Exploring Letters of Protest

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.