Infringing Trademark Registration Applications: Methinks Thou Doth Protest!
Generally, when a trademark registration application is filed, there are 2 sources of concern for the applicant:
- The Attorney Examiner assigned to review the application by the US Patent and Trademark Office (USPTO); and
- Third parties who may oppose the trademark registration because they feel that it is likely to confuse consumers as to the source of their own registered marks.
The Examiner reviews the trademark registration application approximately 90 days after its filing.
If the Examiner feels that the proposed trademark is merely descriptive or likely to confuse consumers or runs afoul of any number of other requirements for Federal trademark registration, the Examiner will issue an Office Action refusal of the application.
The applicant then must respond to the Office Action within 6 months or it is Abandoned.
If there are no Office Action refusals or if they are resolved by the applicant’s trademark lawyer, the application then proceeds to the Publication Period.
This is a 30-day period of time in which third party trademark owners may review in-process trademark applications and oppose a successful registration by filing by, yes, an Opposition pleading, setting forth the evidence that the Applicant’s trademark is likely to confuse consumers.
The filing of an Opposition by a third party is not a step to be taken lightly.
When you file an Opposition, you are initiating litigation with the applicant, with all of the expected costs and time expenditure that follows that particular experience.
If the trademark applicant has filed the trademark application on their own without legal counsel, you might steamroll your way to success and prevent the registration of the proposed trademark.
If the applicant is well-represented, however (trademark registrants, hire an attorney!), you will be in litigation and/or settlement negotiation discussions for the foreseeable future.
A preliminary step to take before investing in such litigation is the Letter of Protest.
Letters of Protest: The Trademark Registration Version of Raising Your Hand in Class
A trademark Letter of Protest is a less formal USPTO process in which a third party may bring evidence of a likelihood of confusion or other issue to the attention of the USPTO.
A Letter of Protest will ideally alert the USPTO to facts of which it was not aware and which will trigger the filing of an Office Action by the Examining Attorney.
Trademark Registration Letters of Protest: When Are They Appropriate?
Not every grievance regarding a trademark registration application provides the basis for the filing of a Letter of Protest.
If you find a trademark offensive, that is not a basis.
A group of people or organizations in the general public protesting that the mark should not be registered is not a basis for a Letter of Protest.
An argument that an applicant is not the proper owner of a proposed trademark is not a basis for a Letter of Protest.
Crucially, if you have been using your very similar logo longer but have not filed a Federal trademark application for registration yourself, that is not a basis. (Only a Federally registered trademark entitles you to litigate over the right to the use of a trademark.)
What are the proper bases for a Letter of Protest?
An argument that a mark is simply generic or merely descriptive is a proper basis.
That there is a Federal trademark registration or prior-pending application for Federal trademark registration in existence is a proper basis.
That there is litigation already pending claiming infringement is a proper basis.
That a previously registered Federal trademark has priority of use over the applicant’s proposed trademark is a proper basis. (Entitlement to use of a trademark is extended in US law to the person or entity who first used the mark in interstate commerce.)
That the applicant’s proposed application misidentifies the goods or services or other information in the application is an appropriate basis for a Letter of Protest.
That another foreign registration has priority of first use over the applicant’s US Federal trademark registration application relying on a claim of use in that foreign jurisdiction is a good basis for a Letter of Protest.
In short, the appropriate bases for a Letter of Protest are those over which the USPTO Examiner has authority to review to a legal conclusion without the further interaction of other parties.
A Letter of Protest is thus a process with a wide but not unlimited scope of concern which can be highly effective in undermining an infringing or inappropriate trademark registration application at a significantly reduced cost (over Opposition litigation) in terms of attorney’s fees.
However, the timing must be right.
Trademark Registration Letters of Protest: When To File?
A Letter of Protest will ideally be filed when the infringing trademark registration application is in process, before the Publication period
The filing of a Letter of Protest will not extend the 30-day Publication period without a coordination Motion to Extend filed with the Trademark Trial and Appeals Board (TTAB), the appellate arm of the USPTO’s trademark registration division.
Letters of Protest received after the trademark registration application is approved for publication or on the date of publication will be refused absent special circumstances.
Thus, timing is crucial if you would like to take advantage of the process.
Letters of Protest of Trademark Registration Applications: The Bottom Line
The bottom line is that, for either filing a trademark registration application or a Letter of Protest or other measure protecting your existing registration, you need skilled legal representation or you risk losing your brand protection.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting enterprises in every industry with trademark registration, trademark renewal, trademark monitoring, 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 success.