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On Fighting Frivolous Trademarks, Part 7: Letters of Protest Challenges and Results

Last updated on May 29th, 2020

This post is part of a 12-part series that examines why so many frivolous trademarks are registered, how it affects the print-on-demand industry, and what you can do to help. In this post, you’ll learn how the Letter of Protest procedure helps avoid faulty registrations despite its legalese and limitations. (To see an overview of the series, go to the “At the Beach” poem introduction or scroll to the bottom for an ordered list of posts.)

Letters of Protest: Challenges and Results

Somewhere along the way, USPTO instituted the Letter of Protest system. It’s a way for interested parties to submit objective evidence that an application might not be eligible for registration. It’s apparently been around for at least a few years, although most creatives only learned of it in 2018 through the efforts of Ken Reil, founder of the Trademark Watch Dawgs group.

The Letter of Protest is an imperfect, much-maligned, yet incredibly useful tool to promote quality registrations. Here’s proof it works.

LOP Challenge: Imperfect and Difficult to Implement

I apologize in advance for the following personal references, given only to provide a small business owner’s perspective on the Letter of Protest system.

My introduction to the Letter of Protest was a random Facebook post by Ken Reil. I didn’t know him. He had presented at training I’d attended six months earlier. That post intrigued me enough to start digging around, and I soon joined the Facebook group he started to fight frivolous trademarks.

That same week, Ken and I (unbeknownst to each other) talked with USPTO Attorney Advisors about the growing problem of frivolous trademarks and how to fight them using the free Letter of Protest system.

I learned from my conversation with “Joe” that USPTO welcomed protests from industry insiders because they provide objective evidence to help examining attorneys consider each application in light of industry-specific facts of which they may be unaware.

“Easy for you to say.”

Sorry. Legalese.

It gives us a way to help them spot frivolous trademarks, y’all.

The Letter of Protest form itself needs to be improved and some of the procedural rules are aggravating (more on that in Part 9). But it’s still the best thing since sliced bread.

The Trademark Watch Dawgs Facebook group grew quickly, and several members began filing protests. Some of these early attempts were denied because strict impartiality rules prohibited USPTO staff from giving any specific advice or instruction in advance.

It was trial and error, all the way.

  • Call up the trademark office when a protest was denied to find out why it had failed.
  • Learn how to meet evidence requirements.
  • Learn how to vet applications to avoid moot protests. (“Moot”=don’t bother with this y’all)

So we learned. And we documented what we were learning. The group was converted to an “educational group” so that Educational Units could be created.

Members were learning

  • how to search USPTO’s databases for trademark applications on TESS
  • how to navigate TSDR to read applications, documents, and current status
  • how to identify the goods and services affected by the application
  • whether the application was new enough to file a protest
  • how to gather relevant and reasonable evidence affecting the registrability of a term
  • how to remove all personally-identifying information from evidence
  • what language to use for the legal basis of the protest
  • how to provide evidence a clear error was made (because some frivolous applications are discovered late in the process)

We had a busy time, y’all!

Letters of Protest: Maligned by Attorneys

Opposition to the Letter of Protest procedure by attorneys is easy to find, and this isn’t surprising. They often have difficulty grasping why a Letter of Protest is available in the first place.

One attorney says, “It is hard to imagine what compelling public interest is involved in keeping letters of protest secret.” Yet the very first paragraph about the Letter of Protest in TMEP (which she cites) explains

The letter of protest procedure… is intended to aid in examination without causing undue delay and without compromising the integrity and objectivity of the ex parte examination process. 

TMEP 1715    Letters of Protest in Pending Applications

The letters of protest are secret because the evidence must be objective. Even the examining attorney doesn’t know who submitted it. And only relevant, objective evidence is given to the examining attorney for consideration.

This evidence IS in the public record. Look for “Administrative Response” in the documents if you’d like to see it when your client is a “victim” of such a letter. (Lighten up, Frances.)

She further presumes, “the letter of protest procedure allows competitors to manipulate the trademark
examination process to their legal and financial benefit.”

Um, no.

The letter of protest allows interested parties to present objective evidence in order to help avoid faulty trademarks and trademark abuse in any industry. All that’s required is someone who cares.

But wait, there’s more. She goes on to postulate

[The] only obvious candidates filing letters of protest appear to be big brand owners, usually major international corporations, concerned about competition from a similar trademark. The reason that these filers are likely to be big brand owners is because these entities have the legal machinery required to generate letters of protest.

Source: The Secret PTO by Katherine L. McDaniel

Wrong. Again.

The Letter of Protest is a protection tool for the little guy, not a “secret” way for “big brand owners” to “manipulate the trademark examination process.”

Little guys have way more time than money. They probably can’t afford a Petition to Cancel. The Letter of Protest gives them a chance to be protected from trademark overreach by the big boys.

(That’s only the first of several reasons it should be free, y’all. But I digress.)

The Letter of Protest system is the only means available to small business owners (“Davids”) who are in danger from big brand owners (“Goliaths”). And, incidentally, the one time I saw an attorney use the system, they violated the rules with several pages of legal argument.

True story.

Just like all my stories.

And if they’re not true, I think they are.

Just like you think your stories are true, too.

So let’s don’t be mad if our stories don’t agree.

Let’s love freedom of conscience more than political correctness.

Oops, there I go digressin again.

Another attorney complains that letters filed by people who “have no legal training” are of little merit and should be discouraged. Yet the record shows just the opposite is true.

Then, she wrongly assumes the Trademark Watch Dawgs group promotes filing “several letters of protest for each application.”

It’s not true.

Even in the first weeks of filing protests, we learned that USPTO’s rules prohibit more than five protests against a single application.

Public opinion may not be used to influence the application process; therefore, mass mailings by special-interest groups will not be made part of the record.  Letters of protest that raise the same objection to registration submitted by five or more different parties will be considered a mass mailing.

TMEP 1715.01(b)    Issues Inappropriate as Subjects of Letters of Protest

For this reason, one of the TWD admins (an expert user of Airtable’s free online database software) developed an Airtable to collect questionable marks, protect sensitive data, and avoid duplicate protests.

Y’all, there’s so much “not true” stuff in that attorney’s letter, I’ll be sending an annotated copy to the USPTO.

Relax. I’m not mad at that attorney. And I hope she won’t be mad at me for pointing out the flaws in her arguments. Somebody had to do it. And, as they say, “A need seen is an assignment given.”

Just because she got some things terribly, horribly wrong in her letter, doesn’t make her a bad attorney. She is just like FIVE other attorneys whose applications USPTO turned down after considering objective evidence of registrability. And y’all, some of those attorneys have a lot of street credentials, if you get my drift.

The problem isn’t that attorneys are somehow “unqualified” or “less than.”

The problem is that assessing registrability of a mark requires BOTH a good grasp of trademark law and a clear understanding of how a term is used in the relevant industry.

And that’s why the Letter of Protest is such a valuable tool for ensuring valid registrations.

Letters of Protest Results: A Useful Tool to Promote Quality Registrations

In 2019, I left the group to pursue private interests. Here are just some of the ineligible applications that were stopped by letters of protest in our first year:

In case the embedded Airtable doesn’t work properly, here are the marks:

  • AFFIRMATIONS (SN87859333)
  • DRAMA LLAMA (SN88012018)
  • EGG SPECTING (SN87030334)
  • FELIZ NAVIDOG (SN87649609)
  • GIRLBOSS (SN87959379)
  • HODL (SN87597378)
  • I’M KIND OF A BIG DEAL (SN87772719)
  • LIKE A BOSS (SN88090544)
  • LITTLE SISTER (SN87790714)
  • MAMA BEAR (SN88011770)
  • WE CAN DO IT (SN87899371)
  • CHICKEN WHISPERER (SN 87711946)

The above twelve marks were all published for opposition. Meaning, they were approved for registration. One of them (CHICKEN WHISPERER) accepted a protest after publication that was submitted shortly before the publication date. The others all reflect post-publication protests that the Commissioner of Trademarks agreed proved each approval was a clear error. In some cases, the post-publication protest was a second (or even third) protest of the mark.

Five of the eleven applications were prepared by attorneys. Just a reminder, USPTO’s requirement of attorney-prepared applications is no guarantee of registrability.

If I didn’t have a life, maybe I’d spend the next several days documenting the 150+ pre-publication protests that USPTO Attorney Advisors accepted during my time at Trademark Watch Dawgs. Meaning, they decided the evidence was relevant to assessing the registrability of the proposed mark.

In case you’re wondering, these protests were filed by a lot of different people, not just a handful of admins or experts.

Does the Letter of Protest procedure work?

You bet it does.

Is it worth enough to keep it free?

I sure think so!

That’s not to say it’s perfect. In Part 8 I’ll share some lessons learned in my quest to become a Letter of Protest Whisperer. (Joke. Sort of. Hope the Dog Whisperer and Lash Whisperer people don’t come after me!)

In spite of all that has already been done to eliminate ineligible applications and faulty registrations, there’s a lot left to do to clean up the mess.

This is Part 7 of a 10-Part Series. If you missed previous installments select from the list below to read the rest of the series.

To see the full threat and impact of frivolous trademarks, read the rest of this 10-part series.

Part 1: At the Beach (the poem overview)

Part 1b: Overview (why I got involved))

Part 2: Define Frivolous Trademark

Part 3: Gaming the System

Part 4: Print on Demand a Growing Industry

Part 4b: How Amazon Drives Frivolous Trademarks

Part 5: Misguided Creatives and Trademark Attorneys (the Current System)

Part 5b: Ornamental Refusals and Red Oceans

Part 5c: USPTO Started It

Part 5d: "Life is Good" Lawsuits

Part 5e: Keep Calm and Slogan On

Part 6: USPTO Issues and Efforts

Part 7: Letter of Protest Challenges and Results

Part 8: Letter of Protest Lessons

Part 9: System Bias