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By J.D. Houvener
Patent Attorney and Founder

Question: How do you format evidence for a letter of protest if the opposing trademark category is different but there is a likelihood of confusion regarding goods? It’s a very detailed question.

Response: The U.S. Patent and Trademark Office (USPTO) typically responds by saying, “We reviewed the letter and determined it won’t be considered by the examining attorney because it doesn’t meet certain requirements, including evidence supporting the identified grounds for refusal.” They provide the specific section and everything.

Comment: This could be an attorney asking, right?

Response: Yes, probably. Good question. Letters of protest are quite rare. In my career, I’ve filed a couple out of the 1,300+ frameworks I’ve handled, and only a few have been filed against our applicants. They are uncommon but necessary to ensure the USPTO doesn’t overlook a registration or application that should raise concern.

For example, if you’re a senior user with a trademark registration in the legal services category and a new apparel company uses the exact same unique name, despite the different categories, you might file a letter of protest. You’d inform the USPTO, “Hey, I own this unique name registration. Here’s its significance. Although the new application is for apparel, there’s a potential for confusion.” This allows the USPTO to acknowledge the likelihood of confusion during the registration process.

Essentially, you’re raising an issue before the USPTO conducts its own initial examination. By volunteering this information, you show transparency and due diligence.

Additional Comment: For our clients facing bad actors who filed trademarks preempting our client’s application, we will be submitting letters of protest. This helps put the infringing party on notice and informs the USPTO of our pending application. In our client’s case, the services and goods are identical between the two applicants, so it’s crucial to assert our rights and keep the USPTO informed.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at