[E-trademarks] Letters of Protest -- required evidence by the protesting party
David Boundy
DavidBoundyEsq at gmail.com
Thu Jul 18 08:32:23 EDT 2024
General principle of administrative law -- "it is always within the
authority of an agency to relax its procedural rules" (from memory, not a
perfect exact quote). Black Ball Freight v American something-or-other.
If there's a clash, youre entitled to rely on the more relaxed rule.
On Thu, Jul 18, 2024, 6:43 AM John L. Welch via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:
> IMHO: same class is irrelevant.
>
>
>
> If the goods are identical, then citing the registration is certainly a
> step in the right direction. However if the marks are not identical, then
> who knows what will happen?
>
>
>
> As to Kevin’s point, I recently filed a letter of protest against a mark
> for cookies that was *identical* to my client’s registered mark for
> restaurant services. In addition to the registration, I submitted 12 live
> third-party registrations covering both cookies and restaurant services.
>
> The letter of protest was accepted but the examining attorney approved the
> application anyway.
>
>
>
> JLW
>
>
>
>
>
>
>
> *John L. Welch*
>
> *Senior Counsel*
>
> Admitted to Practice: Massachusetts, New York, and Washington, DC
>
> jwelch at WolfGreenfield.com
>
> Tel. 617.646.8285
>
> <http://thettablog.blogspot.com/>
>
> *Wolf, Greenfield & Sacks, P.C.*
>
> BOSTON | NEW YORK | WASHINGTON DC
>
>
>
> wolfgreenfield.com <https://www.wolfgreenfield.com/>
> <https://www.linkedin.com/company/wolf-greenfield/>
> <https://twitter.com/wolfgreenfield>
>
> *Please consider the environment before printing this email.*
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> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Leesa N. Weiss via E-trademarks
> *Sent:* Wednesday, July 17, 2024 2:17 PM
> *To:* Kevin Grierson <kgrierson at cm.law>; For trademark practitioners.
> This is not for laypersons to seek legal advice. <
> e-trademarks at oppedahl-lists.com>
> *Cc:* Leesa N. Weiss <lweiss at esfip.com>
> *Subject:* Re: [E-trademarks] Letters of Protest -- required evidence by
> the protesting party
>
>
>
> Thank you. So, where the client/protestor’s goods read, in whole or in
> part on the subject application’s goods, or if they’re in the same class,
> or it’s really just that obvious, would it be sufficient to simply recite
> the client’s registrations on which the Letter of Protest is based?
>
>
>
> Leesa
>
>
>
> *Leesa N. Weiss*
>
> * Partner *
> 9801 Washingtonian Boulevard, Suite 750
> Gaithersburg, MD 20878
> lweiss at esfip.com
> Direct: 240-864-2472
> Fax: 301-762-4056
>
> Information contained within this email and its attachments, if any, may
> be confidential and/or privileged. This email is intended to be reviewed
> only by the individual to whom it is addressed. If you are not the intended
> recipient or an authorized representative of the intended recipient, please
> be aware that any review, dissemination, or copying of the information
> contained within this email and its attachments, if any, is prohibited. If
> you have received this email in error, please immediately notify me by
> return email and delete this email from your system.
>
> *From:* Kevin Grierson <kgrierson at cm.law>
> *Sent:* Wednesday, July 17, 2024 2:10 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Leesa N. Weiss <lweiss at esfip.com>
> *Subject:* RE: Letters of Protest -- required evidence by the protesting
> party
>
>
>
> CAUTION: This email originated from outside of the organization. Do not
> click links or open attachments unless you recognize the sender and know
> the content is safe.
>
>
>
> Same. Got this from a successful letter of protest notification (just one
> mark submitted):
>
>
>
> Please note for future submissions, if an objection in a letter of protest
> is based on a likelihood of confusion with existing federally registered
> marks or prior-pending applications, protestor need only submit the
> relevant registration or application serial numbers. Copies of protestor's
> registration certificates or the electronic equivalent thereof and their
> respective prosecution histories are not necessary.
>
>
>
> I think the paragraph in 1715.05(a) you reference is only talking about
> evidence of confusion where the goods and services are NOT identical:
>
>
>
> If an objection is based on a likelihood of confusion with existing
> federally registered marks or prior-pending applications, and the goods
> and/or services are not identical, evidence of the relatedness of the
> goods and/or services must be included. Such evidence may include
> advertisements showing that the relevant goods/services are advertised
> together or sold by the same manufacturer or copies of registrations
> showing that such goods/services emanate from the same source. Note that a
> list of registration numbers, a chart containing the registration numbers
> and identified goods/services, or a copy of a search report is not proper
> evidence to show the relatedness of the goods or services in the
> registrations. Rather, copies of the registrations or the electronic
> equivalent thereof showing current status and title (i.e., printouts or
> electronic copies taken from the trademark search system or TSDR database
> of the USPTO) must be submitted.
>
>
>
> So I think the idea here is that if you’re going to submit evidence of
> relatedness of goods or services, you have to show that the third-party
> marks you’re using are use-based registrations and not 66(a) or 44(e)
> registrations.
>
> *Kevin Grierson*********
>
> [image: Mobile:]
>
> 757-726-7799
>
> [image: Fax:]
>
> 866-521-5663
>
> [image: Email:]
>
> kgrierson at cm.law
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Leesa N. Weiss via E-trademarks
> *Sent:* Wednesday, July 17, 2024 1:54 PM
> *To:* e-trademarks at oppedahl-lists.com
> *Cc:* Leesa N. Weiss <lweiss at esfip.com>
> *Subject:* [E-trademarks] Letters of Protest -- required evidence by the
> protesting party
>
>
>
> EXTERNAL EMAIL
>
> Am I missing something? I recently filed several Letter of Protests
> (which, ultimately, were accepted with the evidence being forwarded to the
> respective examiners). The Letters of Protest were all based on likelihood
> of confusion issues.
>
>
>
> TMEP Section 1715.05(a) states: “Note that a list of registration
> numbers, a chart containing the registration numbers and identified
> goods/services, or a copy of a search report is not proper evidence to show
> the relatedness of the goods or services in the registrations. Rather,
> copies of the registrations or the electronic equivalent thereof showing
> current status and title (i.e., printouts or electronic copies taken from
> the trademark search system or TSDR database of the USPTO) must be
> submitted.” So, I’ve submitted TSDR printouts of the client’s
> (protestor’s) registrations (no more than 5 registrations), along with the
> required index. I did not submit copies of the actual Certificates of
> Registration.
>
> The notifications from the PTO advising that the Letter of Protest has
> been accepted now state: “In addition, copies of the protestor’s own
> registration certificates or the electronic equivalent thereof are not
> necessary.”
>
> The TMEP appears to be telling me one thing, while the Attorney Advisor
> issuing the notification is telling me something else. Which is correct? If
> I don’t have to go through the exercise of downloading copies of the
> client’s registrations as supporting evidence, that would be a great
> timesaver.
>
>
>
> Thanks, in advance.
>
>
>
> Leesa
>
>
>
> *Leesa N. Weiss*
>
> * Partner *
> 9801 Washingtonian Boulevard, Suite 750
> Gaithersburg, MD 20878
> lweiss at esfip.com
> Direct: 240-864-2472
> Fax: 301-762-4056
>
> Information contained within this email and its attachments, if any, may
> be confidential and/or privileged. This email is intended to be reviewed
> only by the individual to whom it is addressed. If you are not the intended
> recipient or an authorized representative of the intended recipient, please
> be aware that any review, dissemination, or copying of the information
> contained within this email and its attachments, if any, is prohibited. If
> you have received this email in error, please immediately notify me by
> return email and delete this email from your system.
> --
> E-trademarks mailing list
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> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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