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

October 2017 Edition of the TMEP

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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.