Trademark Modernization: Part III of III
Whether you are a new trademark owner or already a well-established brand, maintaining and policing a business’s trademarks is a process. Managing your Intellectual Property assets is well worth any trademark owner’s time. In fact, with the passing of the Trademark Modernization Act, trademark owners who seize the initiative will fare better and maintain the strength of their brand in the long run by acting quickly.
Before the passage of the Trademark Modernization Act, a common informal practice was for trademark owners to submit letters of protest to the USPTO, evidencing grounds for refusal by the Trademark Examining Attorney. Trademark owners who vigilantly policed new trademark applications did so to maintain the value in their intellectual property assets, namely their brand. Trademark owners know that the good will and value of their Trademark is maintained by not allowing their asset to become diluted. The Trademark Modernization act now has codified this practice.
What is a Letter of Protest?
A letter of protest allows Trademark owners to object to a pending U.S. trademark application, which if registered could harm their brand. The letter may be filed when the examiner fails to raise grounds for rejection of the application. By filing a letter of protest, trademark owners (i.e., third parties) may step into the shoes of the examiner and intervene in the trademark examination process. Letters may be filed before or up to 30 days after publication of the new trademark application. One caveat to note is that the burden of proof is higher after publication. Moreover, submitting a letter of protest will not prevent the protesting party from an opposition proceeding.
Moving Forward
When filing a letter of protest, attorneys can rely on any relevant grounds such as:
- Likelihood of confusion with an existing U.S. registration or pending application.
- Genericness
- Mere descriptiveness
- Geographical descriptiveness or mis-descriptiveness
- False suggestion of a connection with the protestor
- Pending litigation involving the mark
- A registered mark (such as the protestor’s mark) inappropriately appears in the identification of goods and services in the protested application.
- Specimen-based objections (e.g., images in a specimen appear in multiple prior registrations or applications of different marks or are used by third parties without the mark in question)
Managing your IP assets is well worth your time and energy. Having a strong brand and maintaining your company’s goodwill is what separate’s strong brands from ones that have become diluted. Now that the Trademark Modernization Act has been passed, trademark owners should take advantage of the new mechanisms they can use to protect their trademarks.
