Trademarks are essential assets for businesses, providing unique identification for their goods and services in a competitive marketplace. However, trademark holders often face challenges when others seek to register similar marks or terms that could dilute their brand or cause consumer confusion. A cost-effective and efficient solution to these challenges is the letter of protest, a procedural tool offered by the United States Patent and Trademark Office (USPTO). By filing a letter of protest, trademark holders or concerned individuals can bring relevant evidence to the USPTO examining attorney’s attention, potentially leading to the rejection of problematic trademark applications without the need for costly litigation.

A letter of protest is a formal mechanism that allows third parties to submit objective evidence regarding the registrability of a mark in a pending trademark application. Unlike opposition proceedings, which are adversarial and involve significant costs, letters of protest are designed to aid the USPTO during the examination process. They are particularly effective in cases involving issues such as likelihood of confusion with existing marks, generic terms that should remain free for public use, or descriptive marks that fail to meet the distinctiveness requirements of trademark law.

While letters of protest can be powerful tools, they must comply with stringent requirements to be considered by the USPTO. The Office will not consider a submission if it fails to comply with Rule 2.149, if the grounds for refusal have already been addressed by the examining attorney, or if a provision of the Trademark Act precludes acceptance. 37 C.F.R. §2.149(g). However, when a letter of protest meets the requirements of Rule 2.149, the Deputy Commissioner for Trademark Examination Policy may include the evidence in the application record, even if the examining attorney previously reviewed similar grounds. This is permitted in cases where the protestor presents significant additional evidence or where the examining attorney clearly erred in their consideration, potentially leading to a registration in violation of the Trademark Act or its rules. TMEP §1715.

Letters of protest are most commonly used in specific situations. These include objections to the registration of generic or descriptive terms, challenges based on
likelihood of confusion with federally registered marks or prior-pending applications, and requests to suspend prosecution due to pending litigation involving infringement claims. Other examples involve notifying the USPTO of inappropriate use of registered marks in application descriptions, improperly claimed specimens of use, or priority claims under international treaties. TMEP §1715.01. Such evidence must be objective, factual, and properly formatted to comply with USPTO requirements, ensuring it can assist the examining attorney in making an informed decision. TMEP §1715.05.

One of the primary advantages of letters of protest is their ability to serve as a low-cost alternative to litigation. Filing a letter of protest can address potential
registration issues early in the process, saving trademark holders significant time and resources. By presenting clear and objective evidence to the USPTO, a third party can ensure that the integrity of the trademark system is upheld while avoiding the complexities of court proceedings. This process is especially valuable in protecting industries from the monopolization of generic or descriptive terms, ensuring a fair and competitive marketplace.

Filing a letter of protest involves several key steps:

The submission must then be filed through the USPTO’s online Trademark Electronic Application System (TEAS), adhering to strict formatting and timeliness requirements, such as filing within 30 days of the application’s publication. TMEP §1715.02. The USPTO’s Deputy Commissioner reviews the submission to determine whether the evidence complies with applicable rules. If compliant, the evidence is included in the application record for the examining attorney’s consideration. TMEP §1715.03.

While letters of protest are a powerful tool, they require meticulous preparation to meet the USPTO’s exacting standards. Non-compliant submissions are rejected outright, leaving no recourse for the protestor (TMEP §1715.07). This is why seeking professional assistance can be critical. Experienced trademark attorneys understand the nuances of the process, ensuring that the evidence provided is both relevant and persuasive. At Twisdale Law, PC, we help clients identify the most effective grounds for protest, compile compelling evidence, and navigate the procedural complexities to maximize the likelihood of a favorable outcome.

In conclusion, letters of protest offer trademark holders a strategic, cost-effective method to address problematic trademark applications before they are registered. By acting early and leveraging this procedural tool, businesses can protect their brand identities while avoiding the financial and legal burdens of litigation. For tailored advice and professional assistance in filing letters of protest, consult with Twisdale Law, PC, where we are committed to helping clients safeguard their valuable trademarks and maintain a competitive edge.