The Trademark Modernization Act of 2020 (“TMA”) codified the rules for Letters of Protest which went into effect on December 18, 2021, 37 C.F.R. §2.149. See the firm’s blog post entitled, The USPTO Is implementing The Trademark Modernization Act. See also, Trademark Manual of Examining Procedure “TMEP” § 1715. The TMA provides a 2-month deadline for the USPTO to act on the Protest Letter. The Director’s decision on the Letter is final and non-reviewable. The USPTO filing fee to submit a Letter of Protest is $50. These Letters are submitted through the TEAS System. The USPTO encourages Protesters to file the Letters as soon as possible after the application is filed.
Letters of Protest are intended to aid in the examination of trademark applications. The Protester is conducting the filing because it has evidence to bring to the attention of the Trademark Office on the issue of registrability of a trademark. Letters of Protest only apply to pending applications. The Deputy Commissioner for Trademark Examination Policy reviews Letters of Protest and determines whether or not to send them to the Examining Attorney who is assigned to the pending application.
If a Letter of Protest is not considered by the Deputy Commissioner’s Office, no action will be taken. The most common reasons why a Letter of Protest is not considered are (1) no relevant evidence was submitted; (2) the third-party registrations submitted were not use-based; (3) there was no submission of the itemized evidence index; or (4) there were more than ten items of evidence per ground or more than 75 pages of evidence in total without a sufficient explanation of special circumstances. If the Letter of Protest is considered, the Letter itself is not forwarded to the Examining Attorney, but some or all of the evidence submitted with the Letter is sent. In addition, a Memorandum is forwarded to the Examining Attorney. These documents are visible in the prosecution history.
If you file a Letter of Protest before publication, the standard of review is that the evidence must be “relevant”. This is a lower standard than if the Letter of Protest is filed after publication. In that case, the higher standard requires that the evidence establish a “prima facie” case for refusal of registration. If you file the Letter after publication, it must be filed within the thirty-day opposition period to be considered. If the Letter of Protest is filed against a 66(a) application, it must be filed before the 18-month deadline after the International Bureau sends the application to the USPTO.
If evidence is required for the Letter of Protest, an index that itemizes the evidence is also required. The index must identify all the documents you are including. It must describe why each item of evidence supports your grounds for refusal. The index CANNOT identify the Protester or the Protester’s counsel or contain legal arguments. For example, the index should reference any exhibits included, list the types of evidence such as a third-party registration, dictionary definition, webpage etc., reference which of the grounds the evidence supports, for example likelihood of confusion, descriptiveness, etc., and reference the page number where the exhibit appears.
If the Letter of Protest includes the ground, likelihood of confusion and if the two parties’ goods and services are not identical, the Protester must submit relatedness evidence. This could be third-party use-based registrations from the Trademark Register, showing current status, goods and services and ownership information. If the evidence includes webpages from third-party websites, then the URL and access or print date for each separate webpage must be included.
The evidence cannot include more than ten items. The ten items cannot be more than 75 pages. If there is more than one application you are protesting, each one requires a Letter of Protest. If there is a need for more evidence and there are special circumstances, the Protester must include a detailed explanation of the situation. Any webpage must include the URL and access or print date on the evidence itself or on a page attached to the evidence. Any third-party evidence MUST be use-based. Always provide the most relevant examples of evidence. For example, if there are 30 third-party registrations and 20 websites, only include the top ten relevant examples. If you have questions regarding Letters of Protest, please contact the firm for a courtesy consultation.