Monday, January 28, 2008

PTO Letters of Protest: Is "CYBERLAW" Registrable?

In Blawg Review #144, Kevin A. Thompson reports that a Washington, D.C. lawyer named Eric Menhart has filed an application to register the term CYBERLAW as a service mark for various legal services (Serial No. 77341910). Mr. Menhart has been so bold as to send a cease-and-desist letter to another blogger. Many have protested, including Mr. Thompson, whose own blog is called Cyberlaw Central. They believe the term "Cyberlaw" is generic, or at least descriptive, of legal services involving Internet issues.

Kevin A. Thompson

Just to throw in my own two cents, I agree with the protesters, and I recommend that each one file a Letter of Protest with the PTO. Several years ago (here), I wrote a posting about Letters of Protest, the supposed "mark" then in question being PODCAST (Serial No. 78564869).]

Letters of protest are discussed at Section 1715 of the Trademark Manual of Examining Procedure. A Letter of Protest may be sent to: Letters of Protest, ATTN Trademark Administrator, 600 Dulany Street, MDE-4B89, Alexandria, Virginia 22314-5793. The letter should not be send directly to the Examining Attorney.

As to the contents of the letter, Section 1715.01 (a)(1) sets forth several "Issues Appropriate As Subject of Letter of Protest." The first of three of the "most common areas of protest" is applicable here:

"(1) A third party files an objection to the registration of a term because it is allegedly generic or descriptive. The objection must be accompanied by evidence of genericness or descriptiveness. The evidence should be objective, independent, factual evidence that the examining attorney can use to support the suggested refusal. Personal opinions are subjective and may be self-serving, and are not forwarded to the examining attorney. If the protest is granted, the examining attorney is informed that an objection to registration has been filed on the ground that the mark is generic or descriptive, and is given a copy of any factual evidence submitted with the letter of protest."

The fee required for filing a letter of protest: nothing. The satisfaction to be gained from voicing your objection: priceless!

Text Copyright John L. Welch 2008.


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