1715.03 Letter of Protest Filed Before Publication
1715.03(a) Standard of Review for Letter of Protest Filed Before Publication
When a letter of protest filed before publication complies with the requirements of Rule 2.149, the Deputy Commissioner will determine whether the submitted evidence is relevant and supports the identified ground(s) for refusal. 37 C.F.R. §2.149(d)(1). The letter of protest will be reviewed and a determination will be made even if the examining attorney has not yet taken a first action in the application that is the subject of the letter of protest. If the evidence is relevant to the identified ground(s) for refusal, the Deputy Commissioner will include the evidence (but not the letter of protest itself) in the application record for consideration by the examining attorney. 37 C.F.R. §2.149(h).
A letter of protest filed before publication but reviewed by the Deputy Commissioner after publication will be reviewed under the pre-publication standard. TMEP §1715.02(b).
1715.03(b) Action by Examining Attorney Before Publication
The examining attorney is not required to issue a refusal as a result of a pre-publication letter of protest where it is determined that the submitted evidence should be included in the application record. The examining attorney is required only to consider the evidence and make an independent determination whether to issue the requirement or refusal requested to which the evidence relates. The examining attorney need not inform the applicant that evidence submitted with a letter of protest was included in the record 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 entry of the evidence submitted with a letter of protest and a memorandum attaching all relevant evidence and identifying the grounds for refusal and/or requirements to which the evidence relates will be added to the application record. If the examining attorney decides against issuing the refusal or requirement, the prosecution history of the application in the Trademark database will be updated to indicate "LETTER OF PROTEST EVIDENCE REVIEWED - NO FURTHER ACTION TAKEN."
Letters of Protest Filed Before Publication but Determined to be Compliant 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. In such cases, if the Deputy Commissioner determines that the evidence submitted with the letter of protest should be included in the application record, the examining attorney is not required to issue a refusal or requirement as a result of the inclusion of the submitted evidence in the record. However, the examining attorney must consult with his or her managing attorney to determine whether a refusal or requirement is warranted.
If the examining attorney determines 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 Commissioner for Trademarks will restore jurisdiction, pursuant to the authority delegated by the Director, so that the examining attorney may take action on the application. See TMEP §1504.04. If an opposition proceeding has been instituted, the Board will restore jurisdiction to the examining attorney 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).