37 CFR 2.149 – Letters of protest against pending applications
(a) A third party may submit, for consideration and inclusion in the record of a trademark application, objective evidence relevant to the examination of the application for a ground for refusal of registration if the submission is made in accordance with this section.
(b) A party protesting multiple applications must file a separate submission under this section for each application.
(c) Any submission under this section must be filed no later than 30 days after the date the application is published for opposition under section 12(a) of the Act and § 2.80 of this part. If the subject application cannot be withdrawn from issuance of a registration while consideration of the protest is pending, the protest may be considered untimely.
(d)(1) If the letter of protest is filed before publication of the subject application, the evidence must be relevant to the identified ground(s) for refusal, such that it is appropriate for the examining attorney to consider whether to issue a refusal or make a requirement under the Act or this part.
(2) If the letter of protest is filed on or within 30 days after the date of publication of the subject application, the evidence must establish a prima facie case for refusal on the identified ground(s), such that failure to issue a refusal or to make a requirement would likely result in issuance of a registration in violation of the Act or parts 2 or 7 of this section.
(e) Filing a submission under this section does not stay or extend the time for filing a notice of opposition.
(f) Any submission under this section must be made in writing, filed through TEAS, and include:
(1) The fee required by § 2.6(a)(25);
(2) The serial number of the pending application that is the subject of the protest;
(3) An itemized evidence index that does not identify the protestor or its representatives, does not contain legal argument, and includes:
(i) An identification of the documents, or portions of documents, being submitted as evidence. The submission may not total more than 10 items of evidence in support of a specified ground of refusal and more than 75 total pages of evidence without a detailed and sufficient explanation that establishes the special circumstances that necessitate providing more than 10 items of evidence per refusal ground or more than 75 total pages of evidence; and
(ii) A concise factual statement of the relevant ground(s) for refusal of registration appropriate in ex parte examination that each item identified supports; and
(4) A clear and legible copy of each item identified in the evidence index where:
(i) Copies of third-party registrations come from the electronic records of the Office and show the current status and title of the registration;
(ii) Evidence from the internet includes the date the evidence was published or accessed and the complete URL address of the website; and
(iii) Copies of printed publications identify the publication name and date of publication.
(g) Any submission under this section may not be entered or considered by the Office if:
(1) Any part of the submission is not in compliance with this section;
(2) The application record shows that the examining attorney already considered the refusal ground(s) specified in the submission; or
(3) A provision of the Act or parts 2 or 7 of this chapter precludes acceptance of the submission.
(h) If a submission is determined to be in compliance with this section, only the specified ground(s) for refusal and the provided evidence relevant to the ground(s) for refusal will be included in the application record for consideration by the examining attorney. An applicant should not reply to the entry into the application record of evidence entered under this section.
(i) Any determination whether to include evidence submitted under this section in the record of an application is final and non-reviewable, and a determination to include or not include evidence in the application record shall not prejudice any party’s right to raise any issue and rely on any evidence in any other proceeding.
(j) A third party filing a submission under this section will not receive any communication from the Office relating to the submission other than acknowledgement that it has been received by the Office and notification of whether the submission is found to be compliant or non-compliant with this section. Communications with the third party will not be made of record in the application. The Office will not accept amendments to a non-compliant submission that was previously filed. Instead, a third party who previously filed a non-compliant submission may file another submission that meets the requirements of paragraph (f) of this section, provided the time period for filing a submission in paragraph (c) of this section has not closed.
(k) The limited involvement of the third party ends with the filing of the submission under this section. The third party may not directly contact the examining attorney assigned to the application.