(155)                       Department of Commerce
                          Patent and Trademark Office

               Changes in Practice Concerning Letters of Protest
   
   After April 1, 1995, Letters of Protest filed prior to the publication
of a mark for opposition will be granted only if there is sufficient
evidence in the Letter of Protest to establish a prima facie case which
supports a refusal of registration. In such a case, publication of the
mark for opposition, without consideration of the issue and evidence
presented in the Letter of Protest, might result in a clear error by the
Office. Further, after April 1, 1995, FOIA requests for copies of letters
of protest should be directed to the Office of the Assistant Commissioner
for Trademarks, rather than to the Solicitor's Office.
   Letter of Protest practice will change as follows: Under current
practice, when a Letter of Protest is filed prior to the publication of a
mark, the evidence in the letter is forwarded to the Examining Attorney
whenever such evidence can properly be considered by an examining attorney
during ex parte examination and the evidence supports any reasonable
ground for refusal.
   Under the revised practice, when a Letter of Protest is filed prior to
the publication of a mark, the evidence in the letter will be forwarded to
the Examining Attorney only if there is sufficient evidence in the Letter
of Protest to establish a prima facie case which supports a refusal of
registration such that publication of the mark for opposition, without
consideration of the issue and evidence presented in the Letter of
Protest, might result in a clear error by the Office.
   The standard for the granting of a Letter of Protest filed or
considered after publication of the mark in the Official Gazette is not
changing. The standard is whether publication of the mark constituted
clear error and whether the Letter of Protest was filed within thirty days
of the publication of the mark. In re Pohn, 3 USPQ2d 1700 (Comm'r Pats.
1987), and In re BPJ Enterprises Ltd., 7 USPQ2d 1375 (Comm'r Pats. 1988).
   Because the Letter of Protest procedure, which permits a third party to
introduce evidence during the ex parte examination of an application, is
not mandated by statute or rule, the Office wants to clearly define the
standards used for granting Letters of Protest and harmonize the standards
used for granting these letters before and after publication of the mark.
The new standard for prepublication Letters of Protest will discourage the
filing of Letters of Protest which do not present sufficient evidence to
support a prima facie case for refusal to register. As a result, fewer
applications will be taken out of the normal order of processing for
consideration of evidence in a Letter of Protest.
   
 
                   Requests for Copies of Letters of Protest

   At the present time, copies of documents relating to Letters of Protest
are requested pursuant to the Freedom of Information Act (FOIA) from the
Solicitor's Office of the Patent and Trademark Office. After April 1,
1995, any party making a FOIA request for a complete copy of the Letter of
Protest should file that request directly with the Office of the Assistant
Commissioner for Trademarks by mailing it to 2900 Crystal Drive,
Arlington, Va. 22202-3513 or by faxing it to (703) 308-7220. Such a
request should be directed to the attention of the Administrator for
Classification and Practice. Upon review of the Letter of Protest
material, the Administator will usually forward a copy of the Letter of
Protest and its attachment to the requester. Only in cases where the
Letter of Protest or its attachments contain material that would
potentially be expected from disclosure under the Freedom of Information
Act will the Administrator not forward the requested material. If, in the
opinion of the Administrator, any part of the Letter of Protest materials
should be excepted from disclosure under FOIA, the matter will be
forwarded to the Office of the Solicitor for further review.

February 21, 1995                                    PHILIP G. HAMPTON, II
                                                    Assistant Commissioner
                                                            for Trademarks

                                [1172 TMOG 93]