We have written about the USPTO Letter of Protest process in the past. However, this Article discusses this valuable tool in better and more helpful detail.
The Letter of Protest Defined
A Letter of Protest is a means of submitting evidence and argument to the US Patent and Trademark Office (USPTO) as to why a trademark registration application should not be approved. When successful, it is a far less expensive means of stopping an infringing trademark application from registering than litigation.
It is also a discreet process.
We explain below. But, first, some basics regarding trademark registration and when a Letter of Protest is appropriate.
When Is a Trademark Eligible for Registration?
A trademark is eligible for registration in the US when it is:
- In use in interstate commerce in association with goods or services transacted;
- Sufficiently unique to identify you as the source of those goods or services to consumers.
Use in Commerce
A trademark is in use in commerce if it is displayed to consumers across Michigan’s or another state-line in association with the offering for sale or transaction the good or service described in the trademark registration application or certificate.
That is, you have to be using it to provide (for sale or not for profit) a product or service of some sort across state lines.
If you only display a name, logo, or slogan on a poster in your living-room it is not being “used in commerce.”
This is worth noting up front because an applicant’s failure to use its mark in commerce is a basis for the filing of a Letter of Protest.
Sufficiently Unique
A trademark that is merely descriptive of the product or service being offered or a geographic location is not registrable as a trademark.
Likewise, a trademark or a close enough version of a trademark that has already been registered with the USPTO cannot be registered.
This is because the purpose of US trademark law is, ultimately, to ensure that consumers know what they are buying and from whom.
If your business name is DETROIT HAMMER COMPANY and you are a company that sells hammers in Detroit, this is not sufficiently unique. Many companies sell hammers in Detroit. And the word DETROIT itself cannot be registered.
If your business name is, say, BLADIDAS and you sell athletic footwear … Well, one hopes you can see the problem.
The USPTO will view your BLADIDAS application as likely to confuse consumers as to who is selling what. (And you can look forward to the cease and desist letter and Opposition proceeding filed by Adidas.)
Likelihood of confusion and mere descriptiveness are also bases for the filing of a Letter of Protest.
So What Exactly Is a Letter of Protest?
A Letter of Protest is a pleading containing allegations of impropriety in a trademark registration application that has been filed but has not yet been registered.
It argues that a trademark should not be registered for one or more of a handful of valid reasons. (See below.)
It is filed with the USPTO’s Deputy Commissioner for Trademark Examination Policy. The Deputy Commission reviews the Letter of Protest. The Deputy Commissioner determines whether the Letter of Protest is properly drafted and complies with law and procedural requirements. If so, it is then forwarded to the USPTO Examiner assigned to review the application in question for consideration.
If the Letter of Protest makes a good argument and contains good evidence that registration of the proposed trademark application should be refused, the Examiner has the discretion to issue an Office Action refusal based on its arguments.
In short, a Letter of Protest brings those arguments and that evidence to the attention of the USPTO Examiner.
Neither the Deputy Commissioner or the Examiner will communicate with you once you’ve filed the Letter of Protest. Furthermore, the Letter of Protest must be filed within the proper time constraints. (See below.)
However, when it works, the Letter of Protest is an affordable means of pointing the Examiner in what you think is the right direction.
What Arguments Can Be Made in a Letter of Protest?
Not every argument you can conceivably make regarding a trademark’s potential registration can be raised in a Letter of Protest.
A Letter of Protest can be filed to raise the following arguments:
- There is a likelihood of confusion relative to prior registered trademarks;
- The proposed trademark is merely descriptiveness (or outright generic);
- The proposed trademark has been used inappropriately in identifying goods or services;
- The proposed trademark presents a widely used or commonplace message;
- The “Specimen” evidencing use in commerce included with the application do not in fact demonstrate “use in commerce”;
- The application draws a false connection between the proposed trademark and someone else’s goods or services.
Generally, these arguments are acceptable because they within the jurisdiction of the USPTO Examiner to investigate or consider.
Not every argument is.
Arguments that are not appropriate for a Letter of Protest include:
- That you have “common law” prior use of the trademark;
- That the applicant is not the true owner of the trademark;
- That the Examiner erred in his or her examination of the application.
You may bring an argument based on the Examiner’s work quality only if filing the Letter of Protest after Examination has concluded, obviously.
The other 2 arguments are among those that are outside of the USPTO’s investigatory jurisdiction. If you want to argue about common law prior use or that you are the true owner of the trademark, you will need to file an Opposition or Cancellation proceeding and litigate it yourself.
When Must a Letter of Protest Be Filed?
Timing is crucial in the filing of a Letter of Protest. The Letter of Protest, ideally, should be filed as soon as possible after the offending trademark application has been filed.
As of this writing, the USPTO is taking 9 months or longer to assign Examiners to new applications and for those Examiners to conduct initial examinations. In a perfect world, your Letter of Protest will be filed before the Examiner is even assigned to the application.
The evidence that must be presented varies depending upon whether you file the Letter of Protest before or after the start of the so-called Publication Period.
As a reminder, the “Publication Period” is the 30-day period of time in which third parties may review the application and file Opposition pleadings to initiate private party litigation to stop the application from registering.
Opposition proceedings are an alternative to file a Letter of Protest, though not mutually exclusive. Filing a Letter of Protest does not mean that you cannot also file an Opposition proceeding as needed.
- Before Publication, you must, in your Letter of Protest, identify the relevant grounds for the application’s refusal, along with supporting evidence.
- After Publication, you must also include stronger evidence supporting an additional argument that failing to refuse the application would result in a violation of the US Trademark Act or the Trademark Rules of Practice.
You cannot file a Letter of Protest after the publication period.
Contact a Michigan Trademark Attorney to Discuss Your Letter of Protest
There is more information regarding Letters of Protest than can be covered in a short blog post such as this.
How much evidence to attached? What sort of evidence? Where do you file a Letter of Protest? How do you complete the USPTO form? What do you do if you make a mistake drafting the Letter of Protest?
Long story short, if you are asking questions such as these, you likely need to consult an experienced trademark attorney to ensure that your Letter of Protest is filed properly, within the proper timeframe, and to ensure that the proper arguments are made.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios in all industries and in all states with trademark registration, trademark renewal, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration, Letter of Protest, or Opposition success.