Protest Potential: how to judge the potential success of a Letter of Protest

So, you’ve decided to file a Letter of Protest, but you want to be sure you’re not wasting your time. How can you be sure this will work?

Since each case is judged on its own merit, it is impossible for USPTO to provide a blanket checklist of evidence to include. Nor can anyone guarantee that your evidence will be “enough” to be accepted. Nor, if it is accepted, can anyone guarantee it will be enough to convince the examining attorney the application should be refused.

That said, here are the guidelines I use and recommend:

Pre-Pub Letter of Protest Evidence

Dave Cadoff has a “quick and easy” method that has been very successful in many cases. Still, Joe has told me several times, if the mark is “important” to you, it should include:

  • at least five individual products from Amazon,
  • at least five individual products from Etsy; and,
  • at least five individual products from other stores (with a total of 15 to 25 products). 

Each product should display a text/graphic that matches the phrase from the application exactly.

This is a little bit more evidence than in Dave’s walk-through. Use it if you care a little extra.

Post-Pub Letter of Protest Evidence

Joe says a post-pub Protest is destined to fail without a “slam dunk” level of evidence that USPTO made a mistake. It’s a very, very big deal. 

1. You’ve got to show widespread use:

  • Are there at least 15-20 unique products from different vendors on Amazon?
  • At least 15-20 on Etsy?
  • At least 10 on Redbubble, Society6, or designbyhumans?
  • Are there additional products offered by at least one major box store? Walmart, Target, Kohl’s, Nordstrom, Macy’s, other box stores? 

2. Is there evidence of the term’s popularity and everyday use?

  • Social media,
  • Know Your Meme,
  • Urban Dictionary,
  • Wikipedia — note, if you include Wikipedia, also include at least two of the linked references from the bottom of the Wiki article.

Note, this is extremely relevant for viral news stories, like “Boston Strong.” But the strongest post-pub protest evidence shows use in commerce (products that use the phrase to decorate the item or in marketing their goods). 

If you can find evidence that fits these guidelines, your protest has a solid chance of stopping the frivolous trademark registration.