1715.04 Letters of Protest Filed on the Date of Publication or After Publication
1715.04(a) Standard of Review for Letters of Protest Filed on the Date of Publication or After Publication
When a letter of protest filed on the date of publication or within 30 days after the date of publication complies with the requirements of Rule 2.149, the Deputy Commissioner will determine whether the evidence establishes a prima facie case for refusal of registration on the identified ground(s), such that failure to issue a refusal or to make a requirement would likely result in issuance of a registration in violation of the Trademark Act or applicable rules. 37 C.F.R. §2.149(d)(2). In re BPJ Enters. Ltd., 7 USPQ2d 1375, 1379 (Comm’r Pats. 1988). See TMEP §1715.04 regarding the nature of relevant evidence.
1715.04(b) Jurisdiction of Application After Publication
As a general rule, after publication, the examining attorney does not have jurisdiction to act on an application. TMEP §1504.04. Therefore, if a letter of protest filed after publication and before issuance of the registration or notice of allowance complies with the requirements of Rule 2.149 and the Deputy Commissioner determines that the submitted evidence will be included in the application record for consideration by the examining attorney, the Commissioner for Trademarks will restore jurisdiction of the application to the examining attorney pursuant to the authority delegated by the Director. The Commissioner will also restore jurisdiction under such circumstances when extension of time to file an opposition has been filed. However, if an opposition has been instituted, the Board has jurisdiction over the application and the Commissioner will request that the Board restore jurisdiction to the examining attorney. TMEP §1504.02.
If the letter of protest concerns a mark in an intent-to-use application where a notice of allowance has issued, the examining attorney has jurisdiction. 37 C.F.R. §2.84(a). If the Deputy Commissioner determines that the evidence submitted with the letter of protest should be included in the application record and a statement of use has not been filed, the USPTO will cancel the notice of allowance and refund any fees paid for requests for an extension of time to file a statement of use. TMEP §1106.03. Furthermore, if a statement of use has been filed, the examining attorney has jurisdiction and must review the statement of use and include any issues relevant to the statement of use in the Office action resulting from the letter of protest. If an Office action regarding the statement of use has already issued, the examining attorney must issue a supplemental action regarding the refusals or requirements resulting from the evidence included in the record and incorporating by reference or restating any other outstanding refusals or requirements.
1715.04(c) Action by Examining Attorney After Publication
If the Deputy Commissioner determines that evidence submitted with a letter of protest filed on the date of publication or after publication establishes a prima facie case for refusal on the identified ground(s) and should be included in the record of the protested application, the examining attorney must issue the refusal or requirement, except in unusual circumstances. The examining attorney must inform the applicant that such evidence was entered after submission of a letter of protest. If the notice of allowance was cancelled, the examining attorney must so inform the applicant. Before issuing the Office action with the refusal or requirement, the examining attorney must have the action reviewed by his or her managing attorney.
However, the inclusion of evidence submitted with the letter of protest into the application record is not a final determination by the USPTO that registration must be refused. In unusual circumstances, the examining attorney may discover additional evidence that would justify approval of the application for registration after acceptance of a letter of protest, or the applicant may overcome the refusal or satisfy the requirement. In such a case, if the examining attorney later determines that the mark should be approved for issuance of a registration or notice of allowance, the examining attorney must obtain permission from the Office of the Deputy Commissioner for Trademark Examination Policy before approving the application for issue. After conferring with that Office, an appropriate Note to the File must be entered in the record.
1715.04(d) Letter of Protest Does Not Stay or Extend Opposition Period
Filing a letter of protest does not stay or extend the opposition period. 37 C.F.R. §2.149(e). Therefore, a party who files a letter of protest after publication should also file a timely request(s) for extension of time to oppose under 15 U.S.C. §1063 with the Trademark Trial and Appeal Board. See TBMP §215 for further information. The Board will not suspend a potential opposer’s time to file a notice of opposition because a letter of protest has been filed. See notice at 68 Fed. Reg. 55748, 55760 (Sept. 26, 2003).