Here’s a glossary of trademark terms you need to understand to make sense of fighting frivolous trademarks. See all other posts regarding trademarks here.
Information to support whether a belief is true or valid. When it comes to fighting frivolous trademarks, your opinion and the applicant’s past or present actions are irrelevant. Each Letter of Protest must be supported with evidence that meets USPTO's strict guidelines. These guidelines may be different, depending on the basis of the protest. (See also Legal Basis.)
If the specimen is a mock-up, a fake specimen report should be submitted (in addition to a Letter of Protest, if appropriate).
Potentially overreaching trademark applications or registrations used to initiate frivolous claims of infringement.
These occur in every industry. Examples: STAINLESS STEEL (for garlic presses); ONCE A MARINE, ALWAYS A MARINE (for clothing).
“Frivolous Trademark” is a subjective term coined in the Amazon seller communities. Its use in this or other training materials should not be construed to suggest wrongful intent on the part of trademark applicants or owners.
Letters of Protest require the protester to select a legal basis for the protest. In other words, what case law exists to support a refusal of this application? What is the legal reason it should be denied? USPTO doesn’t have the authority to grant or deny registrations based on opinion. They must follow the rules of case law, which means they must be able to state the legal basis for refusal and support it with evidence sufficient to prove the refusal is correct.
There are several possible choices for legal basis on the Letter of Protest form. The Legal Basis most commonly used for a Letter of Protest in the print-on-demand space is:
“Failure to Function — Merely Informational and Widely Used Expression. See TMEP 1202.04 and 1202.04(b).”Some goods, such as stamped jewelry, may be protested with a "Merely Descriptive" basis. (Example: AFFIRMATIONS. For more info, see the post-pub protest and the refusal.) The "Merely Ornamental" basis listed on the Letter of Protest form is considered inappropriate by USPTO to use for a Letter of Protest in the novelty goods category, as they assume the Examining Attorney will consider that issue without help from others.
A Letter of Protest is a way for competitors to oppose the trademark registration of terms they believe may harm competitors. The LOP may be filed for new applications, and within 30 days of an application being Published for Opposition. There are two levels available: “Pre-pub Protest” and “Post-pub Protest”. The standard of Evidence required for a Pre-pub Protest is much lower. Dave Cadoff has explained the Pre-pub Protest process in stunning simplicity here.
Letter of Protest done after the application is Published for Opposition. Must be submitted within 30 days of the publication date. It's best to submit 75 pages of evidence plus an index. These take 2-10 days, probably less if you’re not dealing with brain fog and insomnia. Per multiple convo's with an Attorney Advisor, these are guaranteed to fail without a “slam dunk” level of evidence. If you can't find evidence that fits the checklist provided on this website, you're probably wasting your time.
Letter of Protest submitted before the application is Published for Opposition. These are easiest, and take about 15-30 minutes. It’s best to submit a pre-pub LOP within 3 months of the application filing date, before the Examining Attorney is assigned. (Earlier is better!) See Dave Cadoff's post for a step-by-step walk-through of a "bare bones" (read: quick and easy!) protest.
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