TMEP 1715: Letters of Protest in Pending Applications

This is the October 2015 Edition of the TMEP

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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).