What should you do if someone files a trademark that is too similar to yours?
One often overlooked option is filing a Letter of Protest with the United States Patent and Trademark Office (the “USPTO”).
A Letter of Protest is an effective and inexpensive method of trademark enforcement. The filing essentially requests that the USPTO deny the offending trademark application.
What is a Letter of Protest?
A Letter of Protest is a formal letter to the USPTO that can be submitted when you find a trademark application that, if registered, may infringe on the rights of your existing mark. It provides an explanation of why you believe a trademark application infringes on your trademark.
It is best to file a Letter of Protest before the offending trademark application is examined by a USPTO Examining Attorney. The essential purpose of these letters is to help the USPTO identify evidence that supports the refusal of a registration.
If you file a Letter of Protest late, it is very likely the USPTO will deny it as untimely. Therefore, it is essential to have an active trademark monitoring program to watch for potentially infringing trademarks.
That said, if you happen to find a trademark after it is already registered, there are other enforcement options. For example, if a registered trademark infringes upon your rights, you should consider filing a Petition to Cancel rather than a Letter of Protest.
Letters of Protest offer a unique opportunity for trademark owners to become involved in a USPTO application that is not their own. This is because, by rule, the owner of a trademark registration is prohibited from contacting an Examining Attorney that is reviewing the offending mark. This kind of contact would be considered an “ex parte” communication and is prohibited.
By sending a Letter of Protest to the USPTO, your ultimate goal is to convince the Examining Attorney that the trademark under review is likely to cause confusion with your trademark in the marketplace. The objective of this process is for the USPTO to issue a refusal of the application in question, which can prevent the need for costly opposition filings. This allows you to preserve your trademark rights and save money on litigation fees.
Grounds for a Letter of Protest
You must have grounds to file a Letter of Protest. These grounds must concern issues that the new application’s Examining Attorney has the ability and resources to investigate without involving third parties. The TMEP (or Trademark Manual of Examining Procedure) explains the following appropriate grounds for a Letter of Protest:
- There is a likelihood of confusion between the applicant’s mark and the protestor’s mark.
- The mark is generic or descriptive.
- The trademark in question is already a subject of pending litigation.
- The applicant used your registered trademark as part of their application.
- For example, if a law firm applicant used IC 045: Legal Services; Offering reviews of Gerben IP services.
- Specimens used in the protested application do not belong to the applicant or have been used in prior registrations.
- There is a priority claim based on foreign applications that lead to a likelihood of confusion.
- An application improperly used a foreign application as the basis for a priority claim.
If there are acceptable grounds for protest, are there also inappropriate or unacceptable grounds? Yes, the following list includes the issues the USPTO will not consider if raised in a Letter of Protest:
- Common law likelihood of confusion (meaning your trademark is not applied for or registered with the USPTO).
- A belief that the Applicant is the improper owner of the trademark application.
- A collection of third-party opinions against the registration of the mark.
- Fraud on the USPTO (false specimens, false declarations, etc.)
It is easy to lose track of the requirements throughout the trademark enforcement process because the lines can appear blurred to those unfamiliar with the nuances of trademark law. Working with a trademark attorney ensures your Letter of Protest is completed properly, and your trademark is sufficiently protected.
What should you include in Letters of Protest?
Letters of Protest are meant to be concise outlines of concerns regarding trademark applications. You should offer arguments comparing your mark and the offending mark. The goal is to offer a simple presentation of the fact that the trademarks are too similar for similar goods and services and a statement of the legal grounds for why the new registration should be refused.
This process is intended to be efficient, so dumping evidence and information in a Letter of Protest would be considered inappropriate. Thus, any evidence you submit must be succinct and persuasive.
Protesting trademark holders are also required to provide an itemized list of all evidentiary documents. This itemized index should be separate from the Letter of Protest and include a short description of the categories of evidence that are included. Do not include any arguments, subjective terms, or identifiable information on the index in order to maintain ex parte integrity.
For example, if your grounds for protesting the trademark application include the likelihood of confusion, provide evidence supporting this inevitable marketplace confusion should the new trademark be approved. By looking at the goods or services outlined in the infringing application, you should be able to identify an appropriate way to demonstrate the potential conflict.
The USPTO requires Letters of Protest to include ten or fewer pieces of supporting evidence per ground of refusal and less than 75 pages overall. Any Letter that exceeds these totals would also need to include a satisfactory explanation that establishes the necessity for extra pages. Without such an explanation, or if the explanation provided is determined to be insufficient, the Letter of Protest will likely be denied.
The process of filing a Letter of Protest
Once a Letter of Protest is filed and approved, the USPTO will be notified of your evidence against the offending trademark. You will also receive a notification that the Letter of Protest was accepted.
However, this does not mean that a refusal of the targeted application is guaranteed. This first step is merely to indicate that your argument was plausible, and that further investigation is warranted.
Next, you should monitor the application process.
If the USPTO issues an “Office Action” against the offending application, you will be able to see such a notification online (or you can be notified of such a decision if you elect to track the application via your USPTO account or trademark attorney).
You should check the “Office Action” to ensure the USPTO issued a refusal due to your concerns.
If the USPTO did issue such a refusal, you will need to continue tracking the application to make sure an appeal is not lodged to work around the refusal.
If the USPTO did not issue a refusal, you will need to continue to track the application and file a Notice of Opposition at the appropriate time.
Utilizing Letters of Protest
There are numerous benefits to filing a Letter of Protest. This method is one of the least expensive trademark enforcement mechanisms. The chart below outlines the various enforcement options and the USPTO fees to institute each process. As you can see, a Letter of Protest is the least expensive option.
|Letter of Protest
|Petition for Cancellation
|Notice of Opposition
Both a Petition for Cancellation and Notice of Opposition cost a minimum of $600, not including legal fees, filings for additional classes, or the possibility of requesting an extension or oral hearing.
Important Note: In May 2023, the USPTO announced its plan to increase the cost of various trademark fees. If approved, the cost to file a Letter of Protest will increase to $250. The fee increases will be in effect by November 2024, if the fee increase plan is approved.
Another benefit to a Letter of Protest is that it is not adversarial. A Letter of Protest is an anonymous process that does not require any confrontation between the protestor and the applicant. Once you file your Letter, it is the infringing party’s responsibility to convince the USPTO that their application should move forward.
A Letter of Protest gives you a colloquial first bite at the apple. If the Letter works, you will have avoided a long and costly process and protected your trademark from infringement. However, if the trademark was approved despite your Protest, you still have options for opposing the trademark. A Letter of Protest does not preclude you from utilizing other enforcement methods.
Why you should work with a trademark attorney
The nuances and complexities of trademark law and USPTO regulations can easily overwhelm anyone who is not familiar with the processes. Trademark enforcement requires regular and consistent monitoring of the register and applications as they are filed to ensure a timely response.
Letters of Protest have strict requirements for what grounds are acceptable, what should be discussed in the letter, what qualifies as relevant evidence, and how long the Letter should be. Further, the Letter requires legal arguments that can persuade the USPTO Examining Attorneys.
Letters of Protest offer an economical and effective tool for enforcing trademark protections, but active monitoring of the USPTO database is necessary to utilize this valuable option. Monitoring your trademark can feel like a full-time job, but you can avoid that hassle by working with a trademark attorney.
If you have found a trademark application that you believe infringes on your existing mark, need guidance on filing a Letter of Protest, or just have questions about trademark enforcement, contact Gerben IP today.