Rolf-InstituteEarly monitoring of trademark applications offers a strategic benefit in the United States compared to monitoring applications only upon publication. OLG offers global trademark application monitoring for its clients’ key brands and was able to flag and watch a US trademark application that conflicts with The Rolf Institute of Structural Integration’s trademark portfolio. In this case, a trademark application under OLG’s monitoring program was approved for publication on the Supplemental Register.

Trademark applications designated for the Supplemental Register present unique challenge for trademark owners. Marks published on the Supplemental Register are not subject to Opposition proceedings. An interested party who believes they will be injured by the registration of a trademark, must wait for the application to mature to registration before they can initiate a Cancellation proceeding before the TTAB. Without access to an Opposition proceeding, an interested party’s only alternative for early recourse before the USPTO is to submit a Letter of Protest. The Letter of Protest presents several of its own challenges and is rarely successful.

The Letter of Protest is an informal procedure which requests the Office of the Deputy Commissioner for Trademark Examination Policy (“Deputy Commissioner”) consider objective evidence relevant to the registration of a target mark. Letters are only accepted if they 1) present objective evidence that can be dealt with by the examiner in the ex parte examination and 2) it is determined that the evidence is relevant and supports a reasonable ground for refusal in examination.

Adversarial arguments are not accepted as the Letter of Protest does not replace the Opposition or Cancellation proceedings. The decision to accept a letter is made by solely the Deputy Commissioner and the letter is not made part of the application file. Instead a Letter of Protest Memorandum is added to the file and the examiner reviews the application in light of the evidence supplied in the letter.

The Letter of Protest should be filed before publication. If filed after publication, the letter will be accepted only for 30 days and only for evidence showing clear error by the USPTO in approving the mark for publication. An interested party monitoring an application has a window where they can wait to see if the examiner will reject an application, thus saving the cost of having to take action. If the examiner does not reject the application, the interested party can submit a Letter of Protest before publication.

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