Trademarks > Trademark Examination Guides, Notes and Announcements > Examination Guide 4-08

Examination Guide 4-08
LETTERS OF PROTEST IN PENDING TRADEMARK APPLICATIONS
Issued November 21, 2008

1. Introduction



2. Letters of Protest - Background



3. Standard of Review for Letters of Protest Filed Before Publication



4. Standard of Review for Letters of Protest Filed After Publication



5. Effect of Indicated Classes – No Precedential Value on Later Filed Applications



6. Jurisdiction of the Application When a Letter of Protest Is Granted After Publication



7. Action by Examining Attorney After Publication



8. Information for Parties Filing a Letter of Protest



9. Inappropriate and Appropriate Subjects to be Raised in Letter of Protest



10. Submitting Letters of Protest

1. Introduction

   The United States Patent and Trademark Office (USPTO) has changed the standard of review for letters of protest filed before a trademark application is published for opposition. This examination guide sets forth those changes in practice and procedure resulting from the revised standard of review and summarizes the basic requirements for filing and processing letters of protest. It supersedes the Trademark Manual of Examining Procedure (TMEP), 5th edition, to the extent any inconsistency exists.

2. Letters of Protest - Background

   A letter of protest is an informal procedure created by and existing at the discretion of the USPTO, whereby third parties can 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). The letter of protest procedure is not a substitute for an opposition proceeding, and it may not be used as a means to delay registration or to present purely adversarial arguments. See TMEP §§1715 et seq.

   Letters of protest are reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy (Deputy Commissioner) to determine whether the submitted information should be given to the examining attorney for consideration. To preserve the integrity and objectivity of the ex parte examination process, the letter of protest never becomes part of the application file and the Deputy Commissioner acts on the letter of protest without consulting with the examining attorney. The Deputy Commissioner considers only the record in the application and the evidence submitted by the protester. BPJ Enterprises, 7 USPQ2d at 1378.

   If a third party attempts to contact an examining attorney regarding a letter of protest, the examining attorney will refer the third party to the Deputy Commissioner’s Office. If an examining attorney receives a letter of protest, the letter will be referred to the Deputy Commissioner’s Office for consideration. If the letter of protest is mistakenly entered in the record as a paper received from the applicant, all evidence of that receipt will be expunged from the application file (TDR/TICRS record).

3. Standard of Review for Letters of Protest Filed Before Publication

   Under the new standard, the Deputy Commissioner will grant letters of protest filed before publication in all cases where it is determined that the evidence is relevant and supports any reasonable ground for refusal appropriate in ex parte examination. The letter of protest will be reviewed and decided upon even if the examining attorney has not yet taken a first action in the application that is the subject matter of the protest. Upon granting a letter of protest, the Deputy Commissioner will forward the relevant evidence (but not the letter of protest itself) to the examining attorney. Letters of protest filed before publication will be denied if they merely present purely adversarial arguments, or are otherwise inappropriate.

   Under the new standard, a letter of protest filed before publication will be dismissed as moot when the issue raised has already been considered by the examining attorney unless: (i) the evidence provided by the protestor is significant additional evidence not currently of record in the application, or (ii) the examining attorney clearly erred in his or her consideration of the issue and such error would result in the issuance of a registration in violation of the Trademark Act.

   The previous pre-publication standard of review for letters of protest is therefore changed. Previously, letters of protest filed before publication were granted only if the protestor submitted prima facie evidence supporting a refusal of registration, such that publication of the mark without consideration of the issue and evidence presented in the letter of protest was or would be a clear error by the USPTO. TMEP §§1715 and 1715.02. Under the old pre-publication standard, if a letter of protest was granted, the examining attorney was required to issue the refusal on which the protest was based.

4. Examining Attorney Is NOT Required To Issue a Refusal Based Upon Letters of Protest Granted Prior To Publication

   Under the new standard for granting a pre-publication letter of protest, the examining attorney is not required to issue a refusal as a result of the grant. The examining attorney is required only to consider the evidence and make an independent determination whether to issue the requirement or refusal requested in the letter of protest. The examining attorney need not inform the applicant that a letter of protest was granted unless he or she is issuing a refusal based upon the information provided with the letter of protest. The prosecution history of the application will reflect the grant of a letter of protest and a memorandum granting the protest and all relevant evidence will become part of the official record. If the examiner decides against issuing the requirement or refusal, a note to the file should be entered indicating that the evidence was reviewed.

5. Standard of Review for Letters of Protest Filed After Publication

   The procedure concerning letters of protest filed after publication remains unchanged. If filed more than 30 days after the date of publication, the letter of protest will generally be denied as untimely. If timely, the letter of protest will be granted only where publication of the mark constituted clear error, because the evidence establishes a prima facie case for refusal of registration. See TMEP §1715.03 et seq. for further information concerning Letters of Protest filed after publication.

   Generally, a letter of protest can be granted only when it is received and acted upon before the mark registers, regardless of whether the letter of protest was timely filed. Once the mark has registered, the protestor’s remedy would be to file a petition to cancel with the Trademark Trial and Appeal Board (TTAB).

6. Jurisdiction of the Application When a Letter of Protest Is Granted After Publication

   As a general rule, after publication, the examining attorney does not have jurisdiction to act on an application. TMEP §1504.04. Therefore, upon granting a letter of protest after publication and before issuance of the registration or notice of allowance, the Commissioner for Trademarks will restore jurisdiction of the application to the examining attorney. The Commissioner also will restore jurisdiction when a letter of protest is granted and an extension of time to file an opposition has been filed. However, if an opposition has been instituted, the Trademark Trial and Appeal Board (Board) has jurisdiction over the application. TMEP §1504.02. Therefore, upon request, the Board generally will restore jurisdiction and remand the application to the examining attorney. See Trademark Trial and Appeal Board Manual of Procedure (TBMP) §215 for further information concerning the effect of a letter of protest when an opposition or extension of time to oppose has been filed.

   If the letter of protest concerns a mark in an intent-to-use application where a notice of allowance has issued, the examining attorney has jurisdiction. 37 C.F.R. §2.84(a). If the Deputy Commissioner determines that the letter of protest should be granted and a statement of use has not been filed, the notice of allowance will be cancelled and the Office will refund any fees paid for requests for an extension of time to file a statement of use. Formal restoration of jurisdiction by the Commissioner is unnecessary. TMEP §1106.03. Furthermore, if a statement of use has been filed, the examining attorney has jurisdiction and should review the statement of use and include any issues relevant to the statement of use in the Office action resulting from the letter of protest.

7. Action by Examining Attorney After Publication

   If the USPTO grants a letter of protest after publication, the examining attorney must issue the refusal or requirement, except in unusual circumstances. The examining attorney should inform the applicant that a letter of protest was granted and if the notice of allowance was cancelled, the examining attorney should inform the applicant of this action. Before mailing the Office action with the refusal or requirement, the examining attorney must have the action reviewed by his or her managing attorney.

   However, the granting of the protest is not a final determination by the Office that registration must be refused. In unusual circumstances, the examining attorney may discover additional evidence that would justify approval of the application after the grant of a letter of protest, or the applicant may overcome the refusal or satisfy the requirement. If a letter of protest is granted after publication and the examining attorney later determines that the mark should be approved for issuance of the registration or notice of allowance, the examining attorney must obtain permission from the Administrator for Policy and Procedure (Administrator) before approving the application for issue. After conferring with the Administrator, an appropriate note to the file must be entered.

8. Information for Parties Filing a Letter of Protest

   Third parties who object to the registration of a mark in a pending application should never contact an examining attorney directly, either orally or in writing. Instead, they may submit a request in writing to the USPTO entitled “LETTER OF PROTEST,” protesting registration of a particular trademark based on factual, objective evidence that is relevant to the examination of the mark. If the objection applies to more than one pending application, separate letters should be sent for each application with relevant evidence accompanying each individual letter. Every letter of protest must include the name and address of the protestor in order for a response to be sent.

   A protestor will always receive a response from the Deputy Commissioner granting, denying, or holding moot the letter of protest, and generally should receive the response within 60 days of filing the letter. The protestor should monitor the application status by checking the TARR database at http://tarr.uspto.gov and can determine whether an action granting the letter of protest has been taken. This information will be in the public record only if the letter of protest is granted. If a protestor has not received a response within six months of submitting a letter of protest, the protestor should contact the Office of the Deputy Commissioner to confirm receipt of the letter of protest.

   For information on a protestor’s remedies if a letter of protest is denied, see TMEP §1715.06.

   Filing a letter of protest does not stay or extend the opposition period. Therefore, a party who files a letter of protest after publication also should file a timely request(s) for extension of time to oppose (15 U.S.C. §1063) with the Board. See TBMP §215 for further information. The Board will not suspend a potential opposer’s time to file a notice of opposition because a letter of protest has been filed. See notice at 68 Fed. Reg. 55748, 55760 (Sept. 26, 2003).

   Protestors should continue to monitor the status of the application being protested because the application may be approved for publication, republication, or issuance of a registration even after a letter of protest is granted. Ongoing monitoring will ensure protestors the opportunity to take other action (such as filing a notice of opposition) if the refusal or requirement raised as a result of the letter of protest is successfully overcome by the applicant. A protestor can file a second letter of protest after publication only if a substantially different basis for filing the protest is raised or significant additional evidence is provided that clearly establishes a prima facie case for refusal of registration.

9. Inappropriate and Appropriate Subjects to be Raised in Letter of Protest

   It is inappropriate to use the letter of protest procedure to delay registration or to present purely adversarial arguments. Claims of fraud, earlier common-law use, ownership of state registrations, and claims based on evidence of use other than federal registrations and prior-pending applications for federal registration are not appropriate as the subject of a letter of protest and will continue to be refused. The letter of protest procedure should not be used as a means for expressing public opinion about a particular mark. The trademark registration process is governed by statutory laws and federal regulations. Public opinion cannot be used to influence the application process; therefore, mass mailings by special interest groups will not be made part of the record. Letters of protest that raise the same objection to registration submitted by five or more different parties will be considered a mass mailing. These types of objections to registration should be made in an opposition proceeding after publication or, in the case of a mark approved for registration on the Supplemental Register, a cancellation proceeding after registration.

   Appropriate subjects for letters of protest concern issues that the examining attorney has the authority and resources to pursue to a legal conclusion without further intervention by third parties. For example, an appropriate letter of protest could include evidence: (1) that the term sought to be registered is generic or descriptive; (2) that a federally registered mark or prior-pending application exists for which there is a likelihood of confusion between this mark and the mark in the application that is the subject of the letter of protest; and (3) that registered marks are being used inappropriately in identifications of goods and services for particular applications. See TMEP §1715.01(a) for additional specific examples of issues that are appropriate to raise in a letter of protest and TMEP §1715.01(b) for examples of issues that are inappropriate to raise in a letter of protest.

10. Submitting Letters of Protest

    Because letters of protest are not made an official part of the application record, it is important that they be properly designated and submitted to the USPTO. In order to insure their proper routing and processing, letters of protest should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy to the following fax number: 571-273-0032. This is the only fax number that can be used. Failure to submit the letter of protest properly may result in it being considered untimely.

    Letters of protest with significant amounts of evidence should be sent via the U.S. Postal Service, first class mail addressed as follows:

    Letter of Protest
    ATTN: Deputy Commissioner for Trademark Examination Policy
    600 Dulany Street
    MDE-4B89
    Alexandria, VA 22314-5793

    Submissions relating to a Letter of Protest, including requests for copies of letters of protest, should not include a request for a return receipt. If a protestor wants to hand deliver the letter of protest or use a private courier service, the letter of protest must be delivered to the attention of the Deputy Commissioner for Trademark Examination Policy at the Trademark Assistance Center, James Madison Building - East Wing, Concourse Level, 600 Dulany Street, Alexandria, VA and be clearly identified as a letter of protest.

 

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