Many companies think that an application to register a trademark in the U.S. cannot be disputed until after it’s been published by the United States Patent and Trademark Office (USPTO). If you spot a pending trademark application that could harm your brand, you do not have to wait for a formal opposition to take action. A “Letter of Protest” lets a third party quietly alert the USPTO to evidence that may block or limit another party’s application. Used correctly, it can be a fast, cost‑effective way to protect your rights without launching an opposition proceeding or a full litigation.
What is a Letter of Protest?
At its core, a Letter of Protest puts targeted, objective evidence before the USPTO’s examining attorney so the Office can consider a refusal or requirement during ordinary examination. Although protest letters have existed for years, the Trademark Modernization Act of 2020 created a statutory basis for them by implementing regulations effective December 18, 2021. By statute, a third party may submit evidence relevant to a ground for refusal, identify that ground, and concisely describe each supporting item.
When does a Letter of Protest make sense?
Consider filing a letter of protest only when you have clear, objective materials (i.e., the evidence is clear on its face with no need for argument, explanation, or interpretation) the USPTO should see during examination. Common, appropriate grounds include:
- Likelihood of confusion with an existing U.S. registration or prior pending application;
- Mere descriptiveness or genericness for the listed goods/services;
- False suggestion of a connection with a person, institution, or other party;
- Failure to function as a trademark (e.g., a widely used or commonplace message);
- Use of a registered trademark within the applicant’s identification of goods/services; and/or
- Specimens showing images used by third parties without the claimed mark, or images appearing across multiple registrations bearing different marks.
Be aware that accepted evidence becomes publicly viewable in on the USPTO’s website, so do not submit confidential information in support of a letter of protest.
With Letters of Protest, Timing Matters
Letters of Protest may not be filed after the deadline to oppose an application. The USPTO then must decide within two months whether to include the evidence in the record. While that determination is final and non‑reviewable, it does not prevent the later filing of a notice of opposition. However, filing a protest does not stay or extend the TTAB opposition period. While waiting on the Office’s decision, potential opposers must file timely extensions and, if needed, a notice of opposition to preserve rights.
Conclusion
A Letter of Protest can be a precise, efficient tool to address problematic applications, provided you meet the timing and evidence standards and continue to safeguard opposition deadlines. If you believe a pending application threatens your brand or uses descriptive or commonplace terms, we can assess whether a letter of protest is appropriate, assemble compliant evidence, and coordinate any TTAB extensions or oppositions needed to preserve your position.
Protecting your brand is essential. It is important to stop third parties from encroaching on your brand, and doing so early often is the most cost-effective approach. Reach out to us today to understand how we can help you protect your valuable trademark rights.