TMEP 1715.03(b): Timely Filing of Letter of Protest

October 2017 Edition of the TMEP

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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.