The Trademark Letter of Protest

OR:

How to Ruin Someone’s Day for Just Fifty Dollars

“Noodge” is such a great word. Alternatively spelled “nudzh,” it’s Yiddish for an obnoxious person. As I use it, it has a dash of extra pedantry to it. But as a patent lawyer, everything I do has a dash of extra pedantry.

So let’s say there’s a business that has grievously wounded your honor. Maybe they are engaging in economic chicanery! You don’t feel like bankrolling a spite lawsuit, and probably lack standing anyway, but you’ve got time to be a noodge. What are your options? Today we’re going to talk about tools anyone can use to throw a wrench in the works.

To get you up to speed on the trademark process, here’s how it usually goes:

It starts when someone goes to their attorney and says, “Hey there, I am the conscientious sort who actually checks out potential brands instead of just throwing them into the marketplace and getting sued. How does ‘SWEETASHECK’ sound for these flavored dental retainers I want to sell?” The attorney does a trademark search. Either it came back clear, or it didn’t and they decide to go ahead anyway.

They file the application. Months go by. A trademark examiner looks at it and says, “Yeah, sure, that’s fine I guess.” There may be some extra rounds of examination, but let’s assume that the examiner eventually gives them the go-ahead. The mark gets published for opposition and, if nobody stops it, it gets registered.

Enter the noodge! Let’s say you want to torpedo this process. Let’s say you have good reason to believe that the trademark examiner missed something. There are a few places you can apply pressure:

Just to get them out of the way, an opposition or cancellation are very similar to one another and are basically small-scale lawsuits. You get directly involved with trying to prove that SWEETHASHECK should not be registered. An opposition is generally easier to win, but can only be initiated during the short publication period. Both are way more expensive than we would prefer for the purposes of this discussion.

That leaves the Letter of Protest. This is a relatively new procedure that lets anyone send evidence to the trademark examiner showing that a trademark application should be rejected. It can be done any time during the examination process and, best of all, only costs $50!

Now, you can’t just send whatever you want. The evidence is limited to specific categories, and the USPTO will review it before passing it along to the examiner, trimming out anything they think is inappropriate. This page goes into some detail on what sorts of things you can raise. For example, it’s great for bringing up existing trademarks that you think the examiner might miss.

I have used this procedure several times, to great success. It’s so satisfying to see the trademark examiner issue a rejection and extensively cite the evidence you put in front of them. And I cannot overstate how cheap the process is. Rather than letting established companies run roughshod over people who lack the resources to fight back, the low fee makes it possible to most people to apply pressure to improve the trademark ecosystem.

To really make this work, you’ll need to a bit of a stalker. I have a list of trademarks and companies that I check on the Trademark Electronic Search System every two weeks to see if there have been any developments. But if you’re going to be a noodge, you need to have commitment and follow-through.