Third parties who object to the registration of a mark in a pending application must never contact an examining attorney directly in any way. Instead, they may file a letter of protest.

Letters of protest are not part of the official application record. In order to ensure their proper routing and processing, the Office requires that letters of protest be filed electronically via the Trademark Electronic Application System (TEAS). Letters of protest filed on paper will not be considered. A separate letter of protest, including relevant evidence, must be filed for each individual application that is being protested. See TMEP §§1715.04(a), (b) (b) regarding the nature and format of evidence to be included with a Letter of Protest. In TEAS, the Letter of Protest form can be accessed by clicking on the link entitled "Petition Forms" at https://www.uspto.gov/Teas.

The letter of protest must include an email address for receiving an acknowledgment of the submission and a response accepting, denying, or dismissing the letter of protest.

Generally, the protestor should expect to receive the response within 60 days of filing the letter. The protestor should monitor the application status by checking the TSDR database at https://tsdr.uspto.gov to determine whether an action accepting the letter of protest has been taken. This information will be in the public record only if the letter of protest is accepted. If a protestor has not received a response within three months of submitting a letter of protest, the protestor should contact the Petitions Office to confirm receipt of the letter of protest.

Protestors should continue to monitor the status of the application being protested because the application may be approved for publication, republication, or issuance of a registration even after a letter of protest is accepted. Ongoing monitoring will ensure protestors the opportunity to take other action such as filing a notice of opposition. A protestor may file a second letter of protest after publication only if it raises a substantially different basis for filing the letter of protest or it provides significant additional evidence that clearly establishes a prima facie case for refusal of registration.

If the letter of protest is accepted, only evidence relevant to examination of the mark, or the registration numbers or pending application serial numbers raised as potential bars to registration, are forwarded to the examining attorney. If such evidence is not included, the letter of protest will be denied. See TMEP §1715.04(b) regarding the amount and format of evidence for letters of protest.

Note that a letter of protest should not include information or evidence concerning prior use, actual confusion, or fraudulent activity. These are not appropriate grounds for refusing registration during ex parte examination and must be addressed in an inter partes proceeding before the Trademark Trial and Appeal Board or a civil court.

The type of evidence relevant to the examination of the mark depends upon the nature of the objection raised. For example, if an objection is filed on the basis that a mark, or portion of a mark, is descriptive or generic, the protestor must submit factual, objective evidence, such as descriptive or generic use by others or excerpts from the dictionary showing the meaning of the mark. Merely submitting a list of web sites is not sufficient, and a letter of protest that only includes such a list will be denied. If third-party registrations are offered to show that the mark or a portion of the mark is descriptive, generic, or so commonly used that the public will look to other elements to distinguish the source of the goods or services, a mere list of the registrations or copy of a search report is not proper evidence of such registrations. Rather, copies of the registrations or the electronic equivalent thereof (i.e., printouts or electronic copies of the registrations taken from the electronic Trademark database of the USPTO) must be submitted. See TMEP §1207.01(d)(iii).

Generally, if an objection is based on a likelihood of confusion with existing federally registered marks or prior-pending applications, and the goods and/or services are identical, third parties need only submit the relevant registration or application serial number(s). If the goods and/or services are not identical, evidence of the relatedness of the goods and/or services must be included or the letter of protest generally will be denied. Such evidence may include advertisements showing that the relevant goods/services are advertised together or sold by the same manufacturer or copies of registrations showing that such goods/services emanate from the same source. Note that a list of registration numbers, a chart containing the registration numbers and identified goods/services, or a copy of a search report is not proper evidence to show the relatedness of the goods or services in the registrations. Rather, copies of the registrations or the electronic equivalent thereof (i.e., printouts or electronic copies of the registrations taken from the electronic database of the USPTO) must be submitted. However, third-party registrations not based on use in commerce have little, if any, persuasive value and generally will not be forwarded to the examining attorney for consideration of the relatedness of the goods and services. See TMEP §1207.01(d)(iii). In addition, where a protestor wants to establish that its goods or services are related to those in the application(s) for which it is submitting the letter of protest, such evidence must pertain to the goods or services identified in the application. Evidence regarding how the protestor is using its mark for goods or services not identified in the registration or prior-pending application that form the basis for the letter of protest, or information regarding how the applicant is using or may use its mark in commerce in the future that varies from the scope of the identification in the application, is inappropriate and will not be forwarded to the examining attorney.

The letter of protest should include only a simple statement of the proposed legal ground(s) for refusing registration or issuing a requirement, together with succinct, factual, objective evidence to support the refusal or requirement. It should not include arguments. The letter of protest process is intended to provide an opportunity for the protestor to efficiently and effectively provide relevant evidence in support of the proposed legal grounds for refusing registration identified in the letter of protest. It is inappropriate for the protestor to "dump" evidence and leave it to the Office to determine its possible relevance. Therefore, evidence submitted with the letter of protest should be succinct, not duplicative, and be limited to the most relevant evidence. Although an index is required for evidentiary submissions exceeding 75 pages, the Office strongly encourages the use of an index in all letters of protest that contain multiple forms of evidence because it aids in the consideration of the details of all the evidence provided by the protestor. See infra, this section, for the requirements of an evidentiary index.

When the basis of the letter of protest is the existence of federally registered marks, or prior-pending applications, with which the protestor alleges that there is, or would be, a likelihood of confusion with the mark in the protested application, the protestor should not identify more than the five most relevant registrations or applications that could form a basis for refusal. If the protestor identifies more than five registrations or applications, only the first five identified registrations or applications will be considered.

Where numerous examples of third-party registrations or web pages exist regarding the relatedness of the goods and/or services, or to support any other refusal, it is not necessary to provide them all. The evidence of third-party registrations and/or use submitted with the letter of protest should be limited to the most relevant ten to fifteen examples. More than fifteen examples of evidence generally will be considered duplicative and unnecessary and may result in the letter of protest being denied without consideration on the merits. Copies of third-party registrations must come from the electronic records of the Office and show the current status and title of the registration. When submitting printouts from the Internet as evidence, the printout must include the date the evidence was published or accessed and the complete URL address of the website. See In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1593 (TTAB 2018); In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1586 (TTAB 2018); Safer Inc. v. OMS Inv. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010). Similarly, copies of pages from books or articles must include sufficient information regarding the source.

It should be a rare situation in which more than 75 pages of evidence is necessary to support the proposed legal grounds for refusal. Therefore, a letter of protest accompanied by more than 75 pages of evidence will be denied without consideration on the merits unless it complies with the following requirements: (1) the letter of protest provides a detailed explanation about why more than 75 pages of evidence is necessary and (2) the letter of protest is accompanied by a separate itemized index of the evidence.

The index must be provided on plain paper (not letterhead) via an attachment to the TEAS Letter of Protest form, and contain a concise factual description of each category or form of evidence included. If any item of evidence attached to the letter of protest consists of multiple pages, the index must specifically identify the page on which the evidence appears and must highlight the relevant portion of the page. To maintain the integrity of the ex parte examination process, the index must not identify the protestor or its representatives or contain any arguments or use subjective terms to identify or describe the evidence.

As discussed above, if a letter of protest filed before publication is accepted, the relevant evidence submitted by the protestor is referred to the examining attorney. However, the examining attorney is not required to issue a refusal or requirement as a result of the acceptance. See TMEP §1715.02(b). In an ex parte proceeding regarding an application in which the record includes evidence submitted in a letter of protest filed before publication, if the examining attorney did not issue a refusal or requirement based on the evidence, the Trademark Trial and Appeal Board will not rely on the evidence in the Board proceeding because the applicant would not have the opportunity to rebut the evidence. In an inter partes proceeding, a party may not rely on such evidence unless it introduces the evidence during the assigned testimony period, either through testimony or by a notice of reliance, as appropriate. See, e.g., 37 C.F.R §2.122(b)(2) and TBMP §704.03(a).