BitLaw

1715.04    Information for Parties Filing Letter of Protest

Third parties who object to the registration of a mark in a pending application must never contact an examining attorney directly, either by telephone or in writing.  Instead, they may submit a written request to the USPTO entitled "LETTER OF PROTEST." The letter of protest should include only a simple statement of the proposed legal grounds for refusing registration or issuing a requirement, with succinct, factual, objective evidence to support the refusal or requirement, and should not include arguments.

Because letters of protest are not part of the official application record, they must be properly designated and submitted to the USPTO. In order to ensure their proper routing and processing, the Office recommends that letters of protest be filed electronically via the Trademark Electronic Application System ("TEAS"). A separate letter of protest, including relevant evidence, must be filed for each individual application that is being protested. See TMEP §1715.04(a), (b) regarding the nature and format of evidence to be included with a Letter of Protest. In TEAS, the Letter of Protest form can be accessed by clicking on the link entitled "Petition Forms" at http://www.uspto.gov/trademarks/teas/. Otherwise, letters of protest should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy to the following fax number: 571-273-0032. This is the only fax number that may be used. Letters of protest may not be submitted by e-mail. Failure to submit the letter of protest properly may result in it being considered untimely.

Letters of protest with significant amounts of evidence may be sent via the United States Postal Service as first class mail, and addressed as follows:

Letter of Protest

ATTN: Deputy Commissioner for Trademark Examination Policy

600 Dulany Street

Alexandria, VA 22314-5793

Duplicate copies of letters of protest regarding the same application should not be sent (e.g., once electronically and then by mail or fax). Submission of duplicate documents can delay processing.

Submissions relating to a letter of protest, including requests for copies of letters of protest ( see TMEP §1715.05), should not include a request for a return receipt. If a protestor hand delivers the letter of protest or uses a private courier service, the letter of protest must be delivered to the attention of the Deputy Commissioner for Trademark Examination Policy at the Trademark Assistance Center, James Madison Building - East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, and be clearly identified as a letter of protest.

A protestor will always receive a response from the Deputy Commissioner accepting, denying, or holding moot the letter of protest, and should generally receive the response within 60 days of filing the letter. The protestor should monitor the application status by checking the TSDR database at http://tsdr.uspto.gov/ to determine whether an action accepting the letter of protest has been taken. This information will be in the public record only if the letter of protest is accepted. If a protestor has not received a response within six months of submitting a letter of protest, the protestor should contact the Petitions Office to confirm receipt of the letter of protest.

Protestors should continue to monitor the status of the application being protested because the application may be approved for publication, republication, or issuance of a registration even after a letter of protest is accepted. Ongoing monitoring will ensure protestors the opportunity to take other action (such as filing a notice of opposition) if the refusal or requirement raised as a result of the evidence referred by the letter of protest procedure is successfully overcome by the applicant. A protestor may file a second letter of protest after publication only if a substantially different basis for filing the letter of protest is raised or significant additional evidence is provided that clearly establishes a prima facie case for refusal of registration.