Letters of Protest: an Effective Trademark Enforcement Tool | Practical Law

Letters of Protest: an Effective Trademark Enforcement Tool | Practical Law

A discussion of the proper subjects for trademark letters of protest and the advantages of using letters of protest compared to other enforcement mechanisms, such as bringing proceedings before the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office (USPTO). 

Letters of Protest: an Effective Trademark Enforcement Tool

Practical Law Legal Update 2-560-7785 (Approx. 3 pages)

Letters of Protest: an Effective Trademark Enforcement Tool

by Practical Law Intellectual Property & Technology
Published on 13 May 2014 • USA (National/Federal)
A discussion of the proper subjects for trademark letters of protest and the advantages of using letters of protest compared to other enforcement mechanisms, such as bringing proceedings before the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office (USPTO).
Most businesses and organizations use trademarks to designate the source of the goods or services that they sell and to build goodwill with the consuming public.
To maintain trademark rights, brand owners must undertake appropriate trademark policing and enforcement efforts to protect their marks from third-party infringement, dilution and misuse.
Trademark policing and enforcement efforts can include:
  • Monitoring the marketplace to identify infringements, dilution and misuse of the company's marks.
  • Sending trademark cease and desist letters to third parties that are infringing, diluting or misusing the company's marks.
  • Bringing opposition proceedings before the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office (USPTO).
  • Commencing trademark infringement or dilution litigation, or both, under the Lanham Act.
An often overlooked enforcement mechanism is a letter of protest. A letter of protest is an informal and cost-effective way for parties to inform the USPTO of evidence relevant to the registrability of a mark that another party seeks to register under a pending federal trademark application. Proper subjects for a letter of protest to the USPTO include:
  • Alerting it to:
    • the existence of a federally registered mark or a prior pending application; and
    • a likelihood of confusion between that mark and the mark in the subject application.
  • Alerting it to the improper use of a registered mark in the identification of goods and services of a pending application.
  • Objection to registration of a generic or descriptive term.
  • Request it to suspend prosecution of an application on the grounds that there is:
    • a pending litigation based on the applicant's use of the applied-for mark; and
    • a likelihood of confusion between the protestor's mark and the mark in the subject application.
A letter of protest may not be used to:
  • Delay registration of an applied-for mark.
  • Merely present adversarial arguments against registration.
  • Avoid the requirements for filing an opposition proceeding.
A key advantage of a letter of protest is that it can result in the USPTO's refusal to register an objectionable mark, resulting in the same outcome as a successful opposition proceeding, but at significantly less cost.
For a sample letter of protest alleging likelihood of confusion between the trademark owner's registered mark and an applied-for mark, and information on how and when to file a letter of protest, see Standard Document, Trademark Letter of Protest (Likelihood of Confusion).