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Letters of ProtestProvide Convincing Evidence for Successful LOPs

Alt Legal Team | December 08, 2021
5 min read

The Letter of Protest (LOP) is a useful tool for trademark practitioners and brand owners. Third parties can use LOPs to submit evidence to the USPTO relevant to the registrability of a trademark during the initial examination of the application. Third parties may use LOPs to challenge a mark based on likelihood of confusion, descriptiveness/genericness, the allegation that the mark is a widely used message, among a variety of other reasons. Under the Trademark Modernization Act (TMA), Letter of Protest determinations are now final and non-reviewable.

This article describes the types of evidence that you’ll need to support your LOP, depending on the type of LOP you’ve filed and the grounds that you’ve asserted. We’ve included many useful practice tips to improve your success when filing a LOP. Also, be sure to check out our related article on how to file a Letter of Protest and USPTO procedures for processing and acting on LOP filings, Letters of Protest: Practical Tips for Filing a Successful LOP.

Required Evidence

Depending on when a LOP is filed, different types of evidence are required. For a pre-publication LOP, you must identify the relevant ground(s) for refusal or requirement(s) (ex. likelihood of confusion, descriptiveness, widely used message, etc.) and provide evidence supporting each refusal or requirement.

For a post-publication LOP, you must include evidence supporting a prima facie case for refusal(s) or requirement(s), such that failing to refuse registration would violate the Trademark Act or Rules of Practice.

Evidence – TMA New Index Requirement

The TMA has instituted many changes with regard to evidence required for LOPs. If evidence is required for your LOP, you must include an index itemizing the evidence. The index cannot contain any arguments or persuasive language, nor can it identify the protestor or the protestor’s law firm. If it contains this information, the LOP will not be considered.

Here is a sample of how the index should appear. Be sure to lay out each exhibit, indicate what type of evidence it is, specify what ground it supports (provide a simple statement – do not detail why the evidence supports the ground), and include the page number.


SAMPLE Index of evidence
    
Exhibit A 

  • Type of evidence: [e.g., webpage, dictionary definition, application, registration]
  • Ground supported: [e.g., likelihood of confusion, descriptiveness]
  • Page number: [fill in page number where exhibit appears, if applicable]

Exhibit B 

  • Type of evidence: [e.g., webpage, dictionary definition, application, registration]
  • Ground supported: [e.g., likelihood of confusion, descriptiveness]
  • Page number: [fill in page number where exhibit appears, if applicable]

Exhibit C 

  • Type of evidence: [e.g., webpage, dictionary definition, application, registration]
  • Ground supported: [e.g., likelihood of confusion, descriptiveness]
  • Page number: [fill in page number where exhibit appears, if applicable]

In total, you may submit up to 75 pages of evidence (unless there are special circumstances that you must explain in detail) and include no more than 10 pages of evidence per ground. If you submit more than 75 pages of evidence without an explanation of special circumstances, the LOP will not be considered. One way to keep your evidence under 75 pages is by not submitting any evidence that the examining attorney has already submitted as it is already part of the record.

When including evidence in the form of URL screenshots/printed-publication information, include the URL/date and/or print date on the evidence itself because the LOP is not forwarded to the record, only the evidence is forwarded to the record. The petitions attorney will not be able to review the information not included in the evidence. Also, note that if the URL/date doesn’t automatically appear on a screenshot, it is acceptable to type in the date on a screenshot so long as the USPTO is able to verify it.

There are a few circumstances where no evidence is required. They are as follows:

  • No evidence is required in a §2(d) (likehood of confusion) LOP where goods identified in the application and goods listed in the cited registration are identical. Therefore, you wouldn’t need to provide evidence that goods are related.
  • No evidence is required when the mark in registration that you’re relying on in your LOP is being used by the applicant in the protested application in the identification of goods.
  • No evidence is required when the LOP is relying on a federal statute protecting a particular emblem or symbol (Boy Scouts of America, Red Cross, etc.)

Likelihood of Confusion LOP – Evidence Required

  • Provide the five most relevant registration numbers or prior-pending applications serial numbers. The USPTO will not consider more than five listed registrations/applications. Provide only the registration numbers or application numbers – you do not need to supply the full TESS/TSDR record.
  • If the goods/services listed in the application and the prior-pending application or registration are not identical, you must submit relatedness evidence. This includes 1-10 pieces of evidence showing that the goods are related including:
    • Third party registrations, showing records from TESS/TSDR
    • Third party websites including the URL and the access/print date
    • Printed publications, identifying the name and date of each publication

Descriptiveness/Genericness LOP – Evidence Required

  • The best evidence is from an online dictionary (general or industry-specific) showing meaning of the mark. Must include the access/print date.
  • Third party websites showing the protested mark used in a descriptive or generic manner for the same goods/services that you are protesting. Must include the access/print date.
  • For in-use registrations, provide copies of TESS/TSDR record showing current status and owner.
  • Printed publications showing the protested mark used in a descriptive or generic manner for the same goods/services that you are protesting. Must provide the name and date of each publication.

Improper Use of Registration in Identification of Goods LOP – Evidence Required

  • Provide registration number(s) of registered marks.
  • May provide common commercial name of goods/services that applicant should have used in the identification.

Widely Used or Commonplace Message LOP – Evidence Required

  • Evidence showing the public’s perception of the meaning of the applied-for mark as a widely used or commonplace message.
  • Evidence showing people other than the protestor and applicant using the phrase in news, articles, webpages, and blogs.
  • Evidence showing online retail stores selling various products displaying the phrase.

Note: All website evidence must include the URL and access/print date and all printed publication evidence must include the name and date of each publication.

Note: Evidence from sources like Etsy and Redbubble doesn’t show how the mark is perceived, it simply shows the mark is used on a lot of goods. You must show what the phrase means which is easy to find – you can use any online dictionary, including Urban Dictionary.

Specimen is Not in Use LOP – Evidence Required

  • Third party websites showing the same image of the goods that the applicant used in their specimen, potentially without the applied-for mark or a different mark.
  • Forensic report showing that an image was digitally created, doctored, altered, or mocked-up.
  • Where the applicant is a bad actor, supply application numbers or registration numbers for different marks using the exact same image with a different trademark.
  • UPC barcodes on applicant’s specimens are identical.
  • Evidence showing proof that the specimen was not in use or did not exist prior to filing date.
  • Evidence of online retail websites showing goods identified in the application are not available IF combined with other evidence of nonuse.

Note: All website evidence must include the URL and access/print date.

False Connection with the Protestor or Another Party LOP – Evidence Required

  • Third party websites, magazine or newspaper articles, etc. showing that proposed mark would be viewed as directly pointing to the protestor or another party.

Note: All website evidence must include the URL and access/print date and all printed publication evidence must include the name and date of each publication.

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