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Letters of Protest Help Challenge Trademark Applications

If an adversary files a trademark application you believe should not be granted, or that harms your interest, consider filing a Letter of Protest with the U.S. Patent and Trademark Office (PTO). This clever tactic allows someone to introduce evidence to the PTO that the PTO may not have known about and that may impact whether a mark should be registered. A core benefit of a Letter of Protest is that the entity that files is not getting into a dispute with the applicant, but is merely providing the PTO with relevant information to allow the PTO to take up the fight on its own. The Letter of Protest can only raise objective reasons the PTO should deny the application, such as the mark is descriptive or generic, infringes on an existing mark or application, or is the name of someone who has not consented. The PTO will not act on assertions that need additional proof, such as a common law use has priority over the application or the applicant is not the true owner of the mark or committed fraud to obtain the registration. A complaint about these disallowed aspects must wait for the opposition period and must be taken up by the party whose mark is claimed to be harmed by the pending application.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com