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Letters of Protest: The Basics

Monitoring your trademark and the surrounding marketplace to ensure that no one else is potentially infringing upon your registration is a key responsibility for any trademark owner. When a potential infringement matter is discovered, however, it may be difficult to determine what next steps are available to you. If you are met with a possible enforcement situation, your first course of action should be to enlist the help of an experienced trademark attorney. Depending on your situation, an attorney may suggest filing a letter of protest to address your concerns. Letters of protest are one of the most inexpensive yet underutilized methods of handling enforcement issues with the USPTO, and are an effective way of approaching the situation in which you have found a new trademark application that conflicts with yours.

What is a letter of protest?

A Letter of Protest is a document (or “letter”) that you can submit to the USPTO upon finding a trademark application you believe will infringe upon the rights of your mark. This letter can only be filed within the first few months of the trademark application’s life; specifically, before the application reaches the publication period. Letters of Protest are unique in that they enable you, an outside party, to contact the USPTO regarding an application that is not yours—this type of communication in any other form is typically barred and considered to be “ex parte,” but Letters of Protest give concerned trademark owners a formal opportunity to notify the examining attorney of their infringement concerns.

The content of a Letter of Protest essentially notifies the new application’s examiner of your objection. The goal of the letter is to get the USPTO to issue a refusal of the offending application. When this occurs, costly opposition filings are often no longer necessary, potentially saving you thousands of dollars in litigation fees while still preserving your trademark rights.

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What should you include in a letter of protest?

Letters of protest contain a concise statement of concern outlining the situation at hand. This means that arguments about the similarity of the marks should not be included—rather than giving all the reasons why you feel the new application should be refused, simply present the fact that you think the marks are too close.

What should be included in the letter, however, is evidence supporting the inevitable marketplace confusion between your trademark and the new application’s mark. Look at the goods and services within the new application and find a way to demonstrate the conflict they will create with the goods and services offered under your existing registration, therefore creating consumer confusion. Ultimately, the letter should be under 75 pages to most effectively and conclusively present your case to the examining attorney.

Utilizing letters of protest

Overall, letters of protest are a competent and economical enforcement tool at your disposal when actively monitoring the USPTO database for trademarks that could potentially infringe upon yours. If you have found a new trademark application that conflicts with your mark and believe a letter of protest may be the best path forward, reach out to an attorney at Gerben Intellectual Property today for a free consultation and quote.

 

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