Letter of Protest to a Trademark Registration in Opposition to Registration

Note that a fee is required for a Letter of Protest ($50 in the price list effective January 2, 2022

See the current USPTO fee schedule at https://www.uspto.gov/sites/default/files/documents/USPTO-fee-schedule_current.pdf)

Letter of Protest form for USPTO (electronic submission through TESS)

TMEP 1715 A letter of protest is an informal procedure created by and existing at the discretion of the USPTO, whereby third parties may bring to the attention of the USPTO evidence bearing on the registrability of a mark. The letter of protest procedure applies only to pending applications and is intended to aid in examination without causing undue delay and without compromising the integrity and objectivity of the ex parte examination process. See In re BPJ Enterprises, Ltd., 7 USPQ2d 1375 (Comm'r Pats. 1988); In re Pohn, 3 USPQ2d 1700 (Comm'r Pats. 1987).

If you are a "third party" and wish to object (rather than oppose) to the registration of a mark currently pending in the USPTO, a letter of protest may be filed with the USPTO no later than thirty (30) days after the date of publication (when the trademark is published for opposition). A letter of protest must include factual and objective evidence that is relevant and supports a reasonable ground for refusing registration. The USPTO will deny any letter of protest that merely presents purely adversarial arguments or is otherwise inappropriate. Note: A letter of protest may be granted but the trademark examiner may still not issue a refusal based on the input. The examiner must only consider the petition and may not agree.

The USPTO will grant a letter of protest filed after publication only where publication of the mark constituted clear error because the evidence provided establishes a prima facie case for refusal of registration. A letter of protest may not be filed for registered marks; instead, a petition to cancel a registered mark must be filed with the Trademark Trial and Appeal Board. See Examination Guide 4-08 below and TMEP 1718 for more information. See Published Trademark Search for information on how to find trademarks that have been published for opposition on the USPTO’s Trademark Electronic Search System (TESS).

When a Letter of Protest is filed effects what evidence must be submitted with the Letter [https://www.uspto.gov/trademarks/trademark-updates-and-announcements/letter-protest-practice-tip]

• File your letter of protest as soon as possible after the application is filed and preferably before the trademark is published for opposition by third parties.
• Letters of protest filed before publication must include evidence that is relevant to the stated reason(s) to refuse registration or issue a requirement.
• Letters of protest filed after publication must include evidence that establishes a prima facie case for refusing registration or issuing a requirement based on the stated reason(s). A letter of protest filed after publication and after the 30-day opposition period is too late and will usually not be considered.

What are the Legal Basis (allowed grounds) for a Letter of Protest? Here are the selections from the TEAS form.

Legal Basis*

*What is the legal basis for your letter of protest? (More than one option can be selected.) Please note that prior use of the mark, a dispute over ownership of mark, or issues of fraud are NOT an appropriate legal basis for filing a letter of protest and will result in the denial of the letter of protest.

•  Mark is likely to cause confusion with an existing U.S. Trademark Registration or prior pending application or application with an earlier effective filing date or priority claim. Enter U.S. Registration Number/Serial Number in text box. If identifying more than five Registrations Number/Serial Numbers, you must attach a chart in the evidence section on the next screen. Please only list the most relevant registrations or applications.
•   Mark is generic.
•  Mark is merely descriptive or misdescriptive, or should have an element disclaimed on that basis.
•  Mark is primarily geographically descriptive or misdescriptive, or should have an element disclaimed on that basis.
•  Mark is involved in pending litigation that involves a federally registered mark or prior pending application. Remedy requested in court proceeding includes cancellation, abandonment or amendment of the protested application. Copy of the relevant pleading is attached in the evidence section.
•  Previously registered mark is being used inappropriately in the identification of goods/services. Enter U.S. Registration Number in text box. Identify the registered mark and exactly where in the identification of goods/service it is being used in the description of the evidence section on the next screen.
•   Other Legal Basis. Explanation of legal basis.
  
  

Appropriate reasons [for a Letter of Protest] [from https://www.uspto.gov/trademarks/trademark-updates-and-announcements/letter-protest-practice-tip]

[The USPTO] will only consider your letter of protest if it complies with all requirements, including that you provided a reason appropriate in ex parte examination and evidence to support your reason. Here are some common reasons raised in letters of protest:

• The trademark in the protested application is likely to be confused with a trademark in a U.S. registration or prior pending application.
• The trademark in the protested application is merely descriptive of or generic for the identified goods or services.
• The trademark in the protested application suggests a false connection with the protestor.
• A registered trademark appears in the identification of the goods or services in the protested application.

Inappropriate reasons

[The USPTO] typically do[es] not consider letters of protest that identify the reasons below because these reasons are not appropriate for ex parte examination.

• The protestor claims common law prior use of the trademark in the protested application.
• The protestor claims that the applicant is not the owner of the trademark in the protested application.
• The protestor disagrees with the examining attorney’s examination of the protested application.