Someone Filed for Your Trademark? How to File a Letter of Protest

Picture this: You’re doing your routine trademark monitoring when you stumble across something that makes your coffee go cold. Someone has filed an application to register YOUR trademark. Or something so close to it that you’re pretty sure they’ve been peeking over your shoulder.

Your first instinct might be to panic, followed quickly by thoughts of expensive litigation and years of courtroom battles. But before you start drafting that strongly-worded email (please don’t), there’s a lesser-known tool in the USPTO’s arsenal that could save you time, money, and stress: the Letter of Protest.

Think of it as the trademark world’s equivalent of raising your hand and saying, “Excuse me, but I think there’s been a mistake here.”

What Exactly Is a Letter of Protest?

A Letter of Protest is an informal (but surprisingly powerful) procedure that allows third parties to bring evidence to the USPTO’s attention about why a pending trademark application should be refused registration. It’s essentially your chance to tap the examining attorney on the shoulder and say, “Hey, you might want to take another look at this application.”

According to the USPTO, “You can use the letter of protest to give the USPTO evidence about the registrability of a trademark in a pending application that belongs to another trademark owner.”

The beauty of this process is that it works behind the scenes. The Letter of Protest itself never becomes part of the application file, and the examining attorney doesn’t know who submitted it. It’s like having an anonymous tip hotline for trademark issues.

When Can You File a Letter of Protest?

Timing is everything with Letters of Protest. You have a narrow window of opportunity:

Before Publication

If you catch the application before it’s published in the Official Gazette (the USPTO’s weekly publication), you can file a Letter of Protest at any time during the examination process. This is the sweet spot because the examining attorney will consider any relevant evidence you provide.

After Publication (But Act Fast!)

If the application has already been published, you have exactly 30 days from the publication date to file your Letter of Protest. After that window closes, this option is off the table unless the USPTO made a clear error in publishing the mark. More importantly, once it reaches publication, you’re likely better off filing a trademark opposition.

Pro tip: Set up alerts for new trademark applications in your industry. The earlier you catch potential conflicts, the more options you have.

What Evidence Can You Submit?

This is where things get interesting. Letters of Protest must be fact-based and objective—no emotional rants about how someone “clearly copied” your brilliant idea. The USPTO wants evidence, not opinions.

Acceptable Grounds Include:

Likelihood of Confusion: The most common reason for filing a Letter of Protest. You’ll need to provide evidence showing your prior trademark registration or pending application and demonstrate how the marks are similar.

Descriptive or Generic Terms: If someone’s trying to trademark “BEST PIZZA” for pizza restaurants, you can provide evidence showing this term is merely descriptive.

False Association: Evidence that registration would create a false connection with your business or brand.

Pending Litigation: If there’s already a lawsuit claiming the applicant’s use is trademark infringement.

What NOT to Include:

The USPTO has some strict no-nos for Letters of Protest:

• Common law trademark claims (your unregistered rights won’t cut it here)
• Ownership disputes (save that drama for the courtroom)
• Fraud allegations (these require a different procedure)
• Third-party opinions (your customers’ outrage won’t help)

What Does the Examining Attorney See?

Here’s where the process gets clever. The Deputy Commissioner reviews your Letter of Protest and decides whether to forward the evidence (but not the letter itself) to the examining attorney. The examiner has no idea who submitted the evidence—it just appears as additional information to consider.

If the Deputy Commissioner determines your evidence is relevant and might support a refusal, it gets quietly added to the examiner’s file. The examiner then reviews this evidence alongside the application and may issue an office action refusing registration based on the new information.

It’s like having a well-informed friend whisper helpful facts in the examiner’s ear.

Letter of Protest vs. Trademark Opposition: What’s the Difference?

Many business owners confuse Letters of Protest with trademark oppositions, but they’re quite different beasts:

Letter of Protest:

• Cost: $50 per application
• Timing: Before or within 30 days after publication
• Process: Anonymous, informal
• Evidence: Limited to what examining attorneys can handle
• Duration: Quick decision (within 2 months)
• Outcome: May result in office action, but no guarantee

Trademark Opposition:

• Cost: Minimum $600+ (plus attorney fees)
• Timing: During the 30-day opposition period after publication
• Process: Formal litigation before the TTAB
• Evidence: Full discovery, depositions, expert witnesses
• Duration: 1-3 years typical
• Outcome: Binding decision on registration

Think of a Letter of Protest as sending a helpful memo, while a trademark opposition is declaring war. The Letter of Protest is your first, gentler option that might solve the problem without the nuclear option of full litigation.

According to recent USPTO data, “Only 3% of applications are opposed”, making Letters of Protest an attractive alternative for addressing potential conflicts.

The Strategic Benefits

It’s Cheap

At $50, a Letter of Protest costs less than most business lunches. Compare that to the minimum $600 for filing an opposition (before you even think about attorney fees), and it’s a no-brainer first step.

It’s Anonymous

Nobody knows you filed it. This means no awkward conversations with competitors and no risk of being labeled as “that litigious company” in your industry.

It’s Fast

The USPTO must make a decision within 2 months. If successful, you’ve solved your problem quickly without years of proceedings.

You Keep Your Options Open

Filing a Letter of Protest doesn’t prevent you from later filing an opposition if the letter doesn’t work. You get two bites at the apple.

When Letters of Protest Work Best

Letters of Protest are most effective when:

1. The conflict is obvious: Clear-cut cases of descriptive terms or identical marks in related industries
2. You have strong evidence: Solid documentation of prior registrations or clear proof of descriptiveness
3. The timing is right: You catch the application early in the process
4. The examining attorney missed something: Sometimes examiners don’t catch conflicts during their initial search

They’re less effective for complex legal arguments or situations requiring extensive factual development.

Common Mistakes to Avoid

The “Kitchen Sink” Approach

Don’t throw every possible argument at the wall hoping something sticks. Focus on your strongest, most objective grounds with clear evidence.

Emotional Arguments

Save the passionate pleas for your diary. Stick to facts, regulations, and legal precedents.

Missing the Deadline

Those 30-day windows are strict. The USPTO doesn’t accept “I was on vacation” as an excuse.

DIY When You Shouldn’t

While the process seems straightforward, trademark law has nuances that can trip up even well-intentioned business owners. Consider professional help, especially for valuable marks.

The Process: How to File

Filing a Letter of Protest involves several precise steps:

1. Use the official USPTO form at the Letter of Protest page
2. Include a physical correspondence address (PO boxes won’t cut it)
3. Clearly identify your grounds for refusal with specific legal citations
4. Organize your evidence in a separate, itemized index
5. Pay the $50 fee (one fee per application protested)

The letter must be objective and factual. Think of yourself as providing helpful research to the examining attorney, not making legal arguments.

What Happens Next?

After filing, you can track your Letter of Protest through the USPTO’s Trademark Status and Document Retrieval system. You’ll receive notification if the Deputy Commissioner accepts your letter and forwards evidence to the examining attorney.

If the examining attorney issues an office action based on your evidence, the applicant can still respond and potentially overcome the refusal. Your Letter of Protest isn’t a guarantee of success—it’s just giving the examiner additional information to consider.

If the Letter of Protest doesn’t work and the application proceeds to publication, you still have the option to file a formal opposition during the 30-day opposition period.

When to Consider Professional Help

While Letters of Protest might seem straightforward, there are compelling reasons to work with a trademark attorney:

• Strategic timing: Knowing when to file versus waiting for other options
• Evidence selection: Choosing the most persuasive and relevant evidence
• Legal citations: Proper references to statutes and case law
• Backup planning: Coordinating with potential opposition strategies

The Bottom Line

Letters of Protest are an underutilized tool that can solve trademark conflicts efficiently and affordably. They’re particularly valuable for clear-cut cases where obvious conflicts or issues might have been overlooked during examination.

While not a magic bullet, they offer a low-risk, high-reward first step in protecting your trademark rights. At $50 and a few hours of preparation, they’re often worth trying before escalating to more expensive options.

Remember: the goal isn’t to “win” against another business—it’s to ensure the USPTO has complete information when making registration decisions. Sometimes a gentle nudge in the right direction is all that’s needed to protect your brand.

If you’re facing a potential trademark conflict, don’t let stress drive you toward expensive litigation as your first option. A well-crafted Letter of Protest might solve your problem before it becomes a bigger headache.

Discovered someone applying for your trademark? Contact Harrigan IP for a consultation. Our comprehensive trademark services help protect your brand with strategic, cost-effective solutions.