It was a mere 43 years ago, in 1972, when Steely Dan first mused “times are hard/you’re afraid to pay the fee/so you find yourself somebody/who can do the job for free.” The “somebody” in Steely Dan’s hit song, appropriately titled “Dirty Work,” was almost certainly not a reference to the U.S. Patent and Trademark Office (in fact, it likely had a more subtle, less appropriate meaning), but the reference could apply nonetheless. How does one let the PTO do their trademark enforcement “dirty work? By filing a letter of protest, of course.
A letter of protest is a short letter attaching evidence that can be used to support an Examiner’s refusal to register a third-party’s trademark application. The letter can be based on various grounds, including that the applied-for mark is merely descriptive or generic, or that it is likely to be confused with the protesting party’s registered marks and prior-filed applications. If the PTO Petitions Division grants the letter (which can be submitted electronically), the evidence will be forwarded to the Examining Attorney, who will decide whether to act on it by refusing registration of the application. If the application is refused, the applicant will need to convince the PTO to withdraw the refusal, and success is not guaranteed.
And just like that, a potential dispute between the protestor and applicant that would otherwise need to be resolved through a (costly and time-consuming) opposition filed by the protestor becomes a dispute between the applicant and the PTO. The timing of filing the letter of protest can be tricky, though. If filed before the application is published, the letter is subjected to a more lax standard of review (“relevant evidence”) than if filed afterwards (“clear error” on the part of the Examiner). And in almost no circumstances will a letter be granted if filed after the opposition period closes (30 days following publication).
Pro-tip: some practitioners choose to file letters of protest after the application is examined – the theory being that the Examining Attorney might refuse registration on her own, so why bother filing until the outcome of examination is certain? Experience suggests, however, that it may be advantageous to file even before examination takes place, since the Examining Attorney might have incentives to stand by her original decision to pass the application through to publication. Heed this pro-tip and ensure that, at the end of the day, the PTO is the “fool to do your dirty work” (and not the other way around).
The material contained in this communication is informational, general in nature and does not constitute legal advice. The material contained in this communication should not be relied upon or used without consulting a lawyer to consider your specific circumstances. This communication was published on the date specified and may not include any changes in the topics, laws, rules or regulations covered. Receipt of this communication does not establish an attorney-client relationship. In some jurisdictions, this communication may be considered attorney advertising.
