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.