1715    Letters of Protest in Pending Applications

A letter of protest is an informal procedure created by and existing at the discretion of the USPTO, whereby third parties may bring to the attention of the USPTO evidence bearing on the registrability of a mark.  The letter of protest procedure applies only to pending applications and is intended to aid in examination without causing undue delay and without compromising the integrity and objectivity of the ex parte examination process.  See In re BPJ Enter's., Ltd., 7 USPQ2d 1375 (Comm'r Pats. 1988); In re Pohn, 3 USPQ2d 1700 (Comm'r Pats. 1987).

Letters of protest are reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy ("Deputy Commissioner") to determine whether the submitted information should be given to the examining attorney for consideration.  To preserve the integrity and objectivity of the ex parte examination process, the letter of protest never becomes part of the application file and the Deputy Commissioner acts on the letter of protest without consulting with the examining attorney.  The Deputy Commissioner considers only the record in the application and the evidence submitted by the protestor.  BPJ Enter's., 7 USPQ2d at 1378.

If a third party attempts to contact an examining attorney regarding a letter of protest, the examining attorney will refer the third party to the Deputy Commissioner’s Office.  If an examining attorney receives a letter of protest, the letter will be referred to the Deputy Commissioner’s Office for consideration.  If the letter of protest is mistakenly entered in the record as a document received from the applicant, all evidence of that receipt will be expunged from the application record.

The Deputy Commissioner will accept a letter of protest filed before publication where it is determined that the evidence is relevant and supports any reasonable ground for refusal appropriate in ex parte examination.  The Deputy Commissioner will accept a letter of protest filed after publication only if the protestor submits prima facie evidence supporting a refusal of registration, such that publication of the mark without consideration of the issue and evidence presented in the letter of protest was a clear error (see TMEP §706.01) by the USPTO.  See TMEP §§1715.02 and 1715.03–1715.03(e).

1715.01   Appropriate and Inappropriate Subjects to Be Raised in Letter of Protest

It is inappropriate to use the letter of protest procedure to delay registration or to present purely adversarial arguments.  The USPTO denies letters of protest that merely present adversarial arguments that registration should be refused.  Adversarial arguments in letters of protest are not sent to the examining attorney.  These objections to registration should be made in an opposition proceeding after publication or, in the case of the Supplemental Register, a cancellation proceeding after registration.  The letter of protest procedure may not be used to circumvent the requirements for filing an opposition.  The USPTO also denies letters of protest that do not include factual, objective evidence.

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.  The evidence should be objective, independent, and factual evidence that the examining attorney may use to support the suggested refusal.  Personal opinions are subjective and may be self-serving, and are not forwarded to the examining attorney.  If the letter of protest is accepted, the examining attorney is informed that an objection to registration has been filed on the ground that the mark is generic or descriptive, and is given a copy of any factual evidence submitted with the letter of protest.
  • (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 letter of protest is accepted, the examining attorney is notified that an objection to the registration of the mark has been made on the ground of an alleged likelihood of confusion with a registered mark or prior pending application, and is referred to the registration or application information as it appears in the automated records of the USPTO.
  • (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.  If the letter of protest is accepted, the examining attorney is informed that a request for suspension has been received based on an alleged likelihood of confusion with a registered mark or prior pending application that is the subject of pending litigation.  Copies of the relevant pleadings are placed in the record.
  • (4) A third party notifies the USPTO that registered marks are being used inappropriately in identifications of goods and services for particular applications.  (See TMEP §1402.09.)
  • (5) 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).
  • (6) A third party notifies the USPTO of the existence 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, and the §66(a) application may not have been entered into the USPTO 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).
  • (7) 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.

1715.01(b)   Issues Inappropriate as Subjects of Letters of Protest

The following are examples of issues that are not appropriate to raise in letters of protest:

  • (1) A third party claims earlier common-law use of a trademark but does not have a federal registration or previously filed pending application for that mark.  The examining attorney can only consider registrations and prior-pending applications when determining likelihood of confusion.  Earlier common-law use, state registrations, and other claims based on evidence other than federal registrations and prior-pending applications for federal registration are not appropriate for presentation to examining attorneys during ex parte examination.
  • (2) A third party claims that the applicant is not the proper owner of the mark.  This issue requires proof that is beyond the scope of authority of an examining attorney to require during ex parte examination.  In re Apple Computer, Inc., 57 USPQ2d 1823 (Comm'r Pats. 1998).
  • (3) Numerous third parties set forth the opinion that the mark should not register, but do not offer any evidence or legal reason to support the refusal.  The letter of protest procedure should not be used as a means for expressing public opinion about a particular mark.  The trademark registration process is governed by statutory laws and federal regulations.  Public opinion may not be used to influence the application process; therefore, mass mailings by special-interest groups will not be made part of the record.  Letters of protest that raise the same objection to registration submitted by five or more different parties will be considered a mass mailing.
  • (4) A third party requests that prosecution of an application be suspended or refused because of pending litigation, but does not provide proof that the pending litigation includes grounds upon which the Office can suspend or refuse registration (e.g., the litigation does not involve a federally registered mark or prior-pending application of the protestor).
  • (5) A third party claims that the applicant has committed fraud against the USPTO.

1715.02   Letter of Protest Filed Before Publication

1715.02(a)   Standard of Review for Letter of Protest Filed Before Publication

The Deputy Commissioner will accept a letter of protest filed before publication in all cases where it is determined that the evidence is relevant and supports any reasonable ground for refusal appropriate in ex parte examination.  The letter of protest will be reviewed and decided upon even if the examining attorney has not yet taken a first action in the application that is the subject of the letter of protest.  Upon acceptance of a letter of protest, the Deputy Commissioner will forward the relevant evidence (but not the letter of protest itself) to the examining attorney.  Letters of protest filed before publication will be denied if they merely present purely adversarial arguments, or are otherwise inappropriate.

A letter of protest filed before publication but reviewed by the Deputy Commissioner after publication will be reviewed under the pre-publication standard.  See TMEP §1715.02(b).

A letter of protest filed before publication will be dismissed as moot when the issue raised has already been considered by the examining attorney unless:  (1) the evidence provided by the protestor is significant additional evidence not currently of record in the application; or (2) the examining attorney clearly erred in his or her consideration of the issue and such error would result in the issuance of a registration in violation of the Trademark Act or applicable rules.  See TMEP §706.01 regarding clear error.

1715.02(b)   Action by Examining Attorney Before Publication

Under the standard for accepting a pre-publication letter of protest, the examining attorney is not required to issue a refusal as a result of the acceptance.  The examining attorney is required only to consider the evidence and make an independent determination whether to issue the requirement or refusal requested in the letter of protest.  The examining attorney need not inform the applicant that a letter of protest was accepted unless he or she is issuing a refusal based upon the information provided with the letter of protest.  The prosecution history of the application will reflect the acceptance of a letter of protest and a memorandum accepting the letter of protest and all relevant evidence will become part of the official record.  If the examining attorney decides against issuing the requirement or refusal, the prosecution history of the application in the Trademark database will be updated to indicate "LETTER OF PROTEST EVIDENCE REVIEWED."

Letters of Protest Filed Before Publication but Accepted After Publication

In certain circumstances, a letter of protest filed before publication may not be reviewed by the Deputy Commissioner until after publication or during the period when the USPTO cannot withdraw the mark from publication.  Such letters are reviewed under the pre-publication standard.  If accepted and referred to the examining attorney after publication, the examining attorney is not required to issue a refusal or requirement as a result of the acceptance.  However, the examining attorney must consult with his or her managing attorney to determine whether a refusal or requirement is warranted.

If it is determined that a refusal or requirement must be made after publication and prior to the filing of a notice of opposition or issuance of a notice of allowance, the examining attorney must request that the Director restore jurisdiction so that the examining attorney may take action on the application.  See TMEP §1504.04.  If a notice of opposition has been filed, the examining attorney must request that the Board remand the application so that the examining attorney may take the specified action.  See TMEP §1504.05.

If the letter of protest concerns a mark in an intent-to-use application where a notice of allowance has issued, the examining attorney has jurisdiction over the application.  37 C.F.R. §2.84(a).  If the examining attorney determines, after consulting with his or her managing attorney, that a refusal or requirement must be made, and a statement of use has not been filed, before issuing an Office action, he or she must contact the ITU/Divisional Unit to cancel the notice of allowance and refund any fees paid for requests for an extension of time to file a statement of use.  See TMEP §1106.03.

If the letter of protest concerns a mark for which a statement of use has been filed, the examining attorney has jurisdiction over the application.  If the examining attorney determines, after consulting with his or her managing attorney, that a refusal or requirement must be made, and no action has been taken on the statement of use, he or she must review the statement of use and include any issues relevant to the statement of use in the Office action resulting from the letter of protest.  If an Office action regarding the statement of use has already issued, the examining attorney must issue a supplemental action regarding the refusal(s) or requirement(s) resulting from the letter of protest and incorporating by reference or restating any other outstanding refusal(s) or requirement(s).

1715.03   Letters of Protest Filed on the Date of Publication or After Publication

1715.03(a)   Standard of Review for Letters of Protest Filed on the Date of Publication or After Publication

When a letter of protest is filed more than 30 days after the date of publication, the letter of protest will generally be denied as untimely.  See TMEP §1715.03(b).

When a letter of protest is filed on the date of publication or within 30 days after the date of publication, the letter of protest will be accepted only where publication of the mark constituted clear error, because the evidence included with the letter of protest establishes a prima facie case for refusal of registration.  In re BPJ Enter's. Ltd., 7 USPQ2d 1375, 1379 (Comm’r Pats. 1988). If evidence is not included, the letter of protest will be denied. The USPTO also denies letters of protest that merely present adversarial arguments that registration should be refused.  See TMEP §706.01 regarding clear error and TMEP §1715.04 regarding the nature of relevant evidence.

1715.03(b)   Timely Filing of Letter of Protest

The most appropriate time for filing a letter of protest is before publication of a mark, because the purpose of the letter of protest is to assist the USPTO in the examination of an application for registration.  However, circumstances may preclude filing during that period in certain cases.  For example, the protestor may not be aware of an application until publication, or the evidence relevant to registrability may not be available until after publication.

Letters of protest filed more than 30 days after publication are generally denied as untimely, because a letter of protest filed after publication may delay the registration process significantly.  In re BPJ Enter's. Ltd., 7 USPQ2d 1375, 1378 (Comm’r Pats. 1988).  This applies to all applications, including intent-to-use applications under 15 U.S.C. §1051(b).  In re G. Heileman Brewing Co., Inc., 34 USPQ2d 1476, 1478 (Comm’r Pats. 1994).

Exceptions to the 30-day rule are made only in special circumstances, where the protestor could not earlier have obtained the information provided in the letter.  In re Pohn, 3 USPQ2d 1700, 1703 (Comm’r Pats. 1987).

Filing a request for extension of time to oppose does not extend the 30-day deadline for filing a letter of protest.

The letter of protest procedure applies only to pending applications.  The Director has no authority to cancel a registration in order to consider a letter of protest.  Therefore, a letter of protest will be denied as untimely if the mark registers before issuance of the decision on the letter.  Once the mark has registered, the protestor’s remedy is to file a petition to cancel with the Board.  

1715.03(c)   Jurisdiction of Application when a Letter of Protest Is Accepted After Publication

As a general rule, after publication, the examining attorney does not have jurisdiction to act on an application.  TMEP §1504.04.  Therefore, upon acceptance of a letter of protest filed after publication and before issuance of the registration or notice of allowance, the Commissioner for Trademarks will restore jurisdiction of the application to the examining attorney.  The Commissioner will also restore jurisdiction when a letter of protest is accepted and an extension of time to file an opposition has been filed.  However, if an opposition has been instituted, the Board has jurisdiction over the application. TMEP §1504.02.  Therefore, upon request, the Board will generally restore jurisdiction and remand the application to the examining attorney.  See TBMP §215 for further information concerning the effect of a letter of protest when an opposition or request for extension of time to oppose has been filed. 

If the letter of protest concerns a mark in an intent-to-use application where a notice of allowance has issued, the examining attorney has jurisdiction.  37 C.F.R. §2.84(a).  If the Deputy Commissioner determines that the letter of protest should be accepted and a statement of use has not been filed, the USPTO will cancel the notice of allowance and refund any fees paid for requests for an extension of time to file a statement of use.  Formal restoration of jurisdiction by the Commissioner is unnecessary.  TMEP §1106.03.   Furthermore, if a statement of use has been filed, the examining attorney has jurisdiction and must review the statement of use and include any issues relevant to the statement of use in the Office action resulting from the letter of protest.  If an Office action regarding the statement of use has already issued, the examining attorney must issue a supplemental action regarding the refusals or requirements resulting from the letter of protest and incorporating by reference or restating any other outstanding refusals or requirements.

1715.03(d)   Action by Examining Attorney After Publication

If the USPTO accepts a letter of protest filed on the date of publication or after publication, the examining attorney must issue the refusal or requirement, except in unusual circumstances.  The examining attorney must inform the applicant that a letter of protest was accepted.  If the notice of allowance was cancelled, the examining attorney must so inform the applicant.  Before issuing the Office action with the refusal or requirement, the examining attorney must have the action reviewed by his or her managing attorney.

However, the acceptance of the letter of protest is not a final determination by the USPTO that registration must be refused.  In unusual circumstances, the examining attorney may discover additional evidence that would justify approval of the application for registration after acceptance of a letter of protest, or the applicant may overcome the refusal or satisfy the requirement.  If a letter of protest is accepted after publication and the examining attorney later determines that the mark should be approved for issuance of a registration or notice of allowance, the examining attorney must obtain permission from the Administrator for Trademark Policy and Procedure ("Administrator") before approving the application for issue.  After conferring with the Administrator, an appropriate Note to the File must be entered in the record.

1715.03(e)   Letter of Protest Does Not Stay or Extend Opposition Period

Filing a letter of protest does not stay or extend the opposition period.  Therefore, a party who files a letter of protest after publication should also file a timely request(s) for extension of time to oppose under 15 U.S.C. §1063 with the Trademark Trial and Appeal Board.  See TBMP §215 for further information.  The Board will not suspend a potential opposer’s time to file a notice of opposition because a letter of protest has been filed.  See notice at 68 Fed. Reg. 55748, 55760 (Sept. 26, 2003).

1715.04   Information for Parties Filing Letter of Protest

Third parties who object to the registration of a mark in a pending application should never contact an examining attorney directly, either orally or in writing.  Instead, they may submit a request in writing to the USPTO entitled "LETTER OF PROTEST," protesting registration of a particular trademark based on factual, objective evidence that is relevant to the examination of the mark.  Note that if the evidence is not included, the letter of protest will be denied.  

The type of evidence that is relevant to the examination of the mark depends upon the nature of the objection raised. Objections on the basis that a mark, or portion of a mark, is descriptive or generic must be accompanied by factual, objective evidence that supports the suggested refusal. When likelihood of confusion with existing federally registered marks or prior pending applications is alleged, it is not necessary to submit copies of registration certificates or printouts from the USPTO database. Submission of the relevant registration or application serial number(s) is sufficient if the goods and/or services are identical. Otherwise, evidence of the relatedness of the goods and/or services should be included. However, 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 list of the registrations or copy of a search report is not proper evidence of such registrations. See TMEP 1207.01(d)(iii). Rather, copies of these registration certificates should be included.

A separate itemized index must accompany any submission of evidence exceeding 75 pages or the letter of protest may not be considered. Moreover, the Office encourages the use of an index in all letters of protests that contain multiple forms of evidence as its aids in the consideration of the details of all the evidence provided by the protestor. The index must be provided on plain paper (not letterhead) and contain a concise factual description of each category or form of evidence included. To maintain the integrity of the ex parte examination process, the index should not identify the protestor or its representatives or contain any arguments or persuasive language.

If the objection applies to more than one pending application, a separate letter must be sent for each application with relevant evidence accompanying each individual letter.  Every letter of protest must include the name and address of the protestor in order for a response to be sent.

1715.04(a)   Submitting a Letter of Protest

Because letters of protest are not part of the official application record, they must be properly designated and submitted to the USPTO.  In order to insure their proper routing and processing, the Office prefers that letters of protest be filed electronically via the Trademark Electronic Application System ("TEAS"). A separate letter of protest must be filed for each individual application that is being protested.  In TEAS, the Letter of Protest form can be accessed by clicking on the link entitled "Petition Forms" at http://www.uspto.gov/trademarks/teas/.  Otherwise, letters of protest should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy to the following fax number:  571-273-0032.  This is the only fax number that may be used.  Letters of protest may not be submitted by e-mail. If a letter of protest is sent via e-mail, the protestor will be instructed to resubmit it electronically via TEAS or by fax in order for it to be considered. Failure to submit the letter of protest properly may result in it being considered untimely.

Letters of protest with significant amounts of evidence should be sent via the United States Postal Service as first class mail, and addressed as follows:

Letter of Protest

ATTN:  Deputy Commissioner for Trademark Examination Policy

600 Dulany Street

Alexandria, VA 22314-5793

Submissions relating to a letter of protest, including requests for copies of letters of protest (see TMEP §1715.05), should not include a request for a return receipt.  If a protestor hand delivers the letter of protest or uses a private courier service, the letter of protest must be delivered to the attention of the Deputy Commissioner for Trademark Examination Policy at the Trademark Assistance Center, James Madison Building - East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, and be clearly identified as a letter of protest.

1715.04(b)   Tracking of Letter of Protest by the Protestor

A protestor will always receive a response from the Deputy Commissioner accepting, denying, or holding moot the letter of protest, and should generally receive the response within 60 days of filing the letter.  The protestor should monitor the application status by checking the TSDR database at http://tsdr.uspto.gov/  to determine whether an action accepting the letter of protest has been taken.  This information will be in the public record only if the letter of protest is accepted.  If a protestor has not received a response within six 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 after a letter of protest is accepted.  Ongoing monitoring will ensure protestors the opportunity to take other action (such as filing a notice of opposition) if the refusal or requirement raised as a result of the evidence referred by the letter of protest procedure is successfully overcome by the applicant.  A protestor may file a second letter of protest after publication only if a substantially different basis for filing the letter of protest is raised or significant additional evidence is provided that clearly establishes a prima facie case for refusal of registration.

1715.05   Requests for Copy of Letter of Protest

Any party who requests a copy of a letter of protest should mail the request to the Office of the Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia  22313-1451 or fax the request to 571-273-0032.  All requests should be directed to the attention of the Deputy Commissioner for Trademark Examination Policy.  Upon review of the letter of protest material, the Deputy Commissioner will usually forward a copy of the letter of protest and its attachment to the requester.  The Deputy Commissioner will deny the request for a copy of the letter of protest only if the letter of protest itself or its attachments contain material that would potentially be exempt from disclosure under the Freedom of Information Act ("FOIA").  If, in the opinion of the Deputy Commissioner, any part of the letter of protest or its attachments should be exempt from disclosure under FOIA, the matter will be forwarded to the Office of General Counsel of the USPTO for further review.

1715.06   Recourse After Denial of Letter of Protest

If the Deputy Commissioner denies a letter of protest, the protestor may pursue remedies otherwise available, such as an opposition proceeding, if the protestor complies with all relevant requirements and deadlines.  Filing a letter of protest does not stay or extend the time for filing a notice of opposition.  TMEP §1715.03(b).

The protestor may not file a request for reconsideration of the denial of the letter of protest with the Deputy Commissioner, because the request would unduly delay final disposition of the application.  In re BPJ Enter's. Ltd., 7 USPQ2d 1375, 1378 (Comm'r Pats. 1988).  However, the protester may petition the Director to review the Deputy Commissioner’s decision to deny the letter of protest under 37 C.F.R. §2.146(a)(3).

The Deputy Commissioner has broad discretion in determining whether to accept a letter of protest.  In any petition to review the denial of a letter of protest, the Deputy Commissioner’s action will be reversed only where there has been a clear error or abuse of this broad discretion.  In re Pohn, 3 USPQ2d 1700, 1702 (Comm’r Pats. 1987).

The protestor may not present additional evidence with the petition.  On petition, the Director will consider only the evidence that was properly before the Deputy Commissioner in acting on the letter of protest.  BPJ Enter's., 7 USPQ2d at 1378.