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How Can I Ensure A Competitor’s Trademark Application is Denied?

by Clifford D. Hyra on March 17, 2011

In many instances, you may want a competitor or potential competitor's application for a trademark registration to be refused by the United States Patent and Trademark Office (USPTO). However, trademark examinations are ex parte- strictly between the applicant and the Examining Attorney assigned to the application. Third parties are not allowed to communicate with the Examining Attorney, even if there is an obvious basis for the application to be refused, such as a conflict with an existing registration or if the mark is clearly descriptive. An application can be opposed or canceled after it is approved, but such proceedings are essentially litigation, with high costs and long delays. Fortunately, the USPTO allows for an end-run around the ex parte restriction with a seldom-used and poorly known mechanism, the Letter of Protest.

Letters of Protest

A letter of protest allows a third party to submit evidence that a trademark application should be refused to the Office of the Deputy Commissioner for Trademark Examination Policy (“Deputy Commissioner”). The Deputy Commissioner then decides whether to grant the letter of protest, in which case the evidence is forwarded on to the Examining Attorney for consideration. Because you never have direct contact with the Examining Attorney and the information is coming from the Deputy Commissioner, the integrity of the ex parte examination process is not compromised. See MPEP § 1715. The letter of protest satisfies the public interest in avoiding the registration of trademarks, which should have been refused, due to  human error on the part of an individual trademark examiner.

What Can and Cannot be the Basis for a Letter of Protest?

A letter of protest can be based on, for example:
  • Descriptiveness/Genericity: An allegation that a trademark is merely descriptive or generic, with accompanying objective evidence
  • Likelihood of Confusion: Notification of an existing trademark registration or prior-pending application and an allegation of likelihood of confusion between this mark and the mark in the application that is being protested
  • Pending Litigation: Pending litigation exists that claims infringement based on the applicant’s use of the applied-for mark
A letter of protest cannot be based on arguments alone (without supporting objective evidence) or on any evidence that a Trademark Examining Attorney cannot ordinarily consider in the course of an ex parte examination. For example, an Examining Attorney would not ordinarily consider evidence relating to another party's earlier use (as opposed to registration or application) of the trademark or proper ownership of the mark, therefore these cannot be the basis for a letter of protest.

Letter of Protest Standard of Review and Results

A letter of protest must be granted if the evidence is relevant and may support any reasonable ground for refusal. This is a very low bar, so the likelihood of a properly-filed letter of protest being granted is high. When a letter of protest is granted, the relevant evidence (but not the letter itself) is forwarded to the Examining Attorney for consideration. The Examining Attorney must make an independent determination on the basis of this evidence whether the requested refusal should be issued. A letter of protest relating to an issue already addressed by the Examining Attorney will be dismissed as moot, unless significant new evidence is submitted or the Examining Attorney is clearly in error. Thus, a letter of protest can be a powerful tool for correcting an obvious Examiner mistake. The protestor will receive a response from the Deputy Commissioner granting, denying, or holding moot the letter of protest within 60 days of filing the letter. A denial can be appealed by petitioning the Director to review the Deputy Commissioner’s decision to deny the letter of protest.

Letters of Protest Submitted After an Application's Publication

Letters of protest should be submitted before an application is allowed and published. Once an application has published, a letter of protest will be granted only if publication of the mark constituted clear error because the submitted evidence shows that the mark should have been refused. All letters of protest must be submitted within 30 days of publication unless the evidence submitted could not have been obtained earlier. No letter of protest will be accepted after registration. If a letter of protest is granted after publication, the Examining Attorney must issue the requested refusal of registration, although it is possible in some cases for that to be overcome by the applicant.

Does the Letter of Protest Become Part of the Application's Public Record?

A letter of protest is never entered into an application's public record. If the letter is granted, the evidence submitted therewith will become a part of the record along with a memorandum granting the request. If the Examining Attorney decides against issuing a refusal, a note will be added to the file indicating that the evidence was considered. However, any party may request a copy of a letter of protest, and the letter will ordinarily be provided.

Conclusion

Letters of protest can be a powerful tool in the arsenal of anyone who manages brands. Letters of protest can easily and inexpensively correct mistakes by Examining Attorneys that would otherwise result in costly oppositions and cancellation proceedings. Have your trademark attorney monitor new applications similar to your own applications and registrations, as well as those filed by your competitors. Make sure that any applications that could conflict with your own are nipped in the bud during the examination stage if possible.

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