A letter of protest is a legal tool that lets you inform an examiner that there are grounds for refusing to register a trademark. Similar to an opposition, a letter of protest can only be filed against pending applications. If the trademark is already registered, the person interested in challenging the trademark may consider other options, such as cancellation proceedings.
Peculiarities of filing a letter of protest
If you become aware that a trademark has been filed and, in your opinion, there are grounds for refusing to register the trademark, you can contact the USPTO with a letter of protest under the following conditions:
- The letter of protest is submitted on time;
- There are grounds for refusing to register the trademark for which you are submitting the letter of protest.
The grounds for refusal may include: similarity and identity with a previously registered trademark or one submitted for registration; descriptiveness of the trademark or the fact that the trademark is generic; and some other grounds. However, if the reason is similarity to a common law trademark, the letter of protest will not be accepted. In this case, it is worth considering other tools, in particular, filing an opposition.
You might also be interested: Opposition to Trademark Registration in the U.S.: What Foreign Applicants Need to Know
Compliance with the formal requirements of the letter of protest, as well as determining and justifying the grounds for refusal to register a trademark, requires special knowledge. Although you can prepare the letter of protest yourself, it is recommended that you engage a trademark attorney.
There is a fee of $150 for filing a letter of protest. Compared to filing the opposition, a letter of protest involves a lower fee and a less complicated procedure. Therefore, if you become aware of a trademark that you believe should not be registered, it is more advisable to file a letter of protest before its publication rather than to wait for publication and the opposition period.
Filing a letter of protest regarding several applications
In case the applicant has filed several applications that you believe should not be registered, you shall file a letter of protest for each application separately and pay the fee for filing each. For instance, the applicant has filed two trademarks: a word mark that is similar to your registered trademark and a combined trademark (the same word part and a logo). If you believe that the combined trademark is also similar to your registered trademark, consider the possibility of filing two letters of protest.
Deadlines for filing a letter of protest
A letter of protest can only be filed regarding a filed application. It is advisable to file a letter of protest before the application is published, and ideally even before the Office Action by the examiner is issued. If the application has been published but 30 days have not yet passed for filing an opposition, you can file a letter of protest, but then the evidence must establish a prima facie case for refusal. This standard of evidence is higher than if you were to submit evidence prior to the publication of the trademark application. If you file a letter of protest after the 30-day period has elapsed, your letter of protest will be denied.
A letter of protest may be filed both in relation to applications filed under the national procedure with the USPTO and concerning applications filed in the US under the Madrid Protocol. A letter of protest to the latter must be filed before the 18-month deadline after the application was transmitted to the USPTO from the International Bureau.
Who can file a letter of protest
Unlike opposition, where the person filing the opposition must have standing, any person can file a letter of protest. For example, if you become aware that a trademark has been filed that is a descriptive term in your industry or any other industry, you can prepare and file a letter of protest. Similarly, if you know that a trademark has been filed that reproduces the name of a famous person, such as a singer, you can file a letter of protest even if you have no direct connection to the singer.
Consideration of the letter of protest
The letter of protest is reviewed by the Deputy Commissioner for Trademark Examination Policy. The Commissioner may refuse to attach the letter of protest to the application, in particular if the requirements for submitting the letter of protest are not met. If the requirements are complied with and the evidence is relevant and supports the grounds for refusal, the evidence will be included in the application record for further consideration by the examining attorney.
There are requirements for the format of different types of evidence. For example, if you submit websites as evidence, you must include a link to the URL and indicate the date of access to the website. Such nuances are very important as they may affect the consideration of the letter of protest and the outcome of its filing. A trademark attorney is knowledgeable about the aspects of such a submission, and working with them can contribute to the effective use of resources and correct argumentation.
A letter of protest is usually reviewed within 60 days. The protester will receive information about the status of the review.
If you are interested in exploring the possibility of filing the letter of protest or need legal assistance with the formulation of arguments, reach trademark attorney Mariya Ortynska at [email protected] or by phone at 9147035632.