Trademark applications can be tedious. From narrowing down the category of your goods and services to avoid the likelihood of confusion to actually filing for registration, the process can be quite tedious. And it always seems to come with its headache. There’s always the possibility of refusal. And that’s just one more thing an applicant has to worry about on top of it all. But you’d be surprised at how simple it all becomes once you learn the ins and outs of each step.
In this blog post, we will be focusing on an instrument known as the letter of protest, walking you through the process of how this instrument is used and what purpose it serves before the USPTO. Read on if you wish to learn more about this tool and how you can go about filing a letter of protest. For more information on the process of trademark registration, check out our blog post on registering a US trademark.
Where Does A Trademark Letter Of Protest Fit Into The Registration Process?
If you’ve ever been considering your options with regard to trademark registration, you must have heard of the ‘examiner’ or ‘examining attorney’. Essentially, this is the attorney who is going to comb through the relevant evidence, assess the distinctiveness of your mark and make a decisions as to the status of your application.
When the Letter of Protest Is Filed
After considering the questions of distinctiveness, the USPTO examining attorney makes a decision regarding the registration of your mark. If your trademark is approved, it will then be published in the Official Gazette . This is is the official journal of the USPTO, published weekly on Tuesday, that includes bibliographic information and a representative drawing for each patent granted or trademark published on that issue date. This makes your pending application available for review for potential opposers, providing them with ample opportunity to file an opposition. For more information on the opposition process, check out our blog post on trademark opposition proceedings.
But let’s say an opposer runs a big enough business that any potential likelihood of confusion would cause a huge loss in revenue. This is where the letter of protest becomes a powerful tool. A letter of protest is filed when registration is still pending. This provides you with an opportunity to knock down any applicant whose registration would infringe on your mark. A protestor can often be the bane of an applicant’s existence, and often times, a big reason for refusal.
When To File A Letter Of Protest?
A letter of protest is an instrument that is designed to not be adversarial. So if your letter fails to do provide a succinct legal argument based on objective evidence, it will be subject to refusal. You might consider filing a letter of protest with the USPTO under various circumstances, such as when the applied-for trademark is deemed descriptive or generic. It’s crucial to provide substantial evidence supporting this claim. Another scenario involves asserting that the new trademark closely resembles an existing one, potentially leading to a 2(d) rejection based on the likelihood of confusion. Additionally, if the trademark applicant is involved in ongoing trademark infringement litigation, a third party can submit a request to halt the application’s processing until the legal dispute is resolved.
How To Protest Evidence To Refuse Registration
The letter of protest serves as a means to put forth reasons for opposing a trademark’s approval. When submitting a letter of protest, it is important that you adhere to the following guidelines:
- File the letter on the designated Letter of Protest page at my.uspto.gov.
- Provide a physical correspondence address within the letter.
- Clearly state the grounds for urging the USPTO to deny registration, accompanied by organized and indexed objective evidence.
- Include a separate chart outlining multiple registrations and pending applications if applicable.
Upon correct submission with compelling evidence, the letter proceeds to the examining attorney. However, the decision to forward it to the examiner lies solely with the deputy commissioner.
When Is A Letter Of Protest Denied?
Use the following guidelines as a point of reference for things to avoid that may be grounds for refusal in the eyes of the examining attorney:
Letter of protests are denied if they involve the usage of common-law trademarks. A common law usage is one that is divorced from the USPTO registration process. In this, if the first entity to use a particular mark in the industry is granted alongside the trademark symbol, is granted the rights related to the mark in the eyes of the trademark office. This protection is very hard to protest or refute in front of an examining attorney so you would be best advised to not file a letter of protest for such trademarks.
Missing the 30-Day Window
You have a 30-day window to send a letter of protest to dispute a pending trademark application. Failing to do so will most likely result in rejection of the letter.
If there’s a dispute over trademark ownership, resolving it through a letter of protest is not viable. Such issues fall beyond the jurisdiction of examining attorneys.
The Letter Of Protest Subject Matter Is Unclear
Keep it straight to the point and avoid adding anything that sounds like personal opinions or guesswork. When drafting the letter of protest, stick to the facts – don’t bring up claims of previous use, fraud, or real consumer confusion.
Letter of Protest Practice Tips – Correct Application Of Trademark Law
Putting together a strong protest letter needs a good grip on legal details and sticking to the facts. Here are some things to keep in mind:
- Clearly state why the trademark should be refused, pointing to specific parts of the Lanham Act and TMEP.
- Dig into whether the goods/services are related using the “related goods” test. Compare the elements of the marks side by side using the “DuPont factors” to figure out if they’re likely to be confused.
- If you’ve got it, show real proof of confusion. Respond directly and persuasively to any arguments the other party makes.
Trademark lawyers with experience can strategically focus on certain aspects and tie different arguments together for a bigger impact. For example, pointing out weaknesses on the applicant’s side can make the case stronger about the likelihood of confusion with the protester’s registered marks. A good story makes each step of the analysis more convincing. Getting advice from a seasoned trademark pro when you’re putting together a protest letter is a smart move to make sure all the important legal details are laid out smoothly. For more detailed guidance, check out the USPTO’s practice tips.
What Happens After Submission?
When the trademark examiner pushes back after you’ve submitted a protest letter, it’s not the end. The applicant gets a chance to throw in their arguments and evidence, for example, proving they’ve had a solid five years of exclusive use. As the protestor, you must keep tabs on the application and counter any moves the applicant makes to sail smoothly over your objections.
Sometimes, the applicant might tweak their application, maybe narrow down the goods or tweak their mark to dodge any confusion with your marks. But these changes need to play by the rules on material alterations. So, as the protestor, you must dig into these amendments and figure out if your objections still hold water, even with the new and improved application.
If the examiner backs off the initial refusal and gives the green light for publication based on the applicant’s tweaks, you have a choice to make. You can kick off a full-blown opposition proceeding by drafting a detailed notice of opposition. But here’s the catch – that opposition notice needs to be filed before the deadline tied to the revised application’s republication date.
The Benefit Of Having A Trademark Attorney On Your Side
Drafting an effective letter of protest demands a nuanced understanding of legal intricacies and strategic considerations. Having a seasoned trademark attorney by your side during this process is extremely important. A knowledgeable attorney brings a wealth of expertise, ensuring that the letter adheres to specific guidelines and regulations set forth by the USPTO, offering invaluable insights into the applicable legal grounds for refusal, cite relevant sections of the Lanham Act and TMEP, and skillfully navigate the complexities of relatedness tests and DuPont factors. These are considerations that you cannot delve into you without an attorney.
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
To know more about Sahil Malhotra — Click Here