How to Stop a Confusing or Improper Trademark Application
A trademark Letter of Protest is a formal way to tell the U.S. Patent and Trademark Office (USPTO) why a pending trademark application should not be approved.
When successful, it can be a faster and much less expensive alternative to litigation. And unlike oppositions or lawsuits, a Letter of Protest is a discreet process handled directly by the USPTO.
When Is a Trademark Eligible for Registration?
Before understanding how a Letter of Protest works, it helps to know when a trademark can be registered.
A trademark is eligible if it is:
- Used in interstate commerce in connection with goods or services; and
- Unique enough to identify the source of those goods or services.
Use in Commerce
The USPTO requires actual use in commerce, meaning the mark is displayed to consumers across state lines in connection with real goods or services. A name or slogan sitting on your living room wall does not qualify.
Failure to show use in commerce is one of the most common bases for a Letter of Protest.
Distinctiveness
A trademark must also be distinctive. Marks that are merely descriptive, generic, or too close to an existing registered mark cannot be approved.
For example:
- DETROIT HAMMER COMPANY for a hammer business in Detroit is too descriptive.
- BLADIDAS for sneakers is too close to ADIDAS and would confuse consumers.
Likelihood of confusion and lack of distinctiveness are also strong grounds for a Letter of Protest.
How Does a Trademark Letter of Protest Work?
A Letter of Protest is filed with the USPTO’s Deputy Commissioner for Trademark Examination Policy, who reviews whether it meets procedural requirements.
If accepted, the Letter of Protest and its supporting evidence are forwarded to the assigned Trademark Examiner. The Examiner may then issue an Office Action refusal based on the arguments raised.
Key points:
- The filer does not communicate directly with the Examiner.
- Timing is critical — it must be filed before the end of the application’s Publication Period (see below).
- When done correctly, it can stop a problematic application before it registers.
What Arguments Can a Letter of Protest Raise?
The USPTO limits the types of arguments that can be raised. Valid grounds include:
- Likelihood of confusion with an existing registration;
- The applied-for mark is merely descriptive or generic;
- Failure to show use in commerce;
- The mark conveys a commonplace message (e.g., “Rock On!”);
- False association with another party’s goods or services.
Arguments that cannot be raised include:
- Claims of common law prior use;
- Disputes over true ownership of the mark;
- General Examiner mistakes.
Those disputes must be handled through an Opposition or Cancellation proceeding.
When Must a Letter of Protest Be Filed?
Timing is crucial:
- Before Publication: You must identify grounds for refusal and provide supporting evidence.
- After Publication (but before the 30-day Opposition period ends): You must provide stronger evidence showing registration would violate the Trademark Act.
A Letter of Protest cannot be filed after the publication window closes.
Why Work With a Trademark Attorney?
The USPTO is strict about Letters of Protest — format, evidence, and timing must be exactly right. A mistake can waste time and allow a confusing trademark to slip through.
An experienced Michigan trademark attorney can:
- Evaluate whether a Letter of Protest is the right tool;
- Draft persuasive arguments;
- Gather the strongest evidence;
- Ensure deadlines are met.
Protect Your Brand With a Letter of Protest
If you’ve spotted a confusing or improper trademark application, act quickly. A Letter of Protest may stop it before registration — saving you time, money, and possible litigation.
Noble Path Legal PLLC helps entrepreneurs, startups, and established businesses across the U.S. with trademark registration, trademark renewal, and USPTO Office Action responses, as well as letters of protest and related proceedings.
Click the button below to schedule your consultation today and take control of your brand protection strategy.