Why File a Letter of Protest for a Trademark Application?

A Letter of Protest (LOP) is a tool that allows third parties to provide the USPTO with evidence supporting a legal reason to refuse or modify a pending trademark application. It’s particularly useful for ensuring that trademarks on the register comply with legal standards and don’t infringe on existing rights. Below, we provide an overview and examples for filing an effective Letter of Protest.

What is a Letter of Protest?

A Letter of Protest allows you to present evidence to the USPTO about the registrability of a pending trademark application. It is subject to a fee and requires compliance with specific rules to be considered.

When to File a Letter of Protest?

1. File early in the application process, ideally before publication.

2. Evidence provided before publication must directly support your stated reason.

3. Evidence provided after publication must make a prima facie case for refusal or modification.

   
   

Appropriate Reasons to File a Letter of Protest

Here are some common reasons a Letter of Protest may be accepted:

1. Likelihood of Confusion

   The applied-for trademark is too similar to an existing registered mark or pending application, creating potential consumer confusion. Example: You own a registered mark, "Speedy Tech Solutions," and a pending application for "Speedy Technology" in similar industries could confuse customers.

   
   

2. Descriptiveness or Genericness

   The applied-for trademark describes the goods/services or is a generic term. Example: A pending application for "Fresh Apples" for fresh fruit is likely generic and unregistrable.

   
   

3. False Connection

   The mark falsely implies a connection with you or another entity. Example: An application for "NASA Apparel" falsely suggests a connection with NASA.

   
   

4. Failure to Function as a Trademark

   The mark is a widely used phrase or slogan and does not serve as a source identifier. Example: "Best Day Ever" is applied for mugs and t-shirts, but evidence shows the phrase is commonly used on similar goods by multiple sources.

   
   

5. Improper Specimen of Use

   The specimen submitted with the application shows images that are widely used by others or is digitally altered. Example: Evidence reveals the submitted specimen for "Cozy Candles" uses a stock photo with the trademark added digitally.

   
   

Inappropriate Reasons for a Letter of Protest

These reasons are typically not accepted because they require inter partes proceedings or do not relate to USPTO ex parte examination:

i. Claims of common law prior use of the trademark.

ii. Allegations that the applicant is not the owner of the trademark.

iii.Disagreements with the examining attorney’s actions or decisions.

How to File a Letter of Protest

1. Use the TEAS Letter of Protest Form.

   Select the specific legal reason for your protest. Attach evidence supporting your claim.

2. Include Evidence

   Provide up to 10 relevant items of evidence for each reason, not exceeding 75 pages total. Webpages must include URLs and access dates.

3. Index of Evidence

   Submit an itemized list of evidence with a factual description of how it supports your claim. Avoid personal information, legal arguments, or persuasive language.

4. Submit Payment

   Pay the required filing fee as listed in the USPTO fee schedule.

   
   

Examples of Evidence to Include

Likelihood of Confusion: Registration numbers or serial numbers of prior conflicting trademarks, third-party evidence showing overlapping goods/services.

Genericness: Screenshots of dictionary definitions or marketplace usage of the term as a generic descriptor.

Specimen Issues: Screenshots or evidence showing that the specimen is a stock image or not used in commerce.

What if my Letter of Protest is rejected?

You may still oppose the application during the opposition period or pursue other legal remedies.

Filing a Letter of Protest ensures the trademark register remains accurate and prevents the improper registration of trademarks that could harm your rights or the marketplace.

With extensive expertise in trademark law, Yakup Sari, Esq in Sari Law Firm

helps clients protect their brands and navigate complex intellectual property challenges effectively.