Filing a letter of protest is a proactive approach to show disagreement with the potential registration of a trademark. Such a letter is a document that can be sent to the trademark examiner to inform them of the grounds for refusing to register a certain trademark. In this article, we will discuss who can file a letter of protest, the nuances and deadlines for such a document, and how to file it regarding several applications at once.
Let’s start with how does someone understand whether they have standing to file a letter of protest? The answer is quite simple: anyone can file such a letter. Even if the application does not conflict with your trademark, but, for example, you consider it descriptive for a particular industry, you can file a letter of protest. Another example is when the trademark application is the name of a famous person (singer or actress), you can also file a letter of protest. That is, you are not required to have legal standing.
Such a letter can only be filed against a filed application. To file a letter of protest with the USPTO, you must meet the deadlines and clearly assess the grounds for refusing to register the trademark against which you are filing the letter of protest.
Recommended time to file a letter of protest is before the application is published, and even better, before the issuance of the Office Action by the USPTO. However, even if the application has been published, you can file a letter of protest, but, in this case, the 30 days for filing an opposition must not have expired, and the evidence must establish the prima facie case for refusal. This deadline is the last opportunity to file a letter of protest, as if such a filing takes place after the 30-day period has expired, your letter of protest will be rejected.
If the letter of protest concerns applications filed in the United States under the Madrid Protocol, it must be filed before the end of the 18-month period after the application has been transferred to the USPTO from the International Bureau.
As for the grounds of refusal, they may be:
– similarity and identity with a previously registered trademark or a pending trademark application;
– descriptiveness of the trademark or the fact that the trademark is generic;
– other grounds.
Please note that if your ground is the similarity between an application and a common law trademark, then the letter of protest will not be accepted. In this instance, it is worth considering other legal tools, in particular, filing an opposition.
The fee for filing a letter of protest is $150, which is lower in comparison with filing an opposition. Besides that, the procedure is also less complicated. That is why it is advised to file a letter of protest in time (before the publication of a trademark application you believe should not be registered and subsequent start of opposition period).
What can be done if there are several applications that in your opinion should not be registered from one applicant? In this case, a letter of protest is being filed separately for each application and the fee is paid for each filing. For example, you see that the applicant has filed two applications. One of them is a word mark, and the other is a combined mark with the same word part and a logo. If you believe that both marks are similar to your or someone else’s registered trademark, it makes sense to file two separate letters of protest. Thus, each trademark application must correspond to a separate letter.
The Deputy Commissioner for Trademark Examination Policy is reviewing the letter of protest. If the requirements for the letter are met and the evidence is both relevant and substantiates the basis for refusal, it will be attached to the application record for review by the examining attorney. If the requirements are not met, the Commissioner may refuse to attach the letter to the application.
There are different requirements for different types of evidence. For instance, for websites as evidence you shall include a link to the URL and indicate the access date to the website. Proper and timely preparation of a letter of protest is very important, as it can affect the outcome of its submission. If you wish to file a letter of protest, consider engaging a trademark attorney. Such cooperation can help you achieve the goals and use resources effectively.