1715.03(c) Jurisdiction of Application when a Letter of Protest Is Accepted After Publication
As a general rule, after publication, the examining attorney does not have jurisdiction to act on an application. TMEP §1504.04. Therefore, upon acceptance of a letter of protest filed after publication and before issuance of the registration or notice of allowance, the Commissioner for Trademarks will restore jurisdiction of the application to the examining attorney. The Commissioner will also restore jurisdiction when a letter of protest is accepted and an extension of time to file an opposition has been filed. However, if an opposition has been instituted, the Board has jurisdiction over the application. TMEP §1504.02. Therefore, upon request, the Board will generally restore jurisdiction and remand the application to the examining attorney. See TBMP §215 for further information concerning the effect of a letter of protest when an opposition or request for extension of time to oppose has been filed.
If the letter of protest concerns a mark in an intent-to-use application where a notice of allowance has issued, the examining attorney has jurisdiction. 37 C.F.R. §2.84(a). If the Deputy Commissioner determines that the letter of protest should be accepted and a statement of use has not been filed, the USPTO will cancel the notice of allowance and refund any fees paid for requests for an extension of time to file a statement of use. Formal restoration of jurisdiction by the Commissioner is unnecessary. TMEP §1106.03. Furthermore, if a statement of use has been filed, the examining attorney has jurisdiction and must review the statement of use and include any issues relevant to the statement of use in the Office action resulting from the letter of protest. If an Office action regarding the statement of use has already issued, the examining attorney must issue a supplemental action regarding the refusals or requirements resulting from the letter of protest and incorporating by reference or restating any other outstanding refusals or requirements.