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).