LETTERS OF PROTEST


What are the Legal Basis (allowed grounds) for a Letter of Protest? Here are the selections from the USPTO TEAS electronic filing form.


Legal Basis*

*What is the legal basis for your letter of protest? (More than one option can be selected.) Please note that prior use of the mark, a dispute over ownership of mark, or issues of fraud are NOT an appropriate legal basis for filing a letter of protest and will result in the denial of the letter of protest.


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Letter of Protest Practice Tips from http://www.uspto.gov/trademark/trademark-updates-and-announcements/letter-protest-practice-tip


A letter of protest is an informal procedure that allows third parties to bring to the attention of the USPTO evidence bearing on the registrability of a mark. A letter of protest will only be accepted if it presents an issue that can be dealt with by an examining attorney in the course of the ex parte examination of a trademark application. Trademark Manual of Examining Procedure (TMEP) §1715.01 The letter of protest procedure applies only to pending applications and is intended to aid in examination without causing undue delay and without compromising the integrity and objectivity of the ex parte examination process.

The most common grounds for accepting a letter of protest include: likelihood of confusion with a U.S. trademark registration or prior pending application; descriptiveness/genericness of the mark, use of a registered mark in the identification of the goods/services, or a false association with the protestor. A letter of protest should not be submitted, and will never be accepted, if the issue presented relates to: common-law prior use, an ownership dispute, fraud, or a mere disagreement with the examination conducted by the examining attorney or with the examining attorney's exercise of judgment. Issues such as these are more appropriately handled in an inter partes proceeding before the Trademark Trial and Appeal Board. Further, the USPTO denies letters of protest that do not include factual, objective evidence.

Some helpful tips regarding the procedure for filing a letter of protest, and the nature of the evidence required, are listed below.


When/How to File

File the letter of protest as soon as possible after the subject application is filed and preferably before publication. Pre-publication letters of protest are accepted if the evidence is relevant and supports a reasonable ground for refusal. After publication, a letter of protest is only accepted if the evidence supports a clear error on the part of the USPTO in approving the mark for publication. A letter of protest filed after the thirty-day opposition period is denied as untimely.

Always file online using the Trademark Electronic Application System (TEAS). Click on "Petition Forms" and choose form number 10, "Letter of Protest." [Direct link is http://teas.uspto.gov/ccr/lop]

Always provide a correspondence address since letter of protest decisions are sent by first-class mail and not by e-mail.

Send the letter of protest ONLY once- do NOT send electronically and then again by facsimile or mail.

Clearly identify the grounds for the refusal or requirement you would like considered.

If you wish to identify multiple prior pending applications and registrations that could support a likelihood of confusion refusal, the applications and registrations should be listed on a separate chart clearly identifying the registration or serial number(s), the mark(s), and the identified relevant goods or services with the appropriate International class number(s).

If the letter of protest evidence exceeds 75 pages, you must include an index of the evidence but an index is highly recommended for all submissions of evidence to assist in analyzing the material. The index should provide a concise factual description of each category or form of evidence included and should never identify the protestor or contain arguments.

If the letter of protest applies to more than one application, a separate letter of protest for each application must be filed.


Appropriate Evidence

Submit factual, objective evidence that is relevant to examination of the mark. Only evidence relevant to the grounds for protest will be forwarded to the examining attorney if the letter of protest is accepted. The letter of protest itself, and any arguments included therein, is not forwarded to the examining attorney for consideration.

Evidence submitted should be succinct in nature and consist of quality submissions that are relevant to the grounds being considered and support a reasonable ground for making the refusal or issuing the requested requirement.

If the issue is a likelihood of confusion with federally registered marks or prior pending applications and the goods/services are identical, you need only submit the relevant registration or application serial number(s). Copies of registration certificates or printouts from the USPTO database are not needed.

If the issue is a likelihood of confusion and the goods and services are not identical, then objective third party evidence showing the relatedness of the goods/services should be provided.

If the issue is descriptiveness/genericness of the mark, evidence showing use by others of the mark or portions of the mark in a descriptive or generic manner, or excerpts from the dictionary showing the meaning of the mark, is appropriate. However, merely submitting a list of web sites is not sufficient and a letter of protest merely including such a list will be denied. See Trademark Manual of Examining Procedure (TMEP) §710.01(b) for guidance on the transitory nature of Internet postings.

If the issue is descriptiveness/genericness and the evidence includes third-party registrations, a mere list of the registrations or a copy of a search report is not proper evidence of such registrations. Copies of the registration certificates should be included. See TMEP §710.03 regarding evidence of third-party registrations.

TSDR printouts of the prosecution history for the protested application should not be submitted. This information is part of the USPTO records and will be reviewed as needed.

If new additional evidence may support a refusal already made by the examining attorney, this evidence may be submitted and a letter of protest might be accepted if the evidence is not redundant.

NEVER include with the letter of protest the following: information of alleged prior use; evidence of alleged incidents of actual confusion; or alleged fraudulent activity or declarations supporting your letter of protest. These matters and evidence are more appropriate for inter partes proceedings.


TMEP 1715 LETTERS OF PROTEST IN PENDING APPLICATIONS

from Trademark Manual of Examining Procedure (TMEP) July 2015


TMEP 1715    Letters of Protest in Pending Applications

A letter of protest is an informal procedure created by and existing at the discretion of the USPTO, whereby third parties may bring to the attention of the USPTO evidence bearing on the registrability of a mark.  The letter of protest procedure applies only to pending applications and is intended to aid in examination without causing undue delay and without compromising the integrity and objectivity of the ex parte examination process.  See In re BPJ Enter's., Ltd., 7 USPQ2d 1375 (Comm'r Pats. 1988); In re Pohn, 3 USPQ2d 1700 (Comm'r Pats. 1987).


Letters of protest are reviewed in 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.  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 Enter's., 7 USPQ2d at 1378.


If a third party attempts to contact an examining attorney regarding a letter of protest, the examining attorney will refer the third party to the Deputy Commissioner’s Office.  If an examining attorney receives a letter of protest, the letter will be referred to the Deputy Commissioner’s Office for consideration.  If the letter of protest is mistakenly entered in the record as a document received from the applicant, all evidence of that receipt will be expunged from the application record.


The Deputy Commissioner will accept a letter of protest filed before publication where it is determined that the evidence is relevant and supports any reasonable ground for refusal appropriate in ex parte examination.  The Deputy Commissioner will accept 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 (see TMEP §706.01) by the USPTO.  See TMEP §§1715.02 and 1715.03–1715.03(e).


TMEP 1715.01    Appropriate and Inappropriate Subjects to Be Raised in Letter of Protest

It is inappropriate to use the letter of protest procedure to delay registration or to present purely adversarial arguments.  The USPTO denies letters of protest that merely present adversarial arguments that registration should be refused.  Adversarial arguments in letters of protest are not sent to the examining attorney.  These objections to registration should be made in an opposition proceeding after publication or, in the case of the Supplemental Register, a cancellation proceeding after registration.  The letter of protest procedure may not be used to circumvent the requirements for filing an opposition.  The USPTO also denies letters of protest that do not include factual, objective evidence.


TMEP 1715.01(a)    Issues Appropriate as Subjects of Letters of Protest

Appropriate subjects for letters of protest concern issues that the examining attorney has the authority and resources to pursue to a legal conclusion without further intervention by third parties.  The following are examples of the most common areas of protest:


(1) A third party files an objection to the registration of a term because it is allegedly generic or descriptive.  The objection must be accompanied by evidence of genericness or descriptiveness.  The evidence should be objective, independent, and factual evidence that the examining attorney may use to support the suggested refusal.  Personal opinions are subjective and may be self-serving, and are not forwarded to the examining attorney.  If the letter of protest is accepted, the examining attorney is informed that an objection to registration has been filed on the ground that the mark is generic or descriptive, and is given a copy of any factual evidence submitted with the letter of protest.

(2) A third party notifies the USPTO of the existence of a federally registered mark or prior-pending application and alleges that there is a likelihood of confusion between this mark and the mark in the application that is the subject of the letter of protest.  If the letter of protest is accepted, the examining attorney is notified that an objection to the registration of the mark has been made on the ground of an alleged likelihood of confusion with a registered mark or prior pending application, and is referred to the registration or application information as it appears in the automated records of the USPTO.

(3) A third party files a request that prosecution of an application be suspended because of pending litigation claiming infringement based on the applicant’s use of the applied-for mark.  The litigation must be specifically identified and a copy of the relevant pleadings must be enclosed.  The litigation must involve a federally registered mark or prior pending application of the protestor, and the protestor must allege that there is a likelihood of confusion between this mark and the mark in the application that is the subject of the letter of protest.  Normally, a court proceeding is not considered relevant to the registrability of a mark unless the remedy requested in the proceeding is cancellation, abandonment, or amendment of the application that is the subject of the letter of protest.  If the letter of protest is accepted, the examining attorney is informed that a request for suspension has been received based on an alleged likelihood of confusion with a registered mark or prior pending application that is the subject of pending litigation.  Copies of the relevant pleadings are placed in the record.

(4) A third party notifies the USPTO that registered marks are being used inappropriately in identifications of goods and services for particular applications.  (See TMEP §1402.09.)

(5) A third party notifies the USPTO of the existence of a subsequently filed U.S. application and alleges that the application contains a proper claim of priority under §44(d) to which the third party is entitled and that there is a likelihood of confusion between its mark and the mark in a prior-filed application that is the subject of the letter of protest. See TMEP §§1003.05 and 1904.01(e).

(6) A third party notifies the USPTO of the existence of an application filed under §66(a) with an earlier filing date or a priority claim to which the third party is entitled and that there is a likelihood of confusion between its mark and the mark in the application that is the subject of the letter of protest, and the §66(a) application may not have been entered into the USPTO database at the time the application that is the subject of the letter of protest was examined. See TMEP §§1904.01(b) and 1904.01(e).

(7) A third party notifies the USPTO that the foreign application relied upon as the basis for a claim of priority under §44(d) is not the first application filed in a treaty country and provides evidence of the existence of an earlier-filed foreign registration or pending foreign application. See TMEP §1003.01.


TMEP 1715.01(b)    Issues Inappropriate as Subjects of Letters of Protest

The following are examples of issues that are not appropriate to raise in letters of protest:

(1) A third party claims earlier common-law use of a trademark but does not have a federal registration or previously filed pending application for that mark.  The examining attorney can only consider registrations and prior-pending applications when determining likelihood of confusion.  Earlier common-law use, state registrations, and other claims based on evidence other than federal registrations and prior-pending applications for federal registration are not appropriate for presentation to examining attorneys during ex parte examination.

(2) A third party claims that the applicant is not the proper owner of the mark.  This issue requires proof that is beyond the scope of authority of an examining attorney to require during ex parte examination.  In re Apple Computer, Inc., 57 USPQ2d 1823 (Comm'r Pats. 1998).

(3) Numerous third parties set forth the opinion that the mark should not register, but do not offer any evidence or legal reason to support the refusal.  The letter of protest procedure should not be used as a means for expressing public opinion about a particular mark.  The trademark registration process is governed by statutory laws and federal regulations.  Public opinion may not be used to influence the application process; therefore, mass mailings by special-interest groups will not be made part of the record.  Letters of protest that raise the same objection to registration submitted by five or more different parties will be considered a mass mailing.

(4) A third party requests that prosecution of an application be suspended or refused because of pending litigation, but does not provide proof that the pending litigation includes grounds upon which the Office can suspend or refuse registration (e.g., the litigation does not involve a federally registered mark or prior-pending application of the protestor).

(5) A third party claims that the applicant has committed fraud against the USPTO.


TMEP 1715.02    Letter of Protest Filed Before Publication

TMEP 1715.02(a)    Standard of Review for Letter of Protest Filed Before Publication

The Deputy Commissioner will accept a letter of protest filed before publication in all cases where it is determined that the evidence is relevant and supports any reasonable ground for refusal appropriate in ex parte examination.  The letter of protest will be reviewed and decided upon even if the examining attorney has not yet taken a first action in the application that is the subject of the letter of protest.  Upon acceptance of a letter of protest, the Deputy Commissioner will forward the relevant evidence (but not the letter of protest itself) to the examining attorney.  Letters of protest filed before publication will be denied if they merely present purely adversarial arguments, or are otherwise inappropriate.


A letter of protest filed before publication but reviewed by the Deputy Commissioner after publication will be reviewed under the pre-publication standard.  See TMEP §1715.02(b).


A letter of protest filed before publication will be dismissed as moot when the issue raised has already been considered by the examining attorney unless:  (1) the evidence provided by the protestor is significant additional evidence not currently of record in the application; or (2) the examining attorney clearly erred in his or her consideration of the issue and such error would result in the issuance of a registration in violation of the Trademark Act or applicable rules.  See TMEP §706.01 regarding clear error.


TMEP 1715.02(b)    Action by Examining Attorney Before Publication

Under the standard for accepting a pre-publication letter of protest, the examining attorney is not required to issue a refusal as a result of the acceptance.  The examining attorney is required only to consider the evidence and make an independent determination whether to issue the requirement or refusal requested in the letter of protest.  The examining attorney need not inform the applicant that a letter of protest was accepted unless he or she is issuing a refusal based upon the information provided with the letter of protest.  The prosecution history of the application will reflect the acceptance of a letter of protest and a memorandum accepting the letter of protest and all relevant evidence will become part of the official record.  If the examining attorney decides against issuing the requirement or refusal, the prosecution history of the application in the Trademark database will be updated to indicate “LETTER OF PROTEST EVIDENCE REVIEWED.”


Letters of Protest Filed Before Publication but Accepted After Publication


In certain circumstances, a letter of protest filed before publication may not be reviewed by the Deputy Commissioner until after publication or during the period when the USPTO cannot withdraw the mark from publication.  Such letters are reviewed under the pre-publication standard.  If accepted and referred to the examining attorney after publication, the examining attorney is not required to issue a refusal or requirement as a result of the acceptance.  However, the examining attorney must consult with his or her managing attorney to determine whether a refusal or requirement is warranted.


If it is determined that a refusal or requirement must be made after publication and prior to the filing of a notice of opposition or issuance of a notice of allowance, the examining attorney must request that the Director restore jurisdiction so that the examining attorney may take action on the application.  See TMEP §1504.04.  If a notice of opposition has been filed, the examining attorney must request that the Board remand the application so that the examining attorney may take the specified action.  See TMEP §1504.05.


If the letter of protest concerns a mark in an intent-to-use application where a notice of allowance has issued, the examining attorney has jurisdiction over the application.  37 C.F.R. §2.84(a).  If the examining attorney determines, after consulting with his or her managing attorney, that a refusal or requirement must be made, and a statement of use has not been filed, before issuing an Office action, he or she must contact the ITU/Divisional Unit to cancel the notice of allowance and refund any fees paid for requests for an extension of time to file a statement of use.  See TMEP §1106.03.


If the letter of protest concerns a mark for which a statement of use has been filed, the examining attorney has jurisdiction over the application.  If the examining attorney determines, after consulting with his or her managing attorney, that a refusal or requirement must be made, and no action has been taken on the statement of use, he or she must review the statement of use and include any issues relevant to the statement of use in the Office action resulting from the letter of protest.  If an Office action regarding the statement of use has already issued, the examining attorney must issue a supplemental action regarding the refusal(s) or requirement(s) resulting from the letter of protest and incorporating by reference or restating any other outstanding refusal(s) or requirement(s).


TMEP 1715.03    Letters of Protest Filed on the Date of Publication or After Publication

TMEP 1715.03(a)    Standard of Review for Letters of Protest Filed on the Date of Publication or After Publication

When a letter of protest is filed more than 30 days after the date of publication, the letter of protest will generally be denied as untimely.  See TMEP §1715.03(b).


When a letter of protest is filed on the date of publication or within 30 days after the date of publication, the letter of protest will be accepted only where publication of the mark constituted clear error, because the evidence included with the letter of protest establishes a prima facie case for refusal of registration.  In re BPJ Enter's. Ltd., 7 USPQ2d 1375, 1379 (Comm’r Pats. 1988). If evidence is not included, the letter of protest will be denied. The USPTO also denies letters of protest that merely present adversarial arguments that registration should be refused.  See TMEP §706.01 regarding clear error and TMEP §1715.04 regarding the nature of relevant evidence.


Letters of protest regarding applications that will issue on the Supplemental Register must be submitted as soon as possible after the filing of the application. If the subject application enters the phase where it cannot be withdrawn from issue while consideration of the letter of protest is pending, the protest will be dismissed as untimely. The Office cannot consider a letter of protest after registration.


TMEP 1715.03(b)    Timely Filing of Letter of Protest

The most appropriate time for filing a letter of protest is before publication of a mark, because the purpose of the letter of protest is to assist the USPTO in the examination of an application for registration by bringing to its attention evidence that may support a refusal of registration. Letters of protest filed more than 30 days after publication are generally denied as untimely, because a letter of protest filed after publication may delay the registration process significantly.  In re BPJ Enter's. Ltd., 7 USPQ2d 1375, 1378 (Comm’r Pats. 1988).  This applies to all applications, including intent-to-use applications under 15 U.S.C. §1051(b).  In re G. Heileman Brewing Co., Inc., 34 USPQ2d 1476, 1478 (Comm’r Pats. 1994).  


Exceptions to the 30-day rule are made only in special circumstances.  In re Pohn, 3 USPQ2d 1700, 1703 (Comm’r Pats. 1987). For example, where the protestor could not earlier have obtained the information provided, a letter of protest may be accepted. Special circumstances may be established upon a showing that all of the evidence provided in the letter of protest was not in existence prior to publication, but to justify accepting such a letter of protest, the evidence must establish a prima facie case for refusal. However, the fact that a specimen was not of record prior to publication would not by itself be considered a special circumstance that would support allowing a letter of protest more than 30 days after publication.


If a letter of protest is filed against an application that is the subject of a request for extension of protection of an international registration under Trademark Act §66(a), in addition to meeting the timeliness standards set forth above for all letters of protest, it must also satisfy the timeliness requirements for refusals under Trademark Act §68(c) and Article 5 of the Madrid Protocol. In essence, a letter of protest against a §66(a) application must be filed before the 18-month deadline after the application was transmitted to the USPTO from the IB. A letter of protest will be dismissed if it is more than 18 months from the date the IB transmitted the protested application to the USPTO. See TMEP §1904.03(a).


Filing a request for extension of time to oppose does not extend the 30-day deadline for filing a letter of protest.


The letter of protest procedure applies only to pending applications.  The Director has no authority to cancel a registration in order to consider a letter of protest.  Therefore, a letter of protest will be denied as untimely if the mark registers before issuance of the decision on the letter.  Once the mark has registered, the protestor’s remedy is to file a petition to cancel with the Board.  


TMEP 1715.03(c)    Jurisdiction of Application when a Letter of Protest Is Accepted After Publication

As a general rule, after publication, the examining attorney does not have jurisdiction to act on an application.  TMEP §1504.04.  Therefore, upon acceptance of a letter of protest filed after publication and before issuance of the registration or notice of allowance, the Commissioner for Trademarks will restore jurisdiction of the application to the examining attorney.  The Commissioner will also restore jurisdiction when a letter of protest is accepted and an extension of time to file an opposition has been filed.  However, if an opposition has been instituted, the Board has jurisdiction over the application. TMEP §1504.02.  Therefore, upon request, the Board will generally restore jurisdiction and remand the application to the examining attorney.  See TBMP §215 for further information concerning the effect of a letter of protest when an opposition or request for extension of time to oppose has been filed.


If the letter of protest concerns a mark in an intent-to-use application where a notice of allowance has issued, the examining attorney has jurisdiction.  37 C.F.R. §2.84(a).  If the Deputy Commissioner determines that the letter of protest should be accepted and a statement of use has not been filed, the USPTO will cancel the notice of allowance and refund any fees paid for requests for an extension of time to file a statement of use.  Formal restoration of jurisdiction by the Commissioner is unnecessary.  TMEP §1106.03.   Furthermore, if a statement of use has been filed, the examining attorney has jurisdiction and must review the statement of use and include any issues relevant to the statement of use in the Office action resulting from the letter of protest.  If an Office action regarding the statement of use has already issued, the examining attorney must issue a supplemental action regarding the refusals or requirements resulting from the letter of protest and incorporating by reference or restating any other outstanding refusals or requirements.


TMEP 1715.03(d)    Action by Examining Attorney After Publication

If the USPTO accepts a letter of protest filed on the date of publication or after publication, the examining attorney must issue the refusal or requirement, except in unusual circumstances.  The examining attorney must inform the applicant that a letter of protest was accepted.  If the notice of allowance was cancelled, the examining attorney must so inform the applicant.  Before issuing the Office action with the refusal or requirement, the examining attorney must have the action reviewed by his or her managing attorney.


However, the acceptance of the letter of protest is not a final determination by the USPTO that registration must be refused.  In unusual circumstances, the examining attorney may discover additional evidence that would justify approval of the application for registration after acceptance of a letter of protest, or the applicant may overcome the refusal or satisfy the requirement.  If a letter of protest is accepted after publication and the examining attorney later determines that the mark should be approved for issuance of a registration or notice of allowance, the examining attorney must obtain permission from the Administrator for Trademark Policy and Procedure (“Administrator”) before approving the application for issue.  After conferring with the Administrator, an appropriate Note to the File must be entered in the record.


TMEP 1715.03(e)    Letter of Protest Does Not Stay or Extend Opposition Period

Filing a letter of protest does not stay or extend the opposition period.  Therefore, a party who files a letter of protest after publication should also file a timely request(s) for extension of time to oppose under 15 U.S.C. §1063 with the Trademark Trial and Appeal Board.  See TBMP §215 for further information.  The Board will not suspend a potential opposer’s time to file a notice of opposition because a letter of protest has been filed.  See notice at 68 Fed. Reg. 55748, 55760 (Sept. 26, 2003).


TMEP 1715.04    Information for Parties Filing Letter of Protest

Third parties who object to the registration of a mark in a pending application must never contact an examining attorney directly, either by telephone or in writing.  Instead, they may submit a written request to the USPTO entitled “LETTER OF PROTEST.” The Office recommends that letters of protest be filed electronically via the Trademark Electronic Application System (“TEAS”). See TMEP §1715.04(a). A separate letter of protest, including relevant evidence, must be submitted for each application being protested. Each letter of protest must include the name and address of the protestor so that a response may be sent.


If the letter of protest is accepted, only evidence relevant to examination of the mark, or the registration numbers or pending application serial numbers raised as potential cites, are forwarded to the examining attorney. Therefore, the letter of protest should include only a simple statement of the proposed legal grounds for refusing registration or making a requirement, with succinct, factual, objective evidence to support the refusal or requirement, and should not include arguments. If the evidence is not included, the letter of protest will be denied.


Note that a letter of protest should not include information or evidence concerning prior use, actual confusion, or fraudulent activity. These are not appropriate grounds for refusing registration during ex parte examination and must be addressed in an inter partes proceeding before the Trademark Trial and Appeal Board or a civil court. See TMEP §1715.01 for appropriate and inappropriate subjects to be raised in letter of protest.


The type of evidence relevant to the examination of the mark depends upon the nature of the objection raised. For example, if an objection is filed on the basis that a mark, or portion of a mark, is descriptive or generic, the protestor must submit factual, objective evidence, such as descriptive or generic use by others or excerpts from the dictionary showing the meaning of the mark. Merely submitting a list of web sites is not sufficient, and a letter of protest that only includes such a list will be denied. If third-party registrations are offered to show that the mark or a portion of the mark is descriptive, generic, or so commonly used that the public will look to other elements to distinguish the source of the goods or services, a mere list of the registrations or copy of a search report is not proper evidence of such registrations. Rather, copies of the registrations or the electronic equivalent thereof (i.e., printouts or electronic copies of the registrations taken from the electronic database of the USPTO) must be submitted. See TMEP §1207.01(d)(iii).


Generally, if an objection is based on a likelihood of confusion with existing federally registered marks or prior pending applications, and the goods and/or services are identical, third parties need only submit the relevant registration or application serial number(s). However, if there are multiple registration or application serial numbers that the protestor wants to be brought to the attention of the examining attorney, it is recommended that a chart listing the registration or serial numbers, the marks, and the goods and/or services be included. Such a chart must be provided on plain paper (not letterhead) or a PDF file with a plain background. To maintain the integrity of the ex parte examination process, the chart must not identify the protestor or its representatives or contain any arguments or persuasive language. If the goods and/or services are not identical, evidence of the relatedness of the goods and/or services must be included. Such evidence may include advertisements showing that the relevant goods/services are advertised together or sold by the same manufacturer or copies of registrations showing that such goods/services emanate from the same source. Note that a list of registration numbers, a chart containing the registration numbers and identified goods/services, or a copy of a search report is not proper evidence to show the relatedness of the goods or services in the registrations. Rather, copies of the registrations or the electronic equivalent thereof (i.e., printouts or electronic copies of the registrations taken from the electronic database of the USPTO) must be submitted. See TMEP §1207.01(d)(iii).


A separate itemized index must accompany any submission of evidence exceeding 75 pages or the letter of protest may not be considered. Moreover, the Office encourages the use of an index in all letters of protests that contain multiple forms of evidence as its aids in the consideration of the details of all the evidence provided by the protestor. The index must be provided on plain paper (not letterhead), or a PDF file with a plain background, and contain a concise factual description of each category or form of evidence included. To maintain the integrity of the ex parte examination process, the index must not identify the protestor or its representatives or contain any arguments or persuasive language.


TMEP 1715.04(a)    Submitting a Letter of Protest

Because letters of protest are not part of the official application record, they must be properly designated and submitted to the USPTO.  In order to ensure their proper routing and processing, the Office recommends that letters of protest be filed electronically via the Trademark Electronic Application System (“TEAS”). A separate letter of protest must be filed for each individual application that is being protested.  In TEAS, the Letter of Protest form can be accessed by clicking on the link entitled “Petition Forms” at http://www.uspto.gov/trademarks/teas/.  Otherwise, letters of protest should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy to the following fax number:  571-273-0032.  This is the only fax number that may be used.  Letters of protest may not be submitted by e-mail. Failure to submit the letter of protest properly may result in it being considered untimely.


Letters of protest with significant amounts of evidence may be sent via the United States Postal Service as first class mail, and addressed as follows:


Letter of Protest

ATTN:  Deputy Commissioner for Trademark Examination Policy

600 Dulany Street

Alexandria, VA 22314-5793


Duplicate copies of letters of protest regarding the same application should not be sent (e.g., once electronically and then by mail or fax). Submission of duplicate documents can delay processing.


Submissions relating to a letter of protest, including requests for copies of letters of protest (see TMEP §1715.05), should not include a request for a return receipt.  If a protestor hand delivers the letter of protest or uses a private courier service, the letter of protest must be delivered to the attention of the Deputy Commissioner for Trademark Examination Policy at the Trademark Assistance Center, James Madison Building - East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, and be clearly identified as a letter of protest.


TMEP 1715.04(b)    Tracking of Letter of Protest by the Protestor

A protestor will always receive a response from the Deputy Commissioner accepting, denying, or holding moot the letter of protest, and should generally receive the response within 60 days of filing the letter.  The protestor should monitor the application status by checking the TSDR database at http://tsdr.uspto.gov/  to determine whether an action accepting the letter of protest has been taken.  This information will be in the public record only if the letter of protest is accepted.  If a protestor has not received a response within six months of submitting a letter of protest, the protestor should contact the Petitions Office to confirm receipt of the letter of protest.


Protestors should continue to monitor the status of the application being protested because the application may be approved for publication, republication, or issuance of a registration even after a letter of protest is accepted.  Ongoing monitoring will ensure protestors the opportunity to take other action (such as filing a notice of opposition) if the refusal or requirement raised as a result of the evidence referred by the letter of protest procedure is successfully overcome by the applicant.  A protestor may file a second letter of protest after publication only if a substantially different basis for filing the letter of protest is raised or significant additional evidence is provided that clearly establishes a prima facie case for refusal of registration.


TMEP 1715.05    Requests for Copy of Letter of Protest

Any party who requests a copy of a letter of protest should mail the request to the Office of the Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia  22313-1451 or fax the request to 571-273-0032.  All requests should be directed to the attention of the Deputy Commissioner for Trademark Examination Policy.  Upon review of the letter of protest material, the Deputy Commissioner will usually forward a copy of the letter of protest and its attachment to the requester.  The Deputy Commissioner will deny the request for a copy of the letter of protest only if the letter of protest itself or its attachments contain material that would potentially be exempt from disclosure under the Freedom of Information Act (“FOIA”).  If, in the opinion of the Deputy Commissioner, any part of the letter of protest or its attachments should be exempt from disclosure under FOIA, the matter will be forwarded to the Office of General Counsel of the USPTO for further review.


TMEP 1715.06    Recourse After Denial of Letter of Protest

If the Deputy Commissioner denies a letter of protest, the protestor may pursue remedies otherwise available, such as an opposition proceeding, if the protestor complies with all relevant requirements and deadlines.  Filing a letter of protest does not stay or extend the time for filing a notice of opposition.  TMEP §1715.03(b).


The protestor may not file a request for reconsideration of the denial of the letter of protest with the Deputy Commissioner, because the request would unduly delay final disposition of the application.  In re BPJ Enter's. Ltd., 7 USPQ2d 1375, 1378 (Comm'r Pats. 1988).  However, the protester may petition the Director to review the Deputy Commissioner’s decision to deny the letter of protest under 37 C.F.R. §2.146(a)(3).


The Deputy Commissioner has broad discretion in determining whether to accept a letter of protest.  In any petition to review the denial of a letter of protest, the Deputy Commissioner’s action will be reversed only where there has been a clear error or abuse of this broad discretion.  In re Pohn, 3 USPQ2d 1700, 1702 (Comm’r Pats. 1987).


The protestor may not present additional evidence with the petition.  On petition, the Director will consider only the evidence that was properly before the Deputy Commissioner in acting on the letter of protest.  BPJ Enter's., 7 USPQ2d at 1378.

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