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Can Third Parties Present Evidence To Examiners To Prevent Trademark Registration?

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.

Issues that are not appropriate to raise in a letter of protest include: (1) a third party claiming priority of use due to common law rights; (2) a third party claiming that the applicant is not the actual owner of the trademark application; or (3) adversarial arguments. In addition, a letter of protest filed before publication will be dismissed as moot when the issue raised has already been considered by the examining attorney, unless the evidence submitted by the protestor is significant evidence not currently of record or if there will be clear error in the issuance of a registration in violation of the Trademark Act. For more information on clear error see the Trademark Manual of Examining Procedure §706.01.

The most appropriate time to file a letter of protest is before publication of the trademark. Letters of protest filed more than one month after publication are generally denied as untimely because this may cause an excessive delay to registration. Although, exceptions are made in certain circumstances where the protestor could not have accessed the relevant information at an earlier time.

A protestor will always receive a response from the Deputy Commissioner granting, denying, or holding moot the letter of protest, typically in 60 days after filing the letter. If the protestor monitors the USPTO database, it will only see a reference in the prosecution history, if the letter of protest was granted. However, monitoring the database is important to also determine when and if the application will be published for opposition.

A protestor should be mindful that the Deputy Commissioner has broad discretion in determining whether to grant a letter of protest. If the letter of protest is denied, the protestor can either file a Notice of Opposition at the appropriate time or petition the Director to review the Deputy Commissioner’s denial (see 37 C.F.R. §2.146(a)(3). The matter will only be reversed if there was clear error or an abuse of discretion. If you are considering filing a letter of protest, kindly contact our firm for a courtesy consultation, we would be happy to assist you.