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

This is the October 2015 Edition of the TMEP

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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.