If you believe that a federal trademark application pending for registration will infringe on your mark or application, you can alert the US Patent & Trademark Office (USPTO) about the issue before they review the application. A Letter of Protest (LOP) under the Lanham Act allows a person to submit evidence to the USPTO to show that a mark pending application is ineligible for registration.
LOPs are a relatively cost-effective way to address some trademark issues with the USPTO, which does not require adversarial proceedings. Potentially any party may submit an LOP concerning an application. Protesters filing LOPs must identify relevant grounds for refusal, along with evidence supporting each ground. A common and appropriate ground is likelihood of confusion with registered marks or those pending registration. If the goods or services identified in the contested application and those identified in the protestor’s prior pending application or registration are not identical, relatedness evidence must be submitted.
The USPTO will review your LOP, and if they find a basis for the alleged grounds, they will forward the evidence to the examining attorney assigned to the contested application. This may potentially result in a refusal of the application, or even an adversarial proceeding.
To file an LOP, you must do so as soon as possible after the contested application is filed; and ideally before the trademark is published for opposition. The deadline to file an LOP is 30 days after the subject application’s publication date. Letters filed after this date are generally denied as untimely. The USPTO acknowledges receipt of the letter and notifies the filer if it has complied with the filing requirements. There is no further action between the USPTO and the filer.
Before submitting an LOP, you should consider whether you should, in addition to or instead of filing an LOP:
- Send out a cease and desist letter;
- File trademark infringement litigation;
- Oppose trademark publication.
