T.M.E.P. § 1715.03
Letters of Protest Filed After Publication
Executive summary:
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1715.03 Letters of Protest Filed After Publication
When a letter of protest is filed after publication, the Administrator will first determine whether the letter is timely, i.e., whether it was filed within 30 days of the date of publication. If not, the letter of protest will generally be denied. See TMEP §1715.03(a).
When a letter of protest is filed within 30 days after the date of publication, the Administrator will make an initial determination of whether publication of the mark constituted clear error, i.e. whether the protester presents prima facie evidence that supports a refusal of registration. In re BPJ Enterprises Ltd., 7 USPQ2d 1375 (Comm'r Pats. 1988).
If a mark has been published for opposition but no notice of allowance has issued, the examining attorney does not have jurisdiction to consider the information in the letter of protest. Therefore, if the Administrator determines that the letter of protest should be granted, the Administrator will submit a formal request to the Commissioner for Trademarks to restore jurisdiction of the application to the examining attorney. The Administrator will include copies of the relevant evidence with this request. If the Commissioner agrees that the letter of protest should be granted and restores jurisdiction to the examining attorney, the Administrator will grant the protest and refer the application with the relevant evidence to the examining attorney. If the Commissioner does not agree that the letter of protest should be granted, the Administrator will deny the letter of protest.
If a notice of allowance has issued in an application based on 15 U.S.C. 1051(b), the examining attorney has jurisdiction over the application, so a formal restoration of jurisdiction is unnecessary. Therefore, if the Administrator grants the letter of protest, the Administrator will make the relevant evidence part of the record for consideration by the examining attorney during examination of the statement of use.
1715.03(a) 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 applications. Circumstances may preclude filing during that period in certain cases. For example, the protester may not be aware of an application until publication, or the evidence relevant to registrability may not be available until after publication.
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 Enterprises Ltd., 7 USPQ2d 1375 (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 (Comm'r Pats. 1994).
Exceptions to the 30-day rule are made only in special circumstances, where the protestor could not earlier have obtained the information provided in the letter. In re Pohn, 3 USPQ2d 1700 (Comm'r Pats. 1987).
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.
1715.03(b) 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 (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).