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 Office recommends that letters of protest be filed electronically via the Trademark Electronic Application System (“TEAS”). See TMEP §1715.04(a). A separate letter of protest, including relevant evidence, must be submitted for each application being protested. Each letter of protest must include the name and address of the protestor so that a response may be sent.
If the letter of protest is accepted, only evidence relevant to examination of the mark, or the registration numbers or pending application serial numbers raised as potential cites, are forwarded to the examining attorney. Therefore, the letter of protest should include only a simple statement of the proposed legal grounds for refusing registration or making a requirement, with succinct, factual, objective evidence to support the refusal or requirement, and should not include arguments. If the evidence is not included, the letter of protest will be denied.
Note that a letter of protest should not include information or evidence concerning prior use, actual confusion, or fraudulent activity. These are not appropriate grounds for refusing registration during ex parte examination and must be addressed in an inter partes proceeding before the Trademark Trial and Appeal Board or a civil court. See TMEP §1715.01 for appropriate and inappropriate subjects to be raised in letter of protest.
The type of evidence relevant to the examination of the mark depends upon the nature of the objection raised. For example, if an objection is filed on the basis that a mark, or portion of a mark, is descriptive or generic, the protestor must submit factual, objective evidence, such as descriptive or generic use by others or excerpts from the dictionary showing the meaning of the mark. Merely submitting a list of web sites is not sufficient, and a letter of protest that only includes such a list will be denied. If third-party registrations are offered to show that the mark or a portion of the mark is descriptive, generic, or so commonly used that the public will look to other elements to distinguish the source of the goods or services, a mere list of the registrations or copy of a search report is not proper evidence of such registrations. Rather, copies of the registrations or the electronic equivalent thereof (i.e., printouts or electronic copies of the registrations taken from the electronic database of the USPTO) must be submitted. See TMEP §1207.01(d)(iii).
Generally, if an objection is based on a likelihood of confusion with existing federally registered marks or prior pending applications, and the goods and/or services are identical, third parties need only submit the relevant registration or application serial number(s). However, if there are multiple registration or application serial numbers that the protestor wants to be brought to the attention of the examining attorney, it is recommended that a chart listing the registration or serial numbers, the marks, and the goods and/or services be included. Such a chart must be provided on plain paper (not letterhead) or a PDF file with a plain background. To maintain the integrity of the ex parte examination process, the chart must not identify the protestor or its representatives or contain any arguments or persuasive language. If the goods and/or services are not identical, evidence of the relatedness of the goods and/or services must be included. Such evidence may include advertisements showing that the relevant goods/services are advertised together or sold by the same manufacturer or copies of registrations showing that such goods/services emanate from the same source. Note that a list of registration numbers, a chart containing the registration numbers and identified goods/services, or a copy of a search report is not proper evidence to show the relatedness of the goods or services in the registrations. Rather, copies of the registrations or the electronic equivalent thereof (i.e., printouts or electronic copies of the registrations taken from the electronic database of the USPTO) must be submitted. See TMEP §1207.01(d)(iii).
A separate itemized index must accompany any submission of evidence exceeding 75 pages or the letter of protest may not be considered. Moreover, the Office encourages the use of an index in all letters of protests that contain multiple forms of evidence as its aids in the consideration of the details of all the evidence provided by the protestor. The index must be provided on plain paper (not letterhead), or a PDF file with a plain background, and contain a concise factual description of each category or form of evidence included. To maintain the integrity of the ex parte examination process, the index must not identify the protestor or its representatives or contain any arguments or persuasive language.