Letters of Protest are not new to U.S. trademark practice; yet the Trademark Modernization Act of 2020 (TMA) provided statutory authority for and refined the existing procedure. This article discusses those procedure updates, and refreshes practitioners and brand owners on this important tool.
In short, a Letter of Protest (LOP) is a helpful procedure to bring to the attention of the United States Patent and Trademark Office (USPTO) “evidence relevant to a ground for refusal of registration” of a mark in a pending application. Public Law 116-260, Div. Q, Tit. II, Subtit. B, section 223(a) (Dec. 27, 2020); Trademark Manual of Examining Procedure § 1715.02. Grounds appropriate for a LOP are those “that the examining attorney has the authority and resources to pursue to a legal conclusion without further intervention by third parties”, such as likelihood of confusion with a U.S. federally registered mark, genericness, or descriptiveness. TMEP § 1715.01(a). Grounds inappropriate to raise in a LOP are claims of earlier common-law use of an unregistered mark; that the applicant is not the owner of the mark; and fraud against the USPTO. TMEP § 1715.01(b).
The LOP must be in writing and contain the items set forth in 37 C.F.R §2.149(f), which include a simple statement of the proposed legal ground(s) for refusing registration or issuing a requirement; and succinct, factual, objective evidence to support the refusal or requirement. 37 C.F.R §2.149(f). It should not include information or evidence concerning prior use, actual confusion, or ownership disputes. TMEP § 1715.05(a).
Procedure for Filing
The USPTO provides a handy electronic form for filing a LOP. The USPTO currently charges $50 per-LOP submission. One LOP must be submitted for each application protested. 37 C.F.R §2.149(b).
The Director (and specifically, the Office of the Deputy Commissioner for Trademark Examination Policy) reviews a LOP and determines whether to forward the evidence to the examining attorney. TMEP § 1715. The TMA adds a turnaround requirement for the USPTO, namely, “not later than 2 months after the date on which the [LOP] is filed, the Director shall determine whether the evidence should be included in the record”. Public Law 116-260, Div. Q, Tit. II, Subtit. B, section 223(a) (Dec. 27, 2020).
If the LOP is not considered, then nothing related to the LOP is made of record and no evidence is forwarded to the examining attorney. If the LOP is considered, then some or all the evidence is forwarded to the examining attorney but the LOP itself is not made of record.
The TMA also provides that “any determination by the Director whether or not to include evidence in the record of an application shall be final and non-reviewable”. Public Law 116-260, Div. Q, Tit. II, Subtit. B, section 223(a) (Dec. 27, 2020).
Time for Filing
Letters of protest filed more than 30 days after publication are untimely and generally will not be considered. 37 C.F.R. §2.149(c); TMEP § 1715.02.
A LOP against a request for extension of protection under §66(a) is untimely and will not be considered if it is more than 18 months from the date the International Bureau of the World Intellectual Property Organization transmitted the protested application to the USPTO. 37 C.F.R §2.149(g)(3); TMEP § 1715.02.
When a LOP filed before publication complies with the requirements of 37 C.F.R. §2.149 and if the evidence is relevant to the identified ground(s) for refusal, the Deputy Commissioner will include the evidence (but not the LOP itself) in the application record for consideration by the examining attorney. 37 C.F.R. §2.149(d)(1); TMEP §§ 1715, 1715.03(a).
While a LOP may be filed on the publication date or within 30 days from the publication date of a protested application, the standard of review differs from when a LOP is filed before publication. When a LOP filed on the date of publication or within 30 days after the date of publication complies with the requirements of Rule 2.149, the Deputy Commissioner will determine whether the evidence establishes a prima facie case for refusal of registration on the identified ground(s), such that failure to issue a refusal or to make a requirement would likely result in issuance of a registration in violation of the Trademark Act or applicable rules. 37 C.F.R. §2.149(d)(2); TMEP § 1715.04(a).
Filing a LOP does not stay or extend the opposition period. 37 C.F.R. §2.149(e); TMEP § 1715.04(d).
For more information on letters of protest, check out the USPTO’s Letter of Protest Practice Tip Page.