If you have a registered trademark and someone else is trying to register a mark that is very similar to yours, you’ll want to speak up. You invested all of that time, energy, and money into marketing your products or services. You don’t want someone trading on your name and stealing your goodwill. Worse yet, if you don’t tend your fences, you could lose your trademark altogether. But what can you do?
The U.S. Patent and Trademark Office (PTO) offers you two paths:
An opposition is the more expensive option of the two. It will cost you $600 just to file and then thousands of dollars to prosecute if you hire an attorney. An opposition is similar to litigation: there is a complaint, an answer, discovery, motions, etc. You don’t have to hire an attorney but your odds are much better if you do.
If that option does not fall within your budget, you could instead file a letter of protest for $50 and no further commitment to attorneys or time.
[Note: Application fees are listed as of the time of this writing. For a current list of fees, visit the PTO’s fee schedule available at: https://www.PTO.gov/learning-and-resources/fees-and-payment]
Inside the PTO, the first step in reviewing a trademark application is when it is sent to an “examining attorney.” The examining attorney looks over the application and decides whether it meets the PTO’s minimum standards for registration. He or she also searches the PTO’s own registration database to see if the applied-for mark conflicts with any existing registered marks or prior-filed applications. If the application clears that stage, the examining attorney will approve the mark for publishing. The mark will then be published in the PTO’s Trademark Official Gazette for a 30-day period. That 30-day period is your window for filing an opposition (or for an extension of time to later file an opposition). Any opposition filed before or after (without an extension) is untimely.
A letter of protest, however, is not so encumbered. You can file it any time after the application has been filed, up until the publication period closes. You can attach evidence to your letter, showing how the applied-for mark infringes on your mark.
There is a catch. A letter of protest is not automatically sent to the examining attorney once you file it with the PTO. Instead, it is first reviewed by someone else at the PTO who decides whether the evidence you provide as an attachment to your letter should be sent to the examining attorney.
If the initial reviewer is not convinced that your letter of protest raises a strong enough evidentiary basis for denying your competitor’s application, your letter and the attached evidence is tossed out and the examining attorney never even gets a chance to consider it. Even if the initial reviewer green lights your evidence for transmittal to the examining attorney, the actual letter is never sent to the examining attorney. Only the evidence you attached to the letter is forwarded, along with a letter briefly summarizing what basis you are using to challenge the application.
Openly opposing the registration of a competitor’s trademark can create bad press, especially if you are the Goliath trying to shut down a David. We have seen this happen in the beer world time and time and time again. A letter of protest is a great way to whisper in the ear of the PTO that a registration should be denied without suffering the public backlash of openly opposing it.
That does not mean that a letter of protest is just a cheaper version of a formal opposition. Its scope is much more limited. A letter of protest is not the place to argue about whether your competitor even owns the trademark that it is trying to register, whether you have common law (i.e., non-registered) prior use of the trademark in commerce, whether the examining attorney has made a mistake in doing their job, or generally complain about the unfairness of your opponent’s attempt to register a trademark that is similar to yours. As a general rule, the PTO doesn’t care about any of those arguments in a letter of protest. Those are all normally handled in an opposition and will rarely (if ever) be considered in a letter of protest.
A letter of protest should include (1) short, simple, and clear statements of why you think the trademark application should be denied (this is the list of your reasons) and (2) references to your attached evidence to support those statements/reasons for denial. These short statements of reasons should not be argumentative or attempt to persuade the PTO that you are right and your competitor is wrong. The arguments in your letter are never going to the examining attorney no matter what the person who initially reviews it decides to do, so don’t spend your time or energy arguing in the Letter. The initial reviewer is just more likely to toss your letter and all of the evidence out if you spend time arguing in it. Instead, focus on describing what the evidence in your appendix is and briefly tell the PTO why that evidence shows there is a problem with registering the applied-for mark.
Here are some examples of common and appropriate reasons you can include in your letter of protest (each reason must be backed up with actual evidence attached to your letter):
Your competitor’s trademark, if granted, would likely be confused with another registered trademark or another pending application that was filed before your competitor’s.
Your competitor’s trademark is merely descriptive of or generic for the identified goods or services.
Your competitor’s trademark suggests a false connection with you or some other party.
Your competitor’s trademark is a widely used or commonplace message and does not function as a trademark.
Another registered trademark appears in your competitor’s identification of the goods or services in its application.
The specimens of use in your competitor’s application feature an image that is used by third parties without the mark in question or features an image that appears in multiple prior registrations or applications all bearing different marks.
There is pending litigation involving the trademark that would adversely affect its registrability because the remedy, in that case, could be cancellation, abandonment, or amendment of the trademark.
The PTO has a detailed explanation of what types of evidence it requires for each of these common reasons on its website: https://www.PTO.gov/trademarks/trademark-updates-and-announcements/letter-protest-practice-tip
Be sure to include an itemized index of your exhibits on a separate page after your letter. The index should list each exhibit with a concise, factual description of the reason that each item supports. Do not put your name, your attorney’s name, or any other representative’s name in the index. Again, no arguments or persuasive language of any kind belong here. It is just a descriptive itemized index.
As a final note on compiling your evidence, be sure that every piece of evidence is submitted on a separate page, do not include more than 10 items of evidence for each reason listed in your letter of protest, and make sure all of your evidence fits on 75 pages. The PTO won’t allow more than 10 pieces of evidence per reason and caps the total evidence you can submit at 75 pages. If you submit more evidence, it will likely be discarded. If you have more evidence than the rules allow for any given reason, just pick your 10 strongest pieces of evidence for that reason and skip the rest. Same for your total: if you have more than 75 pages when you are finished, leave your strongest evidence and cut away weaker evidence until you get it down to 75 pages.
A letter of protest is a relatively cheap and easy way to challenge a competitor’s trademark application before the application is even published and ready for challenge under formal Opposition. A letter of protest may even be a viable option to use within the first 30 days after a competitor’s application is published but will rarely be considered any later than that.
The purpose of a letter of protest is not to circumvent the normal opposition procedures by backdooring your full legal and factual arguments. Remember, even if you get through the first round with the initial reviewer and some or all of your evidence is sent to the examining attorney, any arguments you provided in the letter of protest will never be read by anyone other than the initial reviewer anyway. So, don’t waste your time or effort arguing! You have one goal in submitting a letter of protest: convince the person who initially reviews it to send as much of the attached evidence as possible to the examining attorney. That is all you can achieve with a letter of protest, so focus on accomplishing only that.
If you have questions about letters of protest, would like assistance in challenging a competitor’s trademark, registering your own trademark, or otherwise protecting and preserving your intellectual property, contact us. Whitcomb, Selinsky, PC has a team of experienced attorneys ready to help.
David Tscheschke, Esq.