1715.05 Information for Parties Filing Letter of Protest
Third parties who object to the registration of a mark in a pending application must never directly contact an examining attorney in any way. Instead, they may submit evidence for consideration for inclusion in the record via the letter-of-protest procedure.
Letters of protest must be filed electronically via the Trademark Electronic Application System (TEAS) and must be accompanied by the fee required under 37 C.F.R §2.6. 37 C.F.R. §2.149(f). Letters of protest filed on paper will not be considered. A separate letter of protest, including relevant grounds and evidence, must be filed for each individual application that is being protested. 37 C.F.R. §2.149(b). See TMEP §§1715.04(a) and (b) regarding the nature and format of evidence to be included with a letter of protest.
The letter of protest must include an email address for receiving an acknowledgment of the submission and notification of whether the submission was determined to be compliant or noncompliant with the requirements of Rule 2.149. 37 C.F.R. §2.149(j). If the letter of protest does not comply with the requirements of Trademark Rule 2.149, the protestor may not amend the non-compliant submission. Id. Instead, the party may file another letter of protest that meets the requirements, provided the time period for filing has not closed. Id.
Generally, the protestor should expect to receive the notification within 60 days of filing the letter. The protestor should monitor the application status by checking the TSDR database at https://tsdr.uspto.gov to determine whether an action concerning the letter of protest has been taken. This information will be in the public record only if the letter of protest submission is compliant and evidence is entered into the application record. If a protestor has not received a response within two months of submitting a letter of protest, the protestor should contact the Petitions Office to confirm receipt of the letter of protest.
Protestors should continue to monitor the status of the application being protested because the application may be approved for publication, republication, or issuance of a registration even when the evidence submitted with a compliant letter of protest is included in the application record. Ongoing monitoring will ensure protestors the opportunity to take other action such as filing a notice of opposition.
1715.05(a) Types of Evidence Appropriate for Letter of Protest
If the letter of protest complies with the requirements of Rule 2.149, only the specified ground(s) for refusal and the provided evidence relevant to the ground(s) for refusal will be included in the application record for consideration by the examining attorney. 37 C.F.R. §2.149(h). See 37 C.F.R. §2.149(f),(g) and TMEP §1715.04(b) regarding the amount and format of evidence for letters of protest.
Note that a letter of protest should not include information or evidence concerning prior use, actual confusion, or ownership disputes. These are not appropriate grounds for refusing registration during ex parte examination and must be addressed in an inter partes proceeding before the Trademark Trial and Appeal Board or a civil court.
The type of evidence relevant to the examination of the mark depends upon the nature of the objection raised. For example, if an objection is filed on the basis that a mark, or portion of a mark, is descriptive or generic, the protestor must submit factual, objective evidence, such as descriptive or generic use by others or excerpts from the dictionary showing the meaning of the mark. Merely submitting a list of web sites is not sufficient. If third-party registrations are offered to show that the mark or a portion of the mark is descriptive, generic, or so commonly used that the public will look to other elements to distinguish the source of the goods or services, a mere list of the registrations or copy of a search report is not proper evidence of such registrations. Rather, copies of the registrations or the electronic equivalent thereof showing the current status and title (i.e., printouts or electronic copies taken from the trademark search system or TSDR database of the USPTO) must be submitted. See TMEP §1207.01(d)(iii).
If an objection is based on a likelihood of confusion with existing federally registered marks or prior-pending applications, and the goods and/or services are not identical, evidence of the relatedness of the goods and/or services must be included. Such evidence may include advertisements showing that the relevant goods/services are advertised together or sold by the same manufacturer or copies of registrations showing that such goods/services emanate from the same source. Note that a list of registration numbers, a chart containing the registration numbers and identified goods/services, or a copy of a search report is not proper evidence to show the relatedness of the goods or services in the registrations. Rather, copies of the registrations or the electronic equivalent thereof showing current status and title (i.e., printouts or electronic copies taken from the trademark search system or TSDR database of the USPTO) must be submitted. However, third-party registrations not based on use in commerce have little, if any, persuasive value and generally will not be included in the application record for consideration of the relatedness of the goods and services. See TMEP §1207.01(d)(iii). In addition, where a protestor wants to establish that its goods or services are related to those in the application(s) for which it is submitting the letter of protest, such evidence must pertain to the goods or services identified in the application. Evidence regarding how the protestor is using its mark for goods or services not identified in the registration or prior-pending application that form the basis for the letter of protest is inappropriate and will not be included in the application record.
If an objection is that the specimen in the protested application does not show actual use of the mark in commerce, the protest must contain objective third-party evidence. Such evidence may include: (1) third parties using the same specimen image without the trademark in question; (2) the specimen image appearing in multiple prior registrations or applications all bearing different marks; (3) evidence demonstrating that the specimen was digitally created or altered, for example, the image appears identical to a stock image from sources such as Getty Images®; or (4) evidence demonstrating that the specimen was not in use on or prior to the date it was submitted, for example, cached webpages from sources such as the Wayback Machine® that do not show past usage of the mark or webpage evidence showing the business is "coming soon." See TMEP §710.01(b) for further guidance on internet evidence. Evidence merely showing that a product cannot currently be found on retail websites will not be considered, unless there is other evidence of nonuse.
If an objection is based on the ground that the public would not perceive the matter in the protested application as a trademark indicating a single source of the good or services and instead would perceive it merely as a widely used message or common phrase, the submitted evidence must show that various sources use the phrase in the marketplace. Screenshots of webpages showing a variety of products bearing the phrase, such as t-shirts, mugs, and keychains, along with evidence showing that the phrase is commonly used in everyday speech, such as in news articles, webpages, and blogs, must be provided. See TMEP §710.01(b) for further guidance on internet evidence and §1202.04(b) for information about widely used messages.
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)
1715.05(c) Letter-of-Protest Evidence – Trademark Trial and Appeal Board Proceedings
As discussed above, if a letter of protest filed before publication is determined to be compliant, only the relevant evidence and grounds for refusal to which the evidence relates is included in the application record. However, the examining attorney is not required to issue a refusal or requirement as a result of the entry of the evidence in the record. See TMEP §1715.02(b).
In an ex parte proceeding regarding an application in which the record includes evidence submitted in a letter of protest filed before publication, if the examining attorney did not issue a refusal or requirement based on the evidence, the Trademark Trial and Appeal Board will not rely on the evidence in the Board proceeding because the applicant would not have the opportunity to rebut the evidence.
In an inter partes proceeding, a party may not rely on such evidence unless it introduces the evidence during the assigned testimony period, either through testimony or by a notice of reliance, as appropriate. See, e.g., 37 C.F.R. §2.122(b)(2) and TBMP §704.03(a).