1715.04(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 Office 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. Although an index is required for evidentiary submissions exceeding 75 pages, the Office strongly encourages the use of an index in all letters of protest that contain multiple forms of evidence because it aids in the consideration of the details of all the evidence provided by the protestor. 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 ten to fifteen examples. More than fifteen examples of evidence generally will be considered duplicative and unnecessary and may result in the letter of protest being denied without consideration on the merits. Copies of third-party registrations must come from the electronic records of the Office and show the current status and title of the registration. When submitting printouts from the Internet as evidence, the printout must include the date the evidence was published or accessed and the complete URL address of the website. 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, copies of pages from books or articles must include sufficient information regarding the source.
It should be a rare situation in which more than 75 pages of evidence is necessary to support the proposed legal grounds for refusal. Therefore, a letter of protest accompanied by more than 75 pages of evidence will be denied without consideration on the merits unless it complies with the following requirements: (1) the letter of protest provides a detailed explanation about why more than 75 pages of evidence is necessary and (2) the letter of protest is accompanied by a separate itemized index of the evidence.
The index must be provided on plain paper (not letterhead) via an attachment to the TEAS Letter of Protest form, and contain a concise factual description of each category or form of evidence included. 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 evidence appears and must highlight the relevant portion of the page. 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.