Exploring Letters of Protest

Posted by | March 29, 2011 | General | 3 Comments

Anyone can file a Letter of Protest (LOP) with the PTO to alert it to information or documentation “bearing on the registerability of a mark.”  For example, a registrant who believes its registration should be cited in a 2(d) likelihood of confusion refusal can file a Letter of Protest to inform the PTO of such.  Someone who believes an applied-for mark is generic or descriptive may provide evidence supporting that belief to the PTO through the LOP process.  Apparently, LOP filings are frequent enough that the PTO has an electronic form for them in the Petition section on TEAS.

The electronic LOP form states:

[framed_box]Use this form if you as a “third party” wish to object to the registration of a mark currently pending in the USPTO.  The letter of protest must include factual and objective evidence that is relevant and supports a reasonable ground for refusing registration.  The USPTO will deny any letter of protest that merely presents purely adversarial arguments or is otherwise inappropriate.[/framed_box]

If you’re planning to file an LOP, you should know that its designed to process evidence, not arguments.  Don’t worry, there’s a place for you if you’re feeling really adversarial — TTAB proceedings and litigation are the venues where hungry litigants sue the *&@$ (emphasis on $) out of each another, not LOPs.  LOPs are filed with 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.  As stated in the Trademark Manual of Examining Procedure (TMEP):

[framed_box]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 protestor.  BPJ Enterprises, 7 USPQ2d at 1378 . . . The Deputy Commissioner will grant a letter of protest filed before publication where it is determined that the evidence is relevant and may support any reasonable ground for refusal appropriate in ex parte examination.  The Deputy Commissioner will grant a letter of protest filed after publication only if the protestor submits 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 a clear error by the USPTO. [/framed_box]

Procedurally speaking, as we lawyers do, LOPs will be considered timely so long as they’re filed no later than 30 days after Publication of the mark, though the PTO encourages filing LOPs prior to Publication whenever possible.  An e-mail discussion recently ensued on the e-Trademarks list about LOPs.  Several attorneys shared their success in filing 2(d) LOPs.  Most successes occurred when attorneys filed their LOPs before the first office action (OA) issued.  Fewer reported success with LOPs filed in response to their client’s marks not being cited in an initial OA for a confusingly similar mark.  Of those who had a LOP granted after a first OA, not all saw the issue raised by the Examiner in a subsequent OA, although several did.  If nothing else, PTO Examiners can be counted on to be unpredictable.  I think they like it that way.  I know I would.

LOPs are an effective tool to alert the PTO about issues relevant to the (un)registerability of a mark.  If the Deputy Commissioner approves the LOP, the issues go to the Examiner, who decides whether to address them with the applicant.  An LOP may prevent the hassle and expense of a TTAB proceeding since 2(d) refusals often result in abandoned applications, or it may cause the applicant to contact the presumed Protestor to settle the dispute.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

3 Comments

  • […] apparel application from proceeding.  It’s too late in the process for the band to file a Letter of Protest, so it will either have to negotiate abandonment of Subia’s application or file a […]

  • Alex Velez says:

    Lara – you’re amazing!! :) You literally saved our business and you did it just because you actually cared about what we were doing with our social enterprise… thank you for your help, and for your clever & super interesting blog… keep it up — we need more of you out there!!

    • Lara says:

      Thanks, Alex. I appreciate you making the time to read and comment on my blog. Lucky for me, I love practicing trademark law (though I think maybe one is not supposed to use “love” and “law” in the same sentence). My passion for trademark law helps me see things others miss, which was how I was able to help you. Keep up the awesome work and of course, please keep enjoying my blog!

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