LETTER OF PROTEST

As part of due diligence, a trademark practitioner is always on a look out for fresh filings of confusingly similar trademark applications.  If found, a first consideration is sending a cease and desist letter.  However, there is another viable and under-exploited tool that should be considered in parallel – A Letter of Protest (LOP). 

An LOP is filed directly at the USPTO (Item No. 10) and is essentially a heads up to the Examining Attorney of evidence that the latter should consider when assessing the registrability of the new trademark application.  In addition, there are two other reasons that justify considering filing an LOP.  First, that the evidentiary requirement is minimal, and second, there is no initial filing fee for an LOP – both factors that your client will appreciate.  That said, an LOP should not be used carte blanche, but strategically and, timing is key. 

Here are some basic rules to remember:

1.       Timing:

1. An LOP must be filed prior to publication of the new trademark application in the Official Gazette.
2. Post publication filings are permitted in limited circumstances only i.e., the lack of consideration of evidence by the Examining Attorney was clearly an error. [See TMEP 1715].  And even so, there is a tight 30-day window to do so.
3. An LOP cannot be filed post registration.  The appropriate petition to file at that point is a Petition to Cancel.

2.       Common Grounds/ Legal Bases: 

1. The new trademark application is confusingly similar to a registered mark/ prior pending application/ priority claim*.
2. The new trademark application is descriptive.
3. The new trademark application is generic.

*When using this option, only a listing of related registration or application serial numbers need to be given. 

3.       Non-identical goods/ services: For this situation, one must provide factual evidence that shows the relatedness of the goods/ services. (See TMEP 1715.04(a)).


For more See LOP Practice Tips at the USPTO