Trademark owners should consider low cost Letters of Protest an important part of their U.S. trademark enforcement programs. In certain circumstances, the United States Patent and Trademark Office (USPTO) allows interested parties to prevent the registration of another’s pending trademark application with a “Letter of Protest.” A Letter of Protest may be submitted during the ex parte trademark examination procedure thereby potentially avoiding the need for a formal, contentious, and costly opposition proceeding. Through the Letter of Protest procedure, interested parties can bring information that is relevant to the registrability of another’s mark but that may otherwise be overlooked, to the USPTO’s attention without violating the ex parte nature of the trademark examination procedure.
A Letter of Protest may be submitted to the USPTO in several common circumstances. For example, a likelihood of confusion between a pending mark and either a U.S. trademark registration or a prior-pending trademark application is sufficient grounds to support a Letter of Protest. In addition, if the applied for mark should not be registered because it is descriptive or generic when used in connection with the applicant’s line of business, a Letter of Protest directed to these issues may be well-received by the USPTO. Pending trademark infringement litigation involving the applied for mark and a federally registered mark, or a prior-pending application, may also form the basis of a Letter of Protest seeking suspension of the examination procedures during the pendency of the litigation. Technically, a Letter of Protest can be submitted on nearly any grounds that may cause the USPTO to refuse registration, suspend examination, or require amendment to an application prior to registration, but the most common bases are likelihood of confusion with registered marks and prior-pending applications and issues involving descriptive and generic marks.