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.