts or electronic copies of the registrations taken from the electronic Trademark database of the USPTO) must be submitted. See TMEP §1207.01(d)(iii).
Generally, if an objection is based on a likelihood of confusion with existing federally registered marks or prior pending applications, and the goods and/or services are identical, third parties need only submit the relevant registration or application serial number(s). If the goods and/or services are not identical, evidence of the relatedness of the goods and/or services must be included or the letter of protest generally will be denied. Such evidence may include advertisements showing that the relevant goods/services are advertised together or sold by the same manufacturer or copies of registrations showing that such goods/services emanate from the same source. Note that a list of registration numbers, a chart containing the registration numbers and identified goods/services, or a copy of a search report is not proper evidence to show the relatedness of the goods or services in the registrations. Rather, copies of the registrations or the electronic equivalent thereof (i.e., printouts or electronic copies of the registrations taken from the electronic database of the USPTO) must be submitted. However, third-party registrations not based on use in commerce have little, if any, persuasive value and generally will not be forwarded to the examining attorney for consideration of the relatedness of the goods and services. See TMEP §1207.01(d)(iii). In addition, where a protestor wants to establish that its goods or services are related to those in the application(s) for which it is submitting the letter of protest, such evidence must pertain to the goods or services identified in the application. Evidence regarding how the protestor is using its mark for goods or services not identified in the registration or prior-pending application that form the basis for the letter of protest, or information regarding how the applicant is using or may use its mark in commerce in the future that varies from the scope of the identification in the application, is inappropriate and will not be forwarded to the examining attorney.
1715.04(b) Amount and Format of Evidence for Letter of Protest
The letter of protest process is intended to provide an opportunity for the protestor to efficiently and effectively point the Office to relevant evidence in support of the proposed legal grounds for refusing registration identified in the letter of protest. It is inappropriate for the protestor to "dump" evidence and leave it to the Office to figure out its possible relevance. Therefore, the evidence submitted with the letter of protest should be succinct, not duplicative, and culled down to the most relevant evidence. For example, where numerous examples of relevant third-party registrations or web pages exist, it is unnecessary to provide them all; generally the most relevant ten to fifteen examples should be submitted. More than fifteen examples generally will be considered duplicative and unnecessary and may result in the letter of protest being denied without further consideration on the merits.
If the protestor seeks to bring multiple registration or application serial numbers to the attention of the examining attorney, a chart listing the registration or serial numbers, the marks, and the goods and/or services must be included. Such a chart must be provided on plain paper (not letterhead) or a PDF file with a plain background. To maintain the integrity of the ex parte examination process, the chart must not identify the protestor or its representatives or contain any arguments or persuasive language.
It should be a rare situation in which more than 75 pages of evidence is necessary to support the proposed legal grounds for refusal, and a letter of protest accompanied by more than 75 pages of evidence will be denied without consideration on the merits unless it complies with the requirements described below. First, the letter of protest must contain a detailed explanation why more than 75 pages of evidence is necessary. Second, the letter of protest must be accompanied by a separate itemized index.
The index must be provided on plain paper (not letterhead), or a PDF file with a plain background, and contain a concise factual description of each category or form of evidence included. If any item of evidence attached to the letter of protest consists of multiple pages, the index must specifically identify the page on which the evidence appears and must highlight the relevant portion of the page. To maintain the integrity of the ex parte examination process, the index must not identify the protestor or its representatives or contain any arguments or persuasive language.
Although an index is required for evidentiary submissions exceeding 75 pages, the Office strongly encourages the use of an index in all letters of protest that contain multiple forms of evidence as it aids in the consideration of the details of all the evidence provided by the protestor.