Trademarks help businesses stand out in competitive markets. They protect names, logos, and slogans linked to goods or services. Sometimes, others try to register similar marks that may cause confusion. A trademark owner can respond by filing a letter of protest. This USPTO tool allows you to present evidence against a pending mark. It helps avoid costly litigation by addressing issues early in the process.

A letter of protest is a tool used during the trademark application review process. It lets third parties submit relevant evidence. This evidence helps the USPTO examiner evaluate if the mark should be registered. Unlike formal opposition proceedings, it is not adversarial or expensive. Letters of protest are useful in cases of likely confusion with existing marks. They also address generic or descriptive terms that may not qualify for protection.

While letters of protest can be powerful tools, they must comply with stringent requirements to be considered by the USPTO. The USPTO will reject a submission if it violates Rule 2.149 or addresses issues already resolved by the examiner. This also applies when the Trademark Act bars acceptance. However, if the letter of protest complies with Rule 2.149, the Deputy Commissioner may still forward the evidence for consideration. This is permitted in cases where the protestor presents significant additional evidence or where the examining attorney clearly erred in their consideration, potentially leading to a registration in violation of the Trademark Act or its rules. TMEP §1715.

Letters of protest are most commonly used in specific situations. These include objections to the registration of generic or descriptive terms, challenges based on
likelihood of confusion with federally registered marks or prior-pending applications, and requests to suspend prosecution due to pending litigation involving infringement claims. Other examples involve notifying the USPTO of inappropriate use of registered marks in application descriptions, improperly claimed specimens of use, or priority claims under international treaties. TMEP §1715.01. Such evidence must be objective, factual, and properly formatted to comply with USPTO requirements, ensuring it can assist the examining attorney in making an informed decision. TMEP §1715.05.

One of the primary advantages of letters of protest is their ability to serve as a low-cost alternative to litigation. Filing a letter of protest can address potential
registration issues early in the process, saving trademark holders significant time and resources. By presenting clear and objective evidence to the USPTO, a third party can ensure that the integrity of the trademark system is upheld while avoiding the complexities of court proceedings. This process is especially valuable in protecting industries from the monopolization of generic or descriptive terms, ensuring a fair and competitive marketplace.

Filing a letter of protest involves several key steps:

The submission must then be filed through the USPTO’s online Trademark Electronic Application System (TEAS), adhering to strict formatting and timeliness requirements, such as filing within 30 days of the application’s publication. TMEP §1715.02. The USPTO’s Deputy Commissioner reviews the submission to determine whether the evidence complies with applicable rules. If compliant, the evidence is included in the application record for the examining attorney’s consideration. TMEP §1715.03.

While letters of protest are a powerful tool, they require meticulous preparation to meet the USPTO’s exacting standards. Non-compliant submissions are rejected outright, leaving no recourse for the protestor (TMEP §1715.07). This is why seeking professional assistance can be critical. Experienced trademark attorneys understand the nuances of the process, ensuring that the evidence provided is both relevant and persuasive. At Twisdale Law, PC, we help clients identify the most effective grounds for protest, compile compelling evidence, and navigate the procedural complexities to maximize the likelihood of a favorable outcome.

In conclusion, letters of protest offer trademark holders a strategic, cost-effective method to address problematic trademark applications before they are registered. By acting early and leveraging this procedural tool, businesses can protect their brand identities while avoiding the financial and legal burdens of litigation. For tailored advice and professional assistance in filing letters of protest, consult with Twisdale Law, PC, where we are committed to helping clients safeguard their valuable trademarks and maintain a competitive edge.