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.
Letters of protest regarding applications that will issue on the Supplemental Register must be submitted as soon as possible after the filing of the application. If the subject application enters the phase where it cannot be withdrawn from issue while consideration of the letter of protest is pending, the protest will be dismissed as untimely. The Office cannot consider a letter of protest after registration.
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 by bringing to its attention evidence that may support a refusal of registration. 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. In re Pohn, 3 USPQ2d 1700, 1703 (Comm’r Pats. 1987). For example, where the protestor could not earlier have obtained the information provided, a letter of protest may be accepted. Special circumstances may be established upon a showing that all of the evidence provided in the letter of protest was not in existence prior to publication, but to justify accepting such a letter of protest, the evidence must establish a prima facie case for refusal. However, the fact that a specimen was not of record prior to publication would not by itself be considered a special circumstance that would support allowing a letter of protest more than 30 days after publication.
If a letter of protest is filed against an application that is the subject of a request for extension of protection of an international registration under Trademark Act §66(a), in addition to meeting the timeliness standards set forth above for all letters of protest, it must also satisfy the timeliness requirements for refusals under Trademark Act §68(c) and Article 5 of the Madrid Protocol. In essence, a letter of protest against a §66(a) application must be filed before the 18-month deadline after the application was transmitted to the USPTO from the IB. A letter of protest will be dismissed if it is more than 18 months from the date the IB transmitted the protested application to the USPTO. See TMEP §1904.03(a).
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 commenced, 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).