New USPTO Standard Offers Enhanced Opportunity for Third-Party Protest of Trademarks

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March 30, 2009
Jerry Helget

The U.S. Patent and Trademark Office (USPTO) has introduced a new standard of review for Letters of Protest, now allowing third parties to introduce evidence before a federal trademark registration is issued, avoiding the delay involved with having to file a formal Opposition. This new procedure gives trademark examiners greater discretion to act on such evidence and provides an opportunity, earlier in the process, for third parties to challenge the registrability of a mark.

A Letter of Protest is an informal nonadversarial procedure whereby third parties can bring evidence regarding a specific mark to the attention of the USPTO. The Deputy Commissioner for Trademark Examination Policy has the authority to determine if the information supplied should be given to the trademark examiner for consideration. Under the former standard, if the Deputy Commissioner granted review of the letter, it meant prima facie evidence was found to show clear error in the registration’s issue. The trademark examiner was required to refuse registration. This obviously resulted in a high threshold test and made successful Letters of Protest uncommon.

The USPTO’s new, less stringent standard allows the Deputy Commissioner to grant review of a Letter of Protest where it is determined that the evidence is relevant and supports any reasonable grounds for rejection. The examining attorney is required to consider the evidence, but is given discretion to make an independent determination as to whether to allow the registration or to issue a rejection.

The Letter of Protest has advantages and possible disadvantages. If the third party's evidence of unregistrability is good, the Letter of Protest is a cost-effective, quick and efficient way to stop a competitive registration application from issuing. If the third party's evidence is not rock solid and requires arguments, a Letter of Protest should not be used. The third party may be better off to wait and file a formal Opposition once the application is published.