1715.05(b) Amount and Format of Evidence for Letter of Protest
The letter of protest should include only a simple statement of the proposed legal ground(s) for refusing registration or issuing a requirement, together with succinct, factual, objective evidence to support the refusal or requirement. It should not include arguments. The letter of protest process is intended to provide an opportunity for the protestor to efficiently and effectively provide 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 USPTO to determine its possible relevance. Therefore, evidence submitted with the letter of protest should be succinct, not duplicative, and be limited to the most relevant evidence. A separate itemized index that does not identify the protestor or its representatives or contain legal argument is required for all evidentiary submissions. 37 C.F.R. §2.149(f)(3). See infra, this section, for the requirements of an evidentiary index.
When the basis of the letter of protest is the existence of federally registered marks, or prior-pending applications, with which the protestor alleges that there is, or would be, a likelihood of confusion with the mark in the protested application, the protestor should not identify more than the five most relevant registrations or applications that could form a basis for refusal. If the protestor identifies more than five registrations or applications, only the first five identified registrations or applications will be considered.
Where numerous examples of third-party registrations or web pages exist regarding the relatedness of the goods and/or services, or to support any other refusal, it is not necessary to provide them all. The evidence of third-party registrations and/or use submitted with the letter of protest should be limited to the most relevant examples. Copies of third-party registrations must come from the electronic records of the USPTO and show the current status and title of the registration. 37 C.F.R. §2.149(f)(4)(i). When submitting web pages from the Internet as evidence, the web page must include the date the web page was published or accessed and the complete URL address of the web page. 37 C.F.R. §2.149(f)(4)(ii). See In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1593 (TTAB 2018); In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1586 (TTAB 2018); Safer Inc. v. OMS Inv. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010). Similarly, scanned copies of pages from printed books or articles must identify the publication name and the date of publication. 37 C.F.R. §2.149(f)(4)(iii). The URL address and date of URL access, or publication name and date of publication, must be on the evidence itself or on a separate page attached to the letter of protest. This information should not be contained in the letter of protest submission form since the form itself is not forwarded to the examining attorney. It is preferable for each piece of evidence to appear on its own page. If a page contains multiple items of evidence and some of the information on the page is irrelevant, the page will not be forwarded to the examining attorney.
It should be a rare situation in which more than 10 items of evidence in support of a specified ground of refusal and more than 75 total pages of evidence is necessary to support the proposed legal grounds for refusal. Therefore, a letter of protest accompanied by more than 10 items of evidence in support of a specified ground of refusal or more than 75 total pages of evidence will not be considered unless it includes a detailed and sufficient explanation establishing the special circumstances that necessitate providing the additional evidence. 37 C.F.R. §2.149(f)(3)(i).
The index must be provided as a separate electronic attachment to the TEAS Letter of Protest form, and contain a concise factual description of each category or form of evidence included. Id. 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 relevant information appears within the item of evidence. 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 use subjective terms to identify or describe the evidence. 37 C.F.R. §2.149(f)(3)