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.