New York Trademark Attorney Blog
We frequently receive inquiries from our clients regarding what if any methods exist to submit evidence to the USPTO to prevent the registration of a third party’s mark. The answer of course is it depends on the type of evidence you wish to submit and the reason for submission. The proper method for submission of evidence is a letter of protest. This is an informal procedure utilized by the United States Patent & Trademark Office (“USPTO”). It enables a third party to bring evidence to the attention of the Examining Attorney during the ex parte examination, if the evidence is relevant to the registration of the mark. Of course, you can wait until publication and file an opposition proceeding as well.
This is a useful procedure if you have a matter that is clear-cut. This procedure will be much less expensive than filing a Notice of Opposition. It is also another bite at the apple. If your letter of protest fails to persuade the Deputy Commissioner or the Examining Attorney, you still can file a Notice of Opposition and make the same arguments to the Trademark Trial and Appeal Board (“TTAB”).
Letters of Protest are first reviewed by the Office of the Deputy Commissioner for Trademark Examination Policy to determine if the evidence (declarations or affidavits) submitted should be given to the Examining Attorney. A small percentage of letters of protest are granted. The Deputy Commissioner will consider the letter of protest and grant it before publication, if the evidence is relevant and supports a reasonable ground for refusal in an ex parte examination. If the application in question already published, then there has to be prima facie evidence supporting a refusal of registration.
Appropriate subjects for a letter of protest include: (1) if the mark in the pending application is generic or descriptive and if this is the case, then the letter must be accompanied by evidence which is objective, independent and factual; (2) if a federally registered mark or prior pending application exists that causes a likelihood of confusion with the mark in the pending application; or (3) if there is pending litigation claiming infringement of the applicant’s mark, then the letter must include a copy of the pleadings. Normally a court proceeding is not considered relevant to the registration of a trademark unless the remedy requested in the court proceeding is cancellation, abandonment or amendment of the application.