1715.01 Appropriate Subjects to be Raised in Letter of Protest
It is inappropriate to use the letter of protest procedure to delay registration or to present purely adversarial arguments. The USPTO denies letters of protest that are merely adversarial arguments that registration should be refused. Adversarial arguments in letters of protest are not sent to the examining attorney. These objections to registration should be made in an opposition proceeding after publication or, in the case of the Supplemental Register, a cancellation proceeding after registration. The letter of protest procedure may not be used to circumvent the requirements for filing an opposition.
Appropriate subjects for letters of protest are those that the examining attorney has the authority and resources to pursue to a legal conclusion without the need of further intervention by third parties. The following are examples of three of the most common areas of protest:
(1) A third party files an objection to the registration of a term because it is allegedly generic or descriptive. The objection must be accompanied by evidence of genericness or descriptiveness. The evidence should be objective, independent, factual evidence that the examining attorney can use to support the suggested refusal. Personal opinions are subjective and may be self-serving, and are not forwarded to the examining attorney. If the protest is granted, the examining attorney is informed that an objection to registration has been filed on the ground that the mark is generic or descriptive, and is given a copy of any factual evidence submitted with the letter of protest.
(2) A third party notifies the USPTO of the existence of a federally registered mark or prior-pending application and alleges that there is a likelihood of confusion between this mark and the mark in the application that is the subject of the letter of protest. If the protest is granted, the examining attorney is notified that an objection to the registration of the mark has been made on the ground of an alleged likelihood of confusion with a registered mark or prior-pending application, and is given a copy of the registration or application information as it appears in the automated records of the USPTO.
(3) A third party files a request that prosecution of an application be suspended because of pending litigation that is relevant to the registrability of the mark. The litigation must be specifically identified and a copy of the relevant pleadings must be enclosed. The litigation must involve a federally registered mark or prior-pending application of the protestor and grounds that are clearly relevant to the right of the applicant to register the mark in the application that is the subject of the letter of protest. If the protest is granted, the examining attorney is informed that a request for suspension has been received based on the existence of pending litigation. Copies of the relevant pleadings are placed in the record.
To preserve the integrity and objectivity of the ex parte examination process, the Administrator will consider and act on the letter of protest without consulting with the examining attorney. The Administrator considers only the record in the application and the protester’s submissions. In re BPJ Enterprises Ltd., 7 USPQ2d 1375 (Comm’r Pats. 1988).
The following are examples of issues that are not appropriate to raise in a letter of protest:
(1) A third party claims earlier common law use of a trademark but does not have a federal registration or previously-filed pending application for that mark. The examining attorney can only consider registrations and prior-pending applications when determining likelihood of confusion. Earlier common law use, state registrations and other claims based on evidence other than federal registrations and prior-pending applications for federal registration are not appropriate for presentation to examining attorneys during ex parte examination.
(2) A third party claims that the applicant is not the proper owner of the mark. This issue requires proof that is beyond the scope of authority of an examining attorney to require during ex parte examination. In re Apple Computer, Inc., 57 USPQ2d 1823 (Comm’r Pats. 1998).
(3) Numerous third parties set forth the opinion that the mark should not register but do not offer any evidence or legal reason to support the refusal. The trademark registration process is governed by statutory laws and federal regulations. Public opinion cannot be used to influence the application process; therefore, mass mailings by special interest groups will not be made part of the record.
Last Modified: April 2nd, 2010