1715.01(a) Issues Appropriate as Subjects of Letters of Protest

Appropriate subjects for letters of protest concern issues that the examining attorney has the authority and resources to pursue to a legal conclusion without further intervention by third parties. The following are examples of the most common areas of protest:

(1) A third party files an objection to the registration of a term because it is allegedly generic or descriptive. The objection must be accompanied by evidence of genericness or descriptiveness and an index listing each item of evidence. The evidence should be objective, independent, and factual evidence that the examining attorney may use to support the suggested refusal.
(2) A third party notifies the USPTO of the existence of a federally registered mark or prior-pending application and alleges that there is a likelihood of confusion between this mark and the mark in the application that is the subject of the letter of protest. If the goods or services are not identical, the letter of protest must be accompanied by evidence showing the relatedness of the goods or services and an index listing each item of evidence.
(3) A third party files a request that prosecution of an application be suspended because of pending litigation claiming infringement based on the applicant’s use of the applied-for mark. The litigation must be specifically identified and a copy of the relevant pleadings must be enclosed. The litigation must involve a federally registered mark or prior-pending application of the protestor, and the protestor must allege that there is a likelihood of confusion between this mark and the mark in the application that is the subject of the letter of protest. Normally, a court proceeding is not considered relevant to the registrability of a mark unless the remedy requested in the proceeding is cancellation, abandonment, or amendment of the application that is the subject of the letter of protest, or enjoinment from using the protested mark in commerce.
(4) A third party notifies the USPTO that registered marks are being used inappropriately in identifications of goods and services, mark descriptions, or other application data fields for particular applications. (See TMEP §1402.09.)
(5) A third party notifies the USPTO that the specimens of use in the protested application are not in use in commerce, for example, they have been digitally altered or feature an image that is used by third parties without the mark in question or an image that appears in multiple prior registrations or applications all bearing different marks.
(6) A third party notifies the USPTO of the existence of a subsequently filed U.S. application and alleges that the application contains a proper claim of priority under §44(d) to which the third party is entitled and that there is a likelihood of confusion between its mark and the mark in a prior-filed application that is the subject of the letter of protest. See TMEP §§1003.05 and 1904.01(e).
(7) A third party notifies the USPTO of the serial number of an application filed under §66(a) with an earlier filing date or a priority claim to which the third party is entitled and that there is a likelihood of confusion between its mark and the mark in the application that is the subject of the letter of protest, even if the §66(a) application was not entered into the Trademark database at the time the application that is the subject of the letter of protest was examined. See TMEP §§1904.01(b) and 1904.01(e).
(8) A third party notifies the USPTO that the foreign application relied upon as the basis for a claim of priority under §44(d) is not the first application filed in a treaty country and provides evidence of the existence of an earlier-filed foreign registration or pending foreign application. See TMEP §1003.01.