[E-trademarks] [EXT] Re: Letter of Protest: anonymous?

Wed Apr 10 23:51:16 EDT 2024

You can probably interpret the rule as you see fit since I have never seen or heard of an LOP rejected based upon who is identified as the filer. It would make sense that a law firm protests the registration of an arguably generic mark. Theoretically, you could be objecting on behalf of more than one client or an industry association.

Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG
211 Church St., SE; Leesburg, VA 20175
T: 703-777-7319 – BIO<https://www.dbllawyers.com/attorney/alex-butterman/>
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Judith S via E-trademarks
Sent: Wednesday, April 10, 2024 10:30 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Judith S <judith.a.s at gmail.com>
Subject: Re: [E-trademarks] [EXT] Re: Letter of Protest: anonymous?

That's a great story! The Lord apparently consented, even if Elton John did not.

In my case it's slightly easier to assume that without USPTO disclosure we can maintain anonymity, because the objection is genericness not a conflicting mark. Presumably anyone using this technique which has a generic name that is being filed-for could have been the originator of the objection.

Although as Edward Timberlake pointed out, there is a FOIA option to request the original letter.

I'm still unsure whether the rule requires naming the "real party in interest" or just a person who is willing to pay for such a LOP.

Judith

On Wed, Apr 10, 2024 at 6:42 PM Laura Geyer via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
Alex:

I’ve had a number of LOPs accepted over the years, and I always tell clients that:

  1.  It’s absolutely confidential as an initial matter, and if not granted, it’s pretty safe to assume nobody but G-d and an unidentified person on the PTO staff will know about it, BUT
  2.  If granted, and especially if the applicant is aware of your existence, there’s a chance that they’ll guess who is responsible especially if your mark is the only one cited. If it’s one of those 13 mark 2(d)s 🙄🙄🙄 you might squeak past, but if it’s the corporate equivalent of a national security concern then:
  3.  Just assume that it could be found out by FOIA or accidentally entered into the record somehow in the process and make your dispositions accordingly.

It’s just such a useful tool that it’s worth the risk. I’m not aware of one of mine that leaked but certainly it wouldn’t take a master carpenter to sort out who’d filed it in some of those cases. I do remember back when the “Trademark King” filed to register something like 80 trademark applications a number of which incorporated famous trademarks (like, say, Mercedes) or famous people’s names like Elton John or a bunch of generic things like “Holiday Sale” (resulting in office action responses I treasure to this day) all for “trademark branding”. There was a rain of LOPs in lots of the famous mark applications, many of which were passed on to the examiners and 2(d)s issued (that probably would have issued anyway). I mean, it could have been a random Concerned Citizen, but the smart money would have been on the brand owners… 😉

“Who was the Trademark King,” those of you who are not old like me might ask … just a few screenshots from one of his efforts.

[cid:image002.png at 01DA8BA1.F7DF4110]
The summary of issues that repeated for multiple office actions:

[cid:image003.png at 01DA8BA1.F7DF4110]
The King appealed to the Commissioner – Sir Elton had slept upon his rights! He was lazy!

[cid:image004.png at 01DA8BA1.F7DF4110]

When the Examiner remained obdurate, the Trademark King appealed to a higher authority:

[cid:image005.png at 01DA8BA1.F7DF4110]

Alas, it all ended in abandonment.

Have a great evening!

Laura Talley Geyer (she/her)
Of Counsel
ND Galli Law LLC
1200 G Street, N.W., Ste 800
Washington, DC
Tel: (202) 599-9019 (direct)
https://ndgallilaw.com/laura-geyer/

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Alex Butterman via E-trademarks
Sent: Wednesday, April 10, 2024 3:54 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Alex Butterman <abutterman at dbllawyers.com<mailto:abutterman at dbllawyers.com>>
Subject: Re: [E-trademarks] [EXT] Re: Letter of Protest: anonymous?

EXTERNAL EMAIL
That’s a good question. I have a fed government agency client that figured their Letters of Protest could be discovered by a FOIA request.

Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG
211 Church St., SE; Leesburg, VA 20175
T: 703-777-7319 – BIO<https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fwww.dbllawyers.com%2fattorney%2falex-butterman%2f&c=E,1,UshTsoBWZU1f2Sbg3CmfPDGZcB3B6JXceNOUjacPR2vAJTmqsbBRtm1o-65q66XFALwuow-pKbG9R-mUrU0kcLfhL_ORSGaW6yWB5xGlLZnX&typo=1>
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Crane, Susan via E-trademarks
Sent: Wednesday, April 10, 2024 08:06 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Crane, Susan <susan.crane at wyndham.com<mailto:susan.crane at wyndham.com>>
Subject: [EXT] Re: [E-trademarks] Letter of Protest: anonymous?

True, but is it possible you can file a FOIA request to get the original letter?
Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing

Wyndham Hotels & Resorts, Inc.
22 Sylvan Way
Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.Com<mailto:Susan.Crane at wyndham.Com>

On Apr 10, 2024, at 8:04 AM, Michael Brown via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:

The Letter of Protest does not get sent to the applicant, nor is it part of the TSDR record. However, if approved, a memorandum from the Office of the Deputy Commissioner to the Examining Attorney with the relevant information for consideration
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The Letter of Protest does not get sent to the applicant, nor is it part of the TSDR record. However, if approved, a memorandum from the Office of the Deputy Commissioner to the Examining Attorney with the relevant information for consideration is part of the TSDR record, so if there is information that would identify the Protestor, that might give it away.

If you are interested, contact me off list, and I can point you to a case or two where I had LoPs accepted.

Best regards,
Michael

Michael Brown
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On Wed, Apr 10, 2024 at 3:05 AM Judith S via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
Hi All,

I have a small client who is contemplating filing a Letter of Protest against a larger competitor who filed a trademark for a term they consider generic or descriptive of the technology they use.

They are concerned that if they are identified as the "Protestor" there might be retaliation.

The "Name of Protestor" field instruction says "Enter the full legal name of the entity objecting to the registration of a mark in a pending application, i.e., the name of the individual, corporation, partnership, or other entity that is protesting registration of a mark, NOT the person or firm completing the Letter of Protest."
Could we use the name of the in-house attorney who is initiating the objection or some other name?

Thanks for any insight.

Judith
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