Authored By Tim O’Keeffe, Esq. & Samantha Pendley
A Letter of Protest in the context of Trademarks is a procedure that allows a third party to bring to the attention of the United States Patent and Trademark Office (“USPTO”) evidence bearing on the registrability of a pending Trademark Application.1 The Letter of Protest procedure is a purely voluntary process intended to aid the Examining Attorney in the examination process.2
The Letter of Protest process was first developed informally at a time when Examining Attorneys had relatively limited resources for gathering evidence to support refusals of registration. The tools available to Examining Attorneys today are far more advanced, and the information at their fingertips much greater than in the past, ostensibly reducing the need for Letters of Protest. However, thousands of Letters of Protest are still filed each year. The USPTO received 2,726 Letters of Protest in 2017; 3,480 in 2018; and 4,106 in 2019. According to the USPTO, this upward trend is likely to continue. The newly-implemented Trademark Modernization Act (“TMA”) sets new procedures for the increasingly prevalent Letter of Protest process.
Under the new TMA, Letters of Protest must be timely filed and must include (1) a fee payment; (2) the serial number of the Application that is the subject of the Letter of Protest; (3) an itemized index of evidence that includes identification of the documents being submitted and a concise factual statement of the relevant grounds for refusal of registration appropriate in an ex parte examination that each identified item of evidence supports; and (4) a clear and legible copy of the supporting evidence identified in the evidence index.
The TMA authorizes the USPTO to charge a new $50 fee for filing a Letter of Protest, an amount set below the amount that would be required to recoup the USPTO’s full processing cost.3 The fee is intended to be set at a level high enough to partially offset processing costs and deter the filing of unsupported or irrelevant filings, but low enough so as not to discourage the filing of relevant, well-supported Letters of Protest.
In addition, the new TMA procedures also limit the evidence a filer may submit to no more than ten (10) items of evidence in support of each specified ground of refusal and not more than seventy-five (75) pages of evidence total absent special circumstances that necessitate otherwise. This requirement encourages the submission of evidence that is succinct, not duplicative, and limited to the most relevant evidence.
The issues appropriate for Letters of Protest are those issues that the Examining Attorney has authority and resources to pursue to a legal conclusion without further intervention by third parties, such as genericness or descriptiveness, a likelihood of confusion between this Mark and a federally registered Mark or prior-pending Application, pending litigation claiming infringement based on the Applicant’s use of the applied-for Mark, and inappropriate identifications of Goods and Services, Mark descriptions, or other Application data fields for particular Applications.4 The protestor is not permitted to submit legal arguments, contact the Examining Attorney assigned to the subject Application, or participate in any Office proceedings relating to the protest or the Application to which it is directed.
The TMA provides that the Director first looks at the Letter of Protest within two (2) months after a Letter of Protest is filed and determines whether the evidence submitted should be included in the record of the relevant Trademark Application.5 If the USPTO determines that the submission complies with the proposed regulations, only the specified grounds for refusal and the provided evidence relevant to the grounds for refusal are included in the Application record for consideration by the Examining Attorney, not the Letter of Protest. The TMA provides that any determination whether to include Letter of Protest evidence in the record of an Application shall be final and non-reviewable.
The limited involvement of the third party ends with the filing of the Letter of Protest. A third party filing a Letter of Protest will not receive any communication from the USPTO relating to the submission other than acknowledgement that it has been received by the Office and notification of whether the submission is found to be compliant or non-compliant. The questions of whether evidence is relevant to a refusal ground appropriate in ex parte examination, whether a refusal will be made, or whether a registration will issue are matters for the Office to determine as part of the ex parte examination process that occurs between the applicant and the Office acting on behalf of the public.
In 2019, the evidence in approximately 25% of pre-publication letters of protest and 94% of post-publication letters of protest was not forwarded to the Examining Attorney, suggesting that a significant portion of filings do not contain relevant information or evidence, do not meet the requirements for a letter of protest, or are otherwise unnecessary. We look forward to seeing how the new changes implemented as a result of the Trademark Modernization Act will improve the Letter of Protest procedure and the quality of Letters of Protest and Trademark Application examinations.