1715.02 Timely Filing of Letter of Protest
The most appropriate time for filing a letter of protest is before publication of a mark, because the purpose of the letter of protest is to assist the USPTO in the examination of an application for registration by bringing to its attention evidence that may support a refusal of registration. Because applications that will issue on the Supplemental Register are not published for opposition, letters of protest regarding such applications must be submitted as soon as possible after the filing of the application.
Letters of protest filed more than 30 days after publication are untimely. 37 C.F.R §2.149(c). See also In re BPJ Enter's. Ltd., 7 USPQ2d 1375, 1378 (Comm’r Pats. 1988). This applies to all applications, including intent-to-use applications under 15 U.S.C §1051(b). In re G. Heileman Brewing Co., Inc., 34 USPQ2d 1476, 1478 (Comm’r Pats. 1994).
If a letter of protest is filed against an application that is the subject of a request for extension of protection of an international registration under Trademark Act §66(a), in addition to meeting the timeliness standards set forth above for all letters of protest, it must also satisfy the timeliness requirements for refusals under Trademark Act §68(c) and Article 5 of the Madrid Protocol. In essence, a letter of protest against a §66(a) application must be filed before the 18-month deadline after the application was transmitted to the USPTO from the IB. A letter of protest is untimely and will not be considered if it is more than 18 months from the date the IB transmitted the protested application to the USPTO. 37 C.F.R §2.149(g)(3). See TMEP §1904.03(a).
Filing a request for extension of time to oppose does not extend the 30-day deadline for filing a letter of protest.
A protestor may file a petition to the Director under 37 C.F.R §§2.146(a)(5) and 2.148 to waive 37 C.F.R §2.149(c) so that an untimely letter of protest may be considered. However, the Director will waive a rule only in an extraordinary situation, where justice requires, and no other party is injured. See TMEP §1708. For example, an extraordinary situation that would warrant waiver of the timeliness requirement for a letter of protest filed more than 30 days after publication may be established upon a showing that all of the evidence provided in the letter of protest was not in existence prior to publication. However, the evidence must establish a prima facie case for refusal.
The letter of protest procedure applies only to pending applications. A letter of protest will be moot if the mark registers before a determination on the letter is made. Once the mark has registered, the protestor’s remedy is to file a petition to cancel with the Board.