Trademark Letter of Protest: How to Protest an Application in Trademark

If a competitor files a trademark application which conflicts with your existing trademark rights, you may have an opportunity to oppose the application before it proceeds to registration. A potentially effective option is to file a Trademark Letter of Protest with the United States Patent and Trademark Office (USPTO).

A Letter of Protest is a means by which a third party may provide evidence that a pending trademark application should not be registered. Strategically used, it can be a relatively inexpensive way to bring a potential trademark conflict to the attention of the USPTO without immediately initiating a formal opposition proceeding.

But timing is everything. A Letter of Protest filed prior to publication is held to a different evidentiary standard than a Letter of Protest filed post-publication. Also, submitting a Letter of Protest does not extend the deadline to oppose a trademark application. Knowing these differences can mean the difference between successfully defending against a problematic application, or losing a valuable opportunity to protect your trademark rights.

This article will explain how a Trademark Letter of Protest works, when to file one, what evidence is required, and how to determine whether a Letter of Protest or a formal trademark opposition is the better strategy.

What is a Trademark Protest Letter?

A Trademark Letter of Protest is a procedure through which a third party can provide factual evidence to support the registrability of an applicant’s pending trademark application. The procedure is governed by 37 C.F.R. § 2.149 and Section 1715 of the Trademark Manual of Examining Procedure (TMEP).

For example, let’s say you have a federal trademark registration for your business for a specific brand name. You then find out that a competitor has applied to register a trademark that is confusingly similar in respect of goods or services closely related to your own.

Instead of waiting for the competitor’s application to be published for opposition you may be able to submit a Letter of Protest pointing out your existing registration and the potential likelihood of confusion. If the USPTO finds the submission meets applicable requirements, the evidence will be made part of the application record for consideration by the examining attorney. The examining attorney then decides if the evidence supports refusing registration.

Important to keep in mind that acceptance of a Letter of Protest does not necessarily mean a refusal of the trademark application. It merely allows for relevant evidence to be considered during the examination process. A Letter of Protest is not an adversarial proceeding between competing trademark owners as is a trademark opposition proceeding.

When to Submit a Trademark Letter of Protest

The best time to file a Letter of Protest is generally as early as possible, preferably before publication of the trademark application for opposition. Under the rules of the USPTO, a Letter of Protest is typically filed within 30 days of the application being published for opposition. A submission during that period may even be considered as being late if the application cannot be withdrawn from issuance of a registration while the protest is pending. The USPTO applies different standards depending on whether the Letter of Protest is pre- or post-publication.

The Strategic Advantage of Filing Before Publication

Prior to publication, the USPTO considers whether the evidence submitted is relevant to a proper ground for refusal of registration or a registration requirement. This is typically a more favorable standard for the protester.

For example, suppose your business owns a registered trademark for specialized software. Another company applies for a mark that’s very similar to yours for similar software services. A timely Letter of Protest may bring to the attention of the examining attorney a conflicting registration, if the examining attorney has not already identified such a registration. The examining attorney then can issue a likelihood-of-confusion refusal under Section 2(d) of the Lanham Act. The sooner the evidence is submitted, the more time the examining attorney has to review it before the application is approved for publication.

Attorney’s Insight: A Letter of Protest is not a last-minute alternative to filing an opposition but should normally be considered at the stage of the initial examination. Monitoring competing trademark applications early on can offer enforcement opportunities that might be more difficult or expensive to pursue later.

The Elevated Bar: Filing After Publication

A Letter of Protest filed on the date of publication or within 30 days of publication is held to a higher standard. At this stage the evidence must be sufficient to make out a prima facie case for refusal of registration on the grounds identified.

Thus, the evidence must show that a failure to issue a refusal or requirement would likely result in a registration that is contrary to the Trademark Act or applicable rules. This demands a higher bar than simply submitting relevant evidence before publication. There is also a practical issue: the 30-day opposition period may run while the USPTO is reviewing the Letter of Protest.

Any trademark owner who wishes to preserve opposition rights should file a timely Notice of Opposition on its own or request an appropriate extension of time.

Can I Submit a Letter of Protest After the Opposition Period?

No, not usually. Letters of Protest filed later than 30 days after publication are untimely. The USPTO also has special timing considerations for applications filed under the Madrid Protocol and applications on the Supplemental Register. Once a trademark has registered, a Letter of Protest is no longer possible.

Depending on the circumstances, a trademark owner might need to consider a petition for cancelation with the Trademark Trial and Appeal Board (TTAB).

Proper Grounds to File a Letter of Protest

A Letter of Protest must state a legally appropriate basis for refusing registration or imposing a requirement that can be considered in the ordinary trademark examination process. Shared ground includes the following: 

1. Section 2(d) Likelihood of Confusion

One common use for a Letter of Protest is where there is a possible likelihood of confusion with an existing federal trademark registration or a qualifying prior pending application. For example, if a competitor tries to register a mark that is confusingly similar to your registered trademark for goods or services that are similar, you may be able to provide evidence of the conflicting registration. However, it is not generally proper to assert priority on the basis of unregistered, common law trademark rights in a Letter of Protest. This difference is significant, because a business can have valid common-law rights without federal registration. 

2. Descriptive or Generic Trademarks

A Letter of Protest may be appropriate where an applicant seeks to register wording which is simply descriptive of the goods or services or is generic for them.

For example, if an applicant seeks to register a common industry term as a trademark, a protester might provide dictionary definitions, examples from the marketplace or industry publications that show the term’s ordinary meaning. The evidence must be objective and directly related to the identified goods or services. 

3. Trademark Failure to Function

Some words, phrases, slogans or expressions are so frequently used that the consumer may not be aware that they identify one single commercial source. In a Letter of Protest you can present evidence that the wording is commonly used as an informational or commonplace expression. 

4. False Indication of Relationship

Under the appropriate circumstances, a Letter of Protest may serve as evidence that a proposed trademark falsely implies a connection with a person or institution under Section 2(a) of the Lanham Act. 

5. Certain Specimen Shortcomings

Objective evidence of certain problems with the specimen may also be appropriate. For example, evidence that a purported product photo has been digitally altered to include a trademark could raise legitimate issues of examination. However, the Letter of Protest procedure is not meant to resolve disputed allegations of fraud, ownership, or other factual matters that require testimony and discovery.

What Evidence is Required for a Trademark Protest Letter?

The success of a Letter of Protest often hinges on the quality and relevance of the evidence presented. Submissions under the USPTO rules are generally limited to:

– 10 pieces of evidence max per asserted ground for refusal.
– A total of 75 pages or less of evidence.
– A detailed index of evidence showing the materials submitted and the grounds for refusal.

These limits may be exceeded only for special reasons and the submission must contain a proper justification.

Relevant evidence may include, depending on the grounds asserted, federal trademark registration records, pending applications, dated webpages, dictionary definitions, industry publications, and marketplace materials. Any material from a webpage must reference the URL and the date the material was accessed or printed.

Why a Focused Submission Is Better Than Too Much Evidence

A Letter of Protest is often treated as a legal brief but this is a mistake. The USPTO generally will not allow a lengthy legal argument in a Letter of Protest. Rather, the submission should identify the proper ground for refusal, and provide objective evidence to support that ground. It may be more persuasive to offer a small number of carefully selected documents that speak directly to the issue at hand than to submit dozens of marginally relevant webpages.

The Attorney’s Take: Before you begin drafting a Letter of Protest, be certain that you know precisely what law forms the basis for the denial, and that the facts you possess are sufficient to establish that law without having to resolve any factual disputes. If the claim is based on prior common-law use or contested ownership or credibility then a formal opposition may be more suitable. 

Practical Example: The Value of a Protest Letter

Consider this scenario. A California company has a federal registration for the mark NEXORA for business management software. Several years later, a competitor seeks to register NEXORRA as a trademark for substantially similar computer software services. The existing trademark owner learns of the application soon after it is filed.

The earlier federal registration may be the basis for a likelihood-of-confusion refusal, so the owner may wish to consider filing a Letter of Protest before the application is published. If the evidence is accepted by the USPTO, the examining attorney may consider whether the proposed mark should be refused registration under Section 2(d)

Let’s think about another case. The California company has been using NEXORA for years, but has not registered a trademark federally. It is based on establishing an earlier commercial use and priority over the applicant. In such circumstances a Letter of Protest would not normally be the correct procedure to arbitrate the common-law priority rights of the company. A formal opposition might be needed at the TTAB.

The distinction highlights that it is as important to choose the right procedure as it is to find a potentially conflicting trademark.

How Much Is a Trademark Letter of Protest?

$150 per application is the USPTO government filing fee for a Letter of Protest as of October 2026. This is a far cry from the current government fee for filing a trademark opposition with the TTAB, $600 per class. Legal fees are separate and will vary depending on the nature of the grounds alleged, the evidence required and the complexity of the submission.

While a Letter of Protest is generally less expensive than contested opposition litigation, it should not be considered a substitute for an opposition per se. The right course of action depends on the legal issues at hand and the trademark owner’s goals. 

What Happens After I File a Letter of Protest?

The USPTO then reviews the Letter of Protest to determine whether it meets the applicable requirements. As a general rule, the USPTO indicates that protests will be reviewed and the protester notified within 60 days, but processing times do vary. There are a variety of possible outcomes.

1. The USPTO accepts the evidence. The evidence is put in the application file for the examining attorney to review.

2. The USPTO does not include the evidence. The submission may fail to satisfy procedural requirements or the evidentiary standard.

3. The examining attorney issues a refusal. If the evidence supports a statutory ground for refusal, the applicant will receive an Office Action and an opportunity to respond.

4. The application continues. When evidence is admitted, however, the examining attorney may determine that the registration should not be refused.

As a general rule, a protester does not become a party to the examination proceeding and the protester cannot use the Letter of Protest process to directly litigate the merits with the applicant. The protester should continue to monitor the application via the USPTO’s Trademark Status and Document Retrieval (TSDR) system.

Letter of Protest or Trademark Opposition: Which One Is Better?

A trademark opposition and a Letter of Protest are two fundamentally different proceedings.

A Letter of Protest and a trademark opposition are fundamentally different procedures.

When a Protest Letter is the Smart Choice

A Letter of Protest might be better if the objection can be backed up with objective evidence that an examining attorney can consider during the normal examination.

Examples: the existing federal registration may have been overlooked, or there is strong evidence that the proposed wording is generic or merely descriptive. The main advantage is that it allows the registration problem to be solved without immediately having to initiate an adversarial proceeding.

When Opposing a Trademark Makes More Sense

A formal opposition is usually better in cases of contested priority, common-law trademark rights, ownership, factual disputes or other matters involving the presentation of evidence and legal argument. For example, a business that has been using a trademark for many years but does not have a federal registration may have to show priority by way of testimony and documentary evidence. A Letter of Protest generally will not settle that dispute. 

Can You File a Letter of Protest and an Opposition at the Same Time?

Yes. A Trademark owner may submit a Letter of Protest prior to publication, and then file a formal opposition if the application moves forward. However, the owner must keep the deadline for opposition separate. A Letter of Protest does not stop, delay, or extend the time to oppose a trademark application. This is one of the most important procedural differences trademark owners should know.

5 Strategic Mistakes to Avoid

1. Waiting Until Published

A Letter of Protest prior to publication is held to a less stringent evidentiary standard. Delaying until publication may unfairly decrease the likelihood of acceptance for the evidence submitted.

2. Common Law Priority Reliance

A business may have strong rights in a mark based on prior use, but a Letter of Protest is generally not the proper procedure to prove those rights against another applicant.

3. Submitting Legal Arguments Rather Than Evidence

The procedure is to bring objective evidence to the attention of the examining attorney, not to serve as an adversarial legal brief.

4. Assuming Refusal Guarantees Acceptance 

Acceptance may take account of the evidence. That does not mean that the application will be refused.

5. Miss the Deadline for the Opposition

The most glaring error is to file a Letter of Protest and expect the USPTO to resolve the dispute before the opposition period expires.

Trademark owners should separately preserve and calendar their TTAB opposition rights.

Can I Send an Anonymous Trademark Protest Letter?

A Letter of Protest is not an adversarial proceeding in which the protester becomes an opposing party. Generally, the evidence index and materials submitted with the application record should not identify the protester or its representatives. However, the USPTO requires certain identifying information in connection with the submission and trademark owners should not assume that all aspects of the filing are confidential. Companies concerned about disclosure of their identity or enforcement strategy should review the relevant disclosure requirements prior to filing.

Can a Letter of Protest Prevent a Competitor From Using a Trademark?

No. A Letter of Protest concerns whether a pending trademark application should be registered by the USPTO. It does not, per se, prevent the applicant from using the mark in commerce.

A competitor may still use a mark even if its federal trademark application is refused, but such use may raise trademark infringement issues separate from the trademark application. If the primary goal is to halt the confusing use in the marketplace, a cease-and-desist letter, negotiated settlement or federal trademark infringement action may be more appropriate. 

Frequently Asked Questions

The Right Time and Strategy Matter

A Trademark Letter of Protest is an effective and relatively inexpensive means to challenge a pending trademark application, before it moves forward to registration. But there are serious downsides to the process. The best Letters of Protest are generally filed early, supported by focused objective evidence, and based on grounds that the examining attorney can properly consider during examination.

Businesses should also understand when a formal trademark opposition is necessary, especially in cases involving common-law priority, disputed facts or competing ownership claims. Most importantly, filing a Letter of Protest does not extend the deadline to oppose a trademark application. A timely evaluation of the available enforcement options can help trademark owners protect their rights while avoiding needless expense and procedural blunders.

Consult a Trademark Attorney Regarding a Letter of Protest

The trademark lawyers at Cohen IP Law Group, P.C. represent businesses in trademark prosecution, enforcement, TTAB opposition proceedings and trademark cancelation actions.

If you discover that a competitor has filed a potentially conflicting trademark application, we can review the application, assess the strength of your trademark rights and determine whether a Letter of Protest, formal opposition or another enforcement strategy is appropriate.

Contact Cohen IP Law Group, P.C. to schedule a trademark consultation or call (310) 288-4500 and explore your options before critical USPTO deadlines pass.