Stop the Registration! Understanding Trademark Letters of Protest
What happens if you notice a pending trademark application for a mark you believe to be confusingly similar to your mark? One lesser-known tool for challenging the registration of an infringing trademark is called a letter of protest (LOP). An LOP allows third parties to submit evidence to the U.S. Patent and Trademark Office (USPTO) to challenge the registration of a pending trademark application.
What is a Letter of Protest?
A letter of protest is a formal request to the USPTO to review and consider evidence showing that a trademark in a pending application infringes an existing mark or is otherwise unregistrable. The filer of an LOP can raise concerns and bring attention to various grounds that could prevent the application from being registered. Such letters are often based on the following concerns:
Likelihood of Confusion: The pending mark is too similar to an existing registered trademark, which could cause confusion among consumers.
Descriptiveness: The pending mark may be too descriptive to be eligible for registration.
Generic: The pending mark is generic and ineligible for registration.
Deceptiveness: The pending mark may mislead the public or create false associations.
Geographic Significance: The pending mark may be too geographically descriptive to be registerable.
Prior Pending Applications: The pending mark inappropriately uses a previously registered mark in the identification of its goods and services.
Why Use a Letter of Protest?
A letter of protest is valuable because it provides an opportunity to present evidence early in the process. Submitting an LOP thus has the potential to prevent lengthy and costly trademark litigation down the road and can be less time-consuming and costly than filing a formal opposition proceeding.
When Should You File a Letter of Protest?
A letter of protest must be filed before the application reaches the stage where the examining attorney issues a notice of allowance or registers the mark. Once the application is in the "notice of allowance" stage or registered, it's too late to submit an LOP.
While the LOP must be filed before the examining attorney has made a final decision on the application, the letter can’t be filed against applications that are still in the early stages of examination (before publication for opposition).
How to File a Letter of Protest
While termed a “letter of protest,” the current process actually just involves the completion of an online form. The process includes the following steps:
Gather Evidence: This evidence could include copies of conflicting registered trademarks, evidence showing descriptiveness, or other relevant materials. A protestor is limited to no more than 10 items of evidence for each specified reason in the letter, and no more than 75 pages of evidence total.
Fill out the Letter of Protest form: The LOP form can be found here. Once in the form, the protestor can check boxes indicating the bases for opposing the application and upload evidence in support of the opposition. While the protestor does not need to include a traditional “letter” or other narrative document asserting arguments in support of the protest, if the protestor does want to include an argument and/or further explanation for the why the checked bases should bar registration of the pending mark, the form contains a text box in the “legal basis” section in which a protestor can add an “explanation of legal basis.” Such an explanation should be a concise statement outlining the reason for the protest and referencing the submitted evidence.
Pay the Fee: A fee of $150 is required to file a letter of protest.
USPTO Review: Once submitted, the USPTO will review the protest and submit a memorandum to the examining attorney that does not contain any identifying information about the protestor. The examining attorney will then determine whether to refuse the application or proceed with the examination.
What Happens After Filing a Letter of Protest?
While the letter of protest may cause the examining attorney to conduct further investigation and ultimately reject the pending mark, it’s important to remember that filing an LOP does not guarantee any specific result as the examining attorney can use their discretion to determine the impact of the LOP on the fate of the application.
The Limitations of a Letter of Protest
While a letter of protest can be a useful tool, LOP filers can run into several limitations:
No Opportunity for Oral Arguments: Unlike in a formal opposition proceeding, a filer of an LOP has no opportunity to give an oral argument or otherwise be heard.
No Direct Legal Standing: A third party filing a letter of protest has no direct legal standing in the registration process and can’t compel the USPTO to act in any specific way.
Evidence Restrictions: Only publicly available relevant evidence is acceptable to submit with an LOP.
Limitations on Grounds for Challenge: Certain grounds, such as fraud or abandonment, cannot be challenged via a letter of protest.
Conclusion
A letter of protest is a valuable mechanism for third parties wishing to influence the fate of a pending trademark application. Filing an LOP while a pending application is being evaluated can be an easy and cost-effective way to prevent potential conflicts, saving time and money later in the process.
Our firm regularly advises clients on and litigates trademark issues, including helping companies and brands enforce their trademarks. Feel free to contact us if we can be of help.