A letter of protest is one of the several ways that an outside party can affect a trademark application filed by someone else.
Trademark applications undergo an examination or prosecution process that is primarily “ex parte,” which means one-sided or non-adversarial. In that process, the applicant files a trademark application and works only with the Trademark Office. There are, however, points in the application process at which it can become “inter partes,” or between two parties. The prime example of this is a trademark opposition proceeding, in which a third party can intercede in a trademark application and try to block its registration through a mini-, quasi-litigation in front of the Trademark Trial and Appeal Board.
Between these two extremes, a letter of protest serves as a way for a third party to put evidence in front of the trademark examiner without the party actually becoming involved in the examination itself.
Ostensibly, the Trademark Office uses a letter of protest to receive evidence relevant to the registrability of a trademark application. Practically, it is a tool that you can use to try to block someone’s trademark application.
In sum, a letter of protest is a letter written and submitted to the Trademark Office explaining the reasons why, based on evidence, a particular trademark application should not be registered. Although the Trademark Office is not obligated to accept the letter of protest, if it does, it will introduce that evidence into the protested trademark application’s record.
What are proper reasons for submitting a letter of protest?
When you file a letter of protest, the Trademark Office will receive and review it. Acting as a gatekeeper, a contractor or paralegal examines the letter first to see if it is even appropriate for forwarding to the trademark examiner. If you file for an inappropriate reason, the paralegal will block it there, and the trademark examiner will never even know of its existence. Therefore, it is important that you limit a letter of protest to only appropriate reasons. These include:
- Likelihood of Confusion: The trademark in the protested application is likely to cause confusion with a trademark already registered in the United States or a prior pending application for trademark.
- Descriptive or Generic Term: The trademark in the protested application is merely descriptive or generic for the applied-for goods or services.
- Primarily Geographically Descriptive or Misdescriptive: You can file a letter of protest presenting evidence regarding geographic significance of the mark or a term in the mark.
- False Connection: You can argue that the trademark implies a false connection with the protestor or another entity, such as a person, public figure, belief, or national symbol.
- Fails to Function: The trademark does not effectively function as a trademark because it is either a widely used term or slogan or a common message.
- Use of Registered Trademark: The identification of goods or services in the trademark application includes a registered trademark already owned by another party. This one is quite obscure but is nonetheless a proper basis to protest.
- Problematic Specimens of Use: The specimens of use in the protested application feature an image used by someone else, or are used without the applied-for mark in question, appear in other prior registrations or applications with different marks, or simply look to be photoshopped or fake. I have used this basis before to attack applications in which the applicant clearly printed a fake label or photoshopped its name onto an existing product. In one case, I found an applicant who had taken a photograph of a Tesla Powerwall, erased the TESLA from the device, and typed their own trademark on top of it. A Google Reverse Image Search found the original photograph, and I submitted that as evidence of a digitally-altered or fabricated specimen.
- Not in Lawful Use: If you have evidence that the trademark is not in use despite the owner’s statements that it is, you can file a letter of protest. Often, this bleeds into the problematic specimen issue identified above. Or, for example, if the trademark violates the Controlled Substances Act because it is used with certain cannabis-related goods, then it can be attacked for lack of lawful use.
- Potential Fraud: The trademark application includes a suspicious submission that violates USPTO rules. This could include evidence that the domicile address is improper, that the application record contains an email address for a party subject to an Order for Sanctions, or that the signatory – the party who signed on behalf of the applicant – is not actually authorized to do so.
- Related Litigation: The protested trademark is involved in pending litigation that involves a federally registered mark or prior pending application. If that that is the case, and the remedy requested in the court proceeding includes cancellation, abandonment or amendment of the protested application, you can attach a copy of the relevant pleading in the letter of protest.
Some of the above reasons are nuanced, rare, or just plain difficult to present and argue effectively. Please consider hiring an experienced trademark attorney before attempting to raise those grounds at the Trademark Office.
There are some reasons you should definitely not rely on to file a letter of protest:
- Common law prior use: You cannot assert that you or someone else used the trademark before the filing date of the application. An opposition or cancellation is the proper vehicle for this.
- Wrong owner: You cannot attack the application on the basis that the applicant is not the proper owner of the trademark.
- Disagreement: If you don’t like how the trademark examiner reviewed the application, a letter of protest is not the appropriate forum to complain. If you have standing, you can file an opposition proceeding to raise the issue with which you disagree.
Should you file a letter of protest (or do something else)?
This post is about letters of protest, but in the section above, I mentioned opposition and cancellation proceedings. Those are ex parte proceedings, where two parties argue over issues relating to the propriety of the registration. Sometimes, there can be reasons for filing a letter of protest, or an opposition/cancellation, or both.
When deciding whether to file a letter of protest or initiate an opposition or cancellation proceeding depends, as an initial matter, on timing.
You cannot file a cancellation proceeding until a trademark has been registered. So, in most cases, you will not be choosing whether to file a letter of protest and/or a cancellation. However, oppositions are initiated before registration and just after the trademark examiner has reviewed and published the application. Therefore, you will usually file a letter of protest before or instead of a trademark opposition. But that means you have to know about a problematic trademark application relatively soon after it is filed.
To be aware of threats to your brand as soon as possible, consider putting a trademark monitoring service in place. It is the duty of every trademark owner to patrol and police for unauthorized use of their mark, and a monitoring or watch service can help alert you of new filings that may be similar to marks you are watching.
A letter of protest may be a good option if you want to be sure that the trademark examiner considers evidence you think is relevant. Trademark examiners, in large part, are proficient at their jobs and will find relevant evidence. However, they don’t have unlimited time, and if you know about a particular piece of evidence that may be difficult for an examiner to find, or if there is no obvious reason the examiner would look for that evidence, then filing a letter of protest may be a good way to go. If the letter is accepted, then it ensures that the examiner will put eyes on your evidence.
A letter of protest may also be a good option if you want to try to block an application anonymously. When you file a letter of protest, your submission is broken into different parts, including at least one section that should not contain any identifying information on it. If the Office accepts the letter, it will enter that anonymous portion of the submission into the record for the trademark application. There is no paper trail leading the submission back to you.
You might not want to file a letter of protest if you want to negotiate with the applicant. I have been in a situation before where my client wanted to enter into a consent agreement with a trademark applicant. My client had a piece of evidence, and we were unsure if the Office would find it. We could have filed a letter of protest, but, if that letter was accepted and trademark examiner refused the application, then the application would most likely have gone abandoned. Instead, we held and filed an opposition (or we might have requested an extension of time to file an opposition). That put us head-to-head with the applicant and gave us the opportunity to negotiate to a different solution that was better for both clients. Had we filed the letter of protest, we wouldn’t have had the same leverage.
Another factor in whether to file a letter of protest, an opposition, or a cancellation? The Trademark Office only recently began charging for letters of protest: that government filing fee is only $50 as of this blog date (though those fees might rise to $250 in November of 2024). Both notices of opposition and petitions to cancel have a filing fee of $600 for each class in the trademark being challenged. If you hire a trademark attorney, there will be fees associated with all of these filings, but generally the fees will be much lower with a letter of protest.
What grounds can you raise in a letter of protest?
Above, I listed appropriate reasons for filing a letter of protest. You can actually bring up any grounds that you want in the letter of protest; in addition to standardized grounds, the Office allows you to identify “Other Legal Basis” as a reason. However, unless you are working with a trademark attorney, you may be wise to keep the issues to those listed above.
If you go beyond those reasons, the Office will probably not enter your letter of protest into the record of the trademark application, and the examiner will never see it.
When deciding what grounds to raise, put yourselves in the shoes of the trademark examiner. What evidence would they want to see about the application? Are you presenting evidence of the kind that an examiner typically reviews (which is a good idea), or is it something that they never really relies on (which is probably not a good idea).
Also, the grounds you raise in a letter of protest should be ones that the examiner can verify on their own. The trademark examiner cannot turn to a third party to investigate the grounds, so the argument you present, and the evidence supporting it, should stand on its own.
What does the Trademark Office do with your letter of protest?
As soon as you submit the letter, you will receive a confirmation email from the Trademark Office. Here is an excerpt from one I recently received:
As you can see, the email immediately confirms that the letter itself is not public and won’t become public. If the letter is accepted, then only the evidence included with the letter will be made public.
The email also gives you a timeline that the Trademark Office is taking (at least as of this blog’s posting date) about 2 to 3 months to review letters of protest.
If the letter is not accepted, you will receive an explanatory letter from the Trademark Office, but the trademark examiner will not know about your submission. However, you may have time to try again and submit a better letter of protest.
If, on the other hand, the letter is accepted, then the Trademark Office record will be updated and the evidence you submitted will appear in the record. The examiner will then review your evidence and either disregard it or issue a trademark office action refusal based on it. That is important to understand: just because the Trademark Office enters your evidence into the record does not mean that the trademark examiner will automatically issue a refusal, which is why sometimes you might end up filing a trademark opposition even after filing a letter of protest.
What must you include in a letter of protest?
There are four primary components to a letter of protest:
- Filing Fee. You have to pay a small filing fee to the Trademark Office to ensure that the letter is at least reviewed. Currently, that fee is $50 but may change.
- Letter of Protest. The letter itself is the place where you present arguments that the trademark should be refused registration or examined in a particular way. Although this letter does not go into the record, it is nonetheless important to draft a compelling argument, because the paralegal who acts as the gatekeeper for acceptance of the letter will read it.
- Your letter presents arguments based on evidence, and it is the evidence that gets placed into the trademark application record if accepted. Evidence should be objective and should obviously support the reason for the refusal or requirement that you believe is warranted. The type of evidence will depend on the reason for the protest. Often, the evidence is a registration certificate of one or several similar trademark registrations. Or it may be screenshots of websites demonstrating that a particular term is widely used or generic. Or it might be something that shows non-use of a trademark or that a specimen was digitally altered or fabricated.
- Index of Evidence. You must include an itemized index that identifies all the evidence you are submitting. I usually include three columns: “Exhibit Number” (1, 2, 3, etc.), “Identification of Document” (a short description of the document, such as “website screenshot from dictionary website XYZ.com”), and “Concise Factual Statement” (a short description of why the evidence is relevant, e.g., “shows meaning of the term ABC”).
Warning: There are particular rules for length, format, and presentation of the above required components. Failure to comply with those rules may lead to the rejection of your letter of protest.
How do you file a letter of protest through the Trademark Office website?
Letters of protest must be filed electronically through the Trademark Office. You can use the form here: Letter of Protest form.
I have another article with step-by-step photos and instructions for filing a letter of protest with the Trademark Office. Here, I only generally describe the process.
Use the link above, or log into TEAS, the Trademark Office’s electronic filing system. The system will ask you to enter the serial number for the trademark application that you want to submit against. Depending on when you read this, the serial number will probably start with a 97 or 98 or 99 number.
TEAS will then pull up details about the challenged trademark and display them for you. It will present a list of checkboxes corresponding to the protest reasons listed above. You have to select at least one of these or choose “Other Legal Basis.”
Then, TEAS displays a page with an upload button:
Somewhat confusingly, the button says “Click here to Attach Evidence,” even though you will use this button to upload everything – the letter of protest, the evidence, and the itemized index of the evidence.
After you attach everything, you will fill out information about yourself (or the protesting entity), electronically sign the submission, and then review the contents of the submission. If all looks good, a “Pay/Submit” button will take you to the USPTO payment portal. After entering payment information, you will be brought to a success page where you can download an electronic receipt. The Trademark Office will also send a receipt to the email address that you provided.
Why should you hire a trademark attorney for filing a letter of protest?
If you are in the US, there is no rule that you have to file a trademark attorney to file a letter of protest. However, the above should indicate that the process is not simple and straightforward. Not only does a letter of protest require someone familiar with the process and rules for filing the letter, but it demands someone who understands trademark law and Trademark Office rules and examination guidelines. Understandably, this process can be confusing, overwhelming, and frustrating for a novice.
If you file the letter of protest incorrectly, or if you present the wrong grounds, or if your argument is not persuasive, the Trademark Office will refuse to accept the letter, and it will have no effect. Of course, you can potentially re-file the application, but if the application is about to be examined, you may be too late. Hiring a trademark attorney to prepare and file a letter of protest is generally pretty economical, and it should vastly improve your chances of success.
If you are aware of a newly-filed trademark application that you believe is too similar to yours, or if you know of someone who has filed a fraudulent application, or if a trademark applicant is pursuing registration of a trademark that is generic or otherwise not registrable, or if you simply have questions about letter of protest practice, please contact Phoenix trademark attorney Tom Galvani.