Letter Of Protests
Our trademark attorneys can prepare and file a letter of protest against a trademark application that belongs to another trademark owner. The letter of protest would include specific legal reasons that should be known by the assigned examining attorney while reviewing the application which would influence the application’s ability to proceed to the next step in the trademark examination process. Some reasons that are effective and support the need for considering the protest are that the registration is prohibited by federal law, possible confusion with a trademark in a U.S. registration or prior pending application, the trademark in the protested application is merely descriptive or generic for the identified goods or services, the trademark in the protested application suggests a false connection with the protestor, and more.
The sooner the letter of protest is filed, the better. Optimally, the protest is filed before the application is published. Letters of protest filed during the thirty (30) day period would still be considered assuming all requirements are met. Letters of protest filed after the thirty (30) day period will usually not be considered.
The Trademark Modernization Act of 2020 (TMA) implements certain changes to the longstanding USPTO letter of protest practice which allows third parties to submit evidence to the USPTO, before registration, regarding a trademark’s registrability. https://www.uspto.gov/trademarks/laws/2020-modernization-act. The TMA sets a two-month deadline for the USPTO to act on these letters and authorizes the USPTO to charge a fee for them. The TMA also provides that the USPTO’s decision on whether to include the evidence in the application record is final and non-reviewable. The USPTO issued rules setting out procedures and a $50 fee for these submissions that went into effect on January 2, 2021.
The requirements are strict and you should consult with our experienced trademark attorneys so that your letter of protest meets the filing requirements.