During trademark prosecution for a brand with the United States Patent and Trademark Office (USPTO), there are a number of methods of preventing the mark from registering, or canceling the mark after registration. A Letter of Protest a newer method and a rather inexpensive option to utilize early in the trademark process.

 

A letter of protest is a less-formal mechanism that a third party may use to flag potential issues with a pending trademark application. Timing is important for a Letter of Protest. A Letter of Protest cannot be filed after the publication of a trademark and after 30-day opposition period post-Gazette publication. At this point, the next available method of preventing registration is through filing an opposition, which is a far more expensive and timely route. Suffice it to say, a Letter of Protest is a great option.

A Letter of Protest is an argument that the examiner will consider when raising a rejection (called an Office Action) on the pending application. One of the best aspects of the Letter of Protest is that the letter remains anonymous to the applicant. They will not know who doth thou protest.

The United States Patent and Trademark Office will only consider letters of protests that include a specific, relevant legal reason for an examining attorney to refuse registration or issue a requirement in a pending application. The relevant legal reason is typically that the registration of that particular trademark is prohibited by a federal law or that the applicant has not met the requirements regarding a registered trademark.

 

The USPTO have included some common reasons raised in Letters of Protests which are not exhaustive but include:

  • The trademark in the protested application is likely to be confusedwith a trademark in a U.S. registration or prior pending application.
  • The trademark in the protested application is merely descriptiveof or generic for the identified goods or services.
  • The trademark in the protested application suggests a false connectionwith the protestor or some other party.
  • The trademark in the protested application is a widely used or commonplace messageand does not function as a trademark.
  • registered trademark appears in the identificationof the goods or services in the protested application.
  • The specimens of usein the protested application feature an image that is used by third parties without the mark in question or an image that appears in multiple prior registrations or applications all bearing different marks.

 

By contrast, the UPSTO does not consider Letters of Protest based on the reasons below:

  • 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.

 

Consultation with a qualified trademark attorney is necessary when preparing a Letter of Protest to incorporate the legally significant details. Don’t delay protecting your trademark. Schedule your consultation today at Gleam Law.