Besides registering and using their brands, trademark owners are required to enforce the rights granted under the law.
Policing your brand means to monitoring the Trademark Registry and the market for identical or confusingly similar marks. Failure to enforce your trademark rights could mean losing those rights.
In the case of monitoring the Trademark Registry your mark is entered in a computerized system and every time an identical or similar mark in the same class is filed at the United States Trademark Office (USPTO) we receive a notification. If, we deem the new mark to be similar to your mark to cause confusion we will notify you and will let you know the steps we can take against the confusingly similar mark.
Until recently, those steps will consist of sending a cease and desist and/or enter into a time consuming and costly opposition proceeding.
However, Congress passed the Trademark Modernization Act of 2020 (TMA) providing trademark owners additional tools to reduce clutter and improve the integrity of the U.S. trademark register. One of those tools is the Letter of Protest (LOP).
A LOP can be used to give the USPTO evidence about the registrability of a trademark in a pending application that belongs to another trademark owner.
Common reasons raised in a LOP:
The trademark in the protested application is likely to be confused with a trademark in a U.S. registration or prior pending application.
The trademark in the protested application is merely descriptive of or generic for the identified goods or services.
The trademark in the protested application suggests a false connection with the protestor or some other party.
The trademark in the protested application is a widely used or commonplace message and does not function as a trademark.
A registered trademark appears in the identification of the goods or services in the protested application.
The specimens of use in the protested application feature an image that is used by third parties without the mark in question or an image that appears in multiple prior registrations or applications all bearing different marks.
A LOP cannot be filed for the following reasons:
The protestor claims common law prior use of the trademark in the protested application.
The protestor claims that the applicant is not the owner of the trademark in the protested application.
The protestor disagrees with the examining attorney’s examination of the protested application.
The LOP must be filed as soon as possible, after the protested application is filed and before is published for opposition. A letter of protest filed after publication and after the 30-day opposition period is too late and will usually not be considered.
If a submission is determined to be in compliance, only the specified ground(s) for refusal and the provided evidence relevant to the ground(s) for refusal will be included in the application record for consideration by the examining attorney.
I’d like to help by advising you on how to better monitor your brands and consequently enforce those rights through Letters of Protest.
