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Letters of Protest: A Tool To Avoid The "Trademark Bully" Label

Thanks to DuetsBlog for providing an update on the EAT MOR CHIKIN v. EAT MORE KALE dispute that was the subject of our prior post.  As we reported in December, the Trademark Office issued an office action on the pending trademark application for EAT MORE KALE for t-shirts, etc. and determined that "no similar registered or pending marks ... would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02 [likelihood of confusion grounds]."  Shortly after issuance of this office action, as reported, an "Administrative Response" appeared in the prosecution file entitled "Letter of Protest Memorandum."  The memorandum noted that the Office of the Deputy Commissioner for Trademark Examination Policy had granted a Letter of Protest filed by an undisclosed party and specifically directed the examiner to consider U.S. Reg. Nos. 2,062,809, 2,197,973, 2,538,050 -- registrations for EAT MOR CHIKIN owned by Chik-fil-A.  The examiner must now make an "independent determination whether to issue a requirement or refusal based on the objections raised in the Letter of Protest."  So, the Letter of Protest has the potential to bring the likelihood of confusion issue to a head before Chik-fil-A had to decide whether to initiate a formal opposition proceeding, which is helpful given the press attention that this particular dispute has received.

So what is a Letter of Protest (LOP) and how does it work? 

An LOP is a letter to the U.S. Patent and Trademark Office requesting that the attorney in charge of reviewing and approving a specific trademark application (the examining attorney) be advised of certain information and evidence when considering the merits of a party’s application.  Evidence relied upon by the “protesting” party must be included with the letter. If the USPTO grants the LOP, the evidence provided by the party that filed the LOP (and not the cover letter itself) will be forwarded to the examining attorney for consideration in conjunction with the subject application. It is then up to the examining attorney to consider the evidence cited in the LOP and make a determination whether to issue a refusal of the mark or an office action setting forth an additional requirement.

A party may file an LOP citing any basis for rejection generally available to the examining attorney under the established ex parte rules (as opposed to the different grounds generally available to third parties when filing an opposition or cancellation petition). The grounds most typically cited in LOPs are:  (1) a likelihood of confusion between the new mark and the mark in the protester’s earlier-filed application or registration; (2) the descriptiveness or genericness of the proposed mark; and/or (3) pending litigation involving the mark that would adversely affect its registrability.  After choosing the proper basis for the LOP, a protesting party must then compile the evidence it believes best supports its ground for objecting to the registration of the mark. As you would suspect, the more factual and objective the evidence is, the more likely it is that the USPTO will grant the LOP. Conjecture, arguments, and conclusory statements will rarely, if ever, be sufficient for granting an LOP and may be more suitable for formal opposition and cancellation proceedings.  The filing fee for an LOP is $100.

Timing is important. If filing an LOP against another party’s trademark or service mark application interests you, you should make every effort to file it before the subject mark is published for opposition purposes. By doing so, it is much more likely to be granted and the supporting evidence forwarded to the examining attorney for consideration in conjunction with the subject application. The primary purpose of the LOP is to assist the USPTO in examining an application without causing undue delay or compromising the integrity and objectivity of the application examining process. Once that examination has occurred, stopping the registration process and re-examining the subject application could generally cause undue delay and expense. When a protest is granted, the actual letter of protest is not made part of the record.  Nor is it forwarded to the examining attorney or the applicant.  The examining attorney simply receives a form letter (Letter of Protest Memorandum) from the Administrator indicating that a letter of protest was granted and briefly indicating the nature of the protest, with the factual evidence filed with the LOP attached.  Thus, it is essentially a stealth attack on a pending application.

In the EAT MORE KALE matter, the LOP is the perfect tool.  It forces the examiner to focus on the potential likelihood of confusion issue again (even though she had recently determined that there was no basis for a refusal under Section 2(d)).  It also keeps Chik-fil-A out of the spotlight.  We assume that Chik-fil-A is the undisclosed party that filed the Letter of Protest but the LOP itself is not public.  That sure beats filing a notice of opposition with the Trademark Trial and Appeal Board or a trademark infringement complaint in federal court, both of which would have generated renewed press interest in the dispute and could have even prompted another pro-EAT MORE KALE press conference by the Governor of Vermont.  So, the LOP allows Chik-fil-A to stay under the PR radar, at least for the time being.  At a time when the "trademark bully" label is bantered about with some frequency, an LOP could be a valuable tool for keeping a trademark owner's identity hidden.

For more information regarding letters of protest, click here.

UPDATE:  In response to the Letter of Protest, the Trademark Office issued an Office Action on 3/27/11 in which it refused registration of the applied-for EAT MORE KALE mark based on Section 2(d) of the Trademark Act (likelihood of confusion grounds).  In concluding that the applied for mark was likely to be confused with Chik-fil-A's EAT MOR CHIKIN mark, the examining attorney noted the two marks shared the wording "EAT MORE" and were used in connection with the same or similar goods (clothing).  The EAT MORE KALE applicant has 6 months to submit a response to the Office Action.

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Geri Haight is a Mintz Member and former in-house counsel who focuses on employment litigation, counseling, and compliance, as well as intellectual property and trade secret matters.