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 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.