A relatively little known trademark protest procedure in the trademark office allows a third party to file a letter of protest against a pending trademark application. The process is simple, free and easy. The filing of a letter of protest is an informal procedure that allows third parties to bring to the attention of the USPTO evidence bearing on the registrability of a mark. A letter of protest will only be accepted if it presents an issue that can be dealt with by an examining attorney in the course of the ex parte examination of a trademark application. Trademark Manual of Examining Procedure (TMEP) §1715.01.
An “issue that can be dealt with by an examining attorney in the course of the ex parte examination” presents some limitations that may not be apparent on the surface.
To begin with, it means that only trademark protests that can be decided solely on outside evidence can be presented. The most common grounds for accepting a letter of protest include: likelihood of confusion with a U.S. trademark registration or prior pending application; descriptiveness/genericness of the mark, use of a registered mark in the identification of the goods/services, or a false association with the protestor.
Areas that require resolution of contested points of view are off-limits. A letter of protest should not be submitted, and will never be accepted, if the issue presented relates to: common-law prior use, an ownership dispute, fraud, or a mere disagreement with the examination conducted by the Examining Attorney or with the Examining Attorney’s exercise of judgment. So, the USPTO denies letters of protest that do not include factual, objective evidence, and only factual and objective evidence.
No argument is allowed in a trademark protest, only objective evidence, like independent evidence of a likelihood of confusion, for example, published advertisements showing that the parties provide the same goods and services. If you’re thinking by now that a letter of protest is a pretty weak way to block a trademark application, there is some merit in that thought. However, remember that an Examining Attorney may not have done a thorough search for internet or other reference material, and by bringing it to the Examiner’s attention, you just might tip the scale towards a rejection. Even more important, the letter of protest procedure stands entirely separate from an Opposition proceeding. Even if your trademark protest is entirely rejected, you can still bring an Opposition without prejudice, and then you’ll get the chance to argue all your evidence, including disputed and disputable evidence, to the TTAB.