Understanding Limitations of Letters of Protest in Trademark Proceedings
When you discover a pending trademark application that could conflict with your existing rights, you don't have to wait until it's published to take action. A trademark Letter of Protest gives you an early opportunity to present evidence to the USPTO about why a pending application shouldn't be registered. This powerful yet underutilized tool can save you significant time and money compared to formal opposition proceedings. By filing a Letter of Protest during the examination phase, you can provide the examining attorney with crucial evidence they might otherwise overlook—potentially stopping a problematic application in its tracks. However, it is not a magic bullet that will always work, and it should be understood against the backdrop of other strategies and options.
Whether you're dealing with a likelihood of confusion, descriptive marks, or other registrability issues, understanding how to properly file a Letter of Protest is essential for protecting your trademark rights. Here's everything you need to know about this cost-effective enforcement mechanism.
What Is a Trademark Letter of Protest?
A Letter of Protest is a formal submission to the USPTO that allows third parties to provide evidence about the registrability of a trademark in someone else's pending application. Unlike opposition proceedings, which happen after publication, Letters of Protest can be filed during the initial examination phase.
The USPTO's Office of the Deputy Commissioner for Trademark Examination Policy reviews these submissions and, when appropriate, forwards relevant evidence to the examining attorney handling the application. This early intervention can lead to refusals that prevent registration without requiring costly opposition proceedings. However, a Letter of Protest is only appropriate for certain grounds, and beyond those specific instances, it may be necessary to wait for the other party's application to publish so that you can bring an opposition proceeding. For instance, we are most often approached by clients who have a misconception that a Letter of Protest is appropriate when they have a common-law (unregistered) usage of a similar or identical mark that pre-dates the applicant. Unfortunately, that is not an appropriate basis for a Letter of Protest, and must be raised either as an Opposition, Petition to Cancel, or litigation. On the other hand, raising a likelihood of confusion with an existing, federally registered trademark or prior-filed, pending federal application can be an appropriate basis for a Letter of Protest.
The process is largely anonymous—the applicant typically won't know who filed the protest unless they specifically request this information from the USPTO. This makes it an attractive first step for trademark owners who want to address conflicts without immediate confrontation.
When to File a Letter of Protest
Timing is critical when filing a Letter of Protest. The most effective approach is to file as soon as possible after discovering the conflicting application, ideally before the trademark is published for opposition. In essence, a Letter of Protest can be filed after an application is filed. The main purpose of a Letter of Protest, is to seek to place important information on the record, so that when an Examiner examines the application, they will be apprised of that information and (hopefully) refuse the application. However, getting a Letter of Protest
Pre-Publication Filing
Letters of Protest filed before publication need only include evidence that is relevant to the stated grounds for refusal. The USPTO gives examining attorneys broad discretion to consider this evidence during their review.
Post-Publication Filing
If you file after publication but within the 30-day opposition period, your evidence must establish a prima facie case for refusing registration. This is a higher standard that requires more compelling proof. Naturaly, this also means it is less likely that you will get the result hoped for.
Too Late to File
Once the 30-day opposition period closes, Letters of Protest are generally not accepted. At this point, your options shift to petitions to cancel or federal litigation.
It should be stressed that, although you can file a letter of protest during the 30-day window for opposition, you should consider whether an opposition filing would better serve your purposes (as once that 30-day window elapses, you lose the right to file an opposition proceeding).
Valid/Appropriate Grounds for Filing a Letter of Protest
The USPTO only considers Letters of Protest that address issues the examining attorney can investigate without third-party involvement. Here are the appropriate grounds:
Likelihood of Confusion
You can protest if the pending trademark is likely to be confused with:
- A trademark in a U.S. registration that you own
- A mark in your prior pending federal trademark application
- Any other registered federal trademark (even if you don't own it)
Descriptiveness or Genericness
This ground applies when the pending trademark merely describes the goods or services or uses generic terms that shouldn't be monopolized by one party.
Widely Used & Commonplace Messages/Phrases
Marks that are commonplace messages or widely used phrases that don't function as source identifiers can be protested on this basis.
False Connection
If the pending trademark suggests a false connection with you or another party, this provides grounds for protest.
Improper Use of Registered Marks
When a pending application includes a registered trademark in its identification of goods or services, this creates valid grounds for protest.
Specimen Issues
You can challenge applications where the specimens show images used by third parties or appear in multiple prior registrations with different marks. This can also be the case when an applicant has used a specimen farm to file for a good/service that they are not actually using in commerce.
Inappropriate Grounds for Filing
Certain issues cannot be addressed through Letters of Protest, including:
- Common law prior use: Your unregistered trademark rights alone don't provide grounds for protest (rather, you should consider filing an Opposition proceeding)
- Ownership disputes: Claims that the applicant isn't the true owner of the mark
- Examination disagreements: Disagreeing with how the examining attorney handled the application
- Fraud allegations: Claims of false specimens or declarations require different procedures
How to File Your Letter of Protest
The USPTO requires all Letters of Protest to be filed electronically using the Trademark Electronic Application System (TEAS) Letter of Protest form. Here's what you need to include:
Required Components
Grounds for Protest
Select the appropriate radio buttons on the TEAS form to identify your reasons for requesting refusal or requirements.
Supporting Evidence
Submit relevant, objective evidence supporting each ground. Limit yourself to no more than 10 items per reason and 75 pages total.
Evidence Index
Create a separate, itemized index that describes each piece of evidence and explains how it supports your grounds. Keep descriptions factual—don't include legal arguments or identify yourself in the index.
Contact Information
Provide your email address for USPTO communications.
Filing Fee
As of 2025, the USPTO filing fee for a Letter of Protest is $150.
Evidence Requirements
Your evidence must meet specific formatting standards:
- One piece per page: Each item should appear on a single page
- Complete documentation: Include URLs and access dates for web evidence
- No personal information: Redact any personally identifiable information
- Objective content: Stick to facts—avoid persuasive language or arguments
For likelihood of confusion protests, you must provide registration numbers and filing dates for the conflicting marks.
Common Filing Mistakes to Avoid
Many Letters of Protest are rejected due to technical errors:
- Missing evidence dates: Web pages without access dates or articles without publication dates
- Excessive evidence: More than 10 items per ground or over 75 total pages
- Self-identification: Including protestor or attorney information in evidence or index
- Legal arguments: Adding persuasive language instead of factual descriptions
- Duplicate evidence: Including substantially similar items
- Wrong format: Failing to use the required TEAS form
After Filing: What to Expect
Once submitted, you'll receive a Letter of Protest Notice of Determination confirming that the USPTO received your filing. The examining attorney then has discretion over whether to issue an Office Action based on your evidence.
You can monitor the protested application's status using the Trademark Status and Document Retrieval (TSDR) system. If the examining attorney issues a refusal, it will appear in the application's prosecution history.
If your protest doesn't result in a refusal, you can still file an opposition once the mark is published. Letters of Protest don't limit your future enforcement options.
Alternative Enforcement Options
While Letters of Protest are cost-effective, they're not always the best choice. Consider these alternatives:
Opposition Proceedings offer more formal procedures and discovery rights, but they come at a significantly higher cost and occur after publication.
Cease and Desist Letters can resolve conflicts through direct negotiation but may escalate disputes.
Petitions to Cancel address already-registered marks but involve more complex procedures.
Federal Litigation provides the most comprehensive remedies but requires substantial time and expense.
Maximize Your Success Rate
To improve your chances of success, focus on objective, compelling evidence that clearly supports your grounds. Avoid common pitfalls like including too much evidence or making legal arguments in your index.
Consider working with a trademark attorney, especially for complex cases involving likelihood of confusion. Professional guidance can help you present evidence most effectively and avoid technical rejections.
Letters of Protest work best as part of a comprehensive trademark protection strategy, not as standalone solutions to complex disputes.
Take Action to Protect Your Rights
Filing a trademark Letter of Protest can be an effective first step in addressing conflicting applications, but success depends on proper preparation and execution. The $50 filing fee and evidence requirements make it accessible to most trademark owners, while the anonymous nature keeps initial costs low.
Start by monitoring trademark applications in your industry using the USPTO's database. When you identify potential conflicts, evaluate whether you have appropriate grounds and compelling evidence before filing. Remember that timing matters—the sooner you file after discovering a problematic application, the better your chances of success.
If you're facing a trademark conflict or want to establish monitoring procedures, consult with a trademark attorney to ensure you're using the most appropriate enforcement tools for your situation.
