203 Form of Request
203.01 General Considerations
203.01(a) Paper or Electronic Filings
37 CFR § 2.102 Extension of time for filing an opposition.
- (a) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file in the Office a written request, addressed to the Trademark Trial and Appeal Board, to extend the time for filing an opposition. The written request need not be verified, but must be signed by the potential opposer or by the potential opposer’s attorney, as specified in § 11.1 of this chapter, or authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c) are required for electronically filed extension requests.
- (1) A written request to extend the time for filing an opposition to an application filed under section 1 or 44 of the Act must be filed either on paper or through ESTTA.
- (2) A written request to extend the time for filing an opposition to an application filed under section 66(a) of the Act must be filed through ESTTA.
- (b) A written request to extend the time for filing an opposition must identify the potential opposer with reasonable certainty. Any opposition filed during an extension of time should be in the name of the person to whom the extension was granted. An opposition may be accepted if the person in whose name the extension was requested was misidentified through mistake or if the opposition is filed in the name of a person in privity with the person who requested and was granted the extension of time.
- (c) The time for filing an opposition shall not be extended beyond 180 days from the date of publication. Any request to extend the time for filing an opposition must be filed before thirty days have expired from the date of publication or before the expiration of a previously granted extension of time, as appropriate. Requests to extend the time for filing an opposition must be filed as follows:
- (1) A person may file a first request for either a thirty-day extension of time, which will be granted upon request, or a ninety-day extension of time, which will be granted only for good cause shown.
- (2) If a person was granted a thirty-day extension of time, that person may file a request for an additional sixty-day extension of time, which will be granted only for good cause shown.
- (3) After receiving one or two extensions of time totaling ninety days, a person may file one final request for an extension of time for an additional sixty days. The Board will grant this request only upon written consent or stipulation signed by the applicant or its authorized representative, or a written request by the potential opposer or its authorized representative stating that the applicant or its authorized representative has consented to the request, or a showing of extraordinary circumstances. No further extensions of time to file an opposition will be granted under any circumstances.
37 CFR § 2.126 Form of submissions to the Trademark Trial and Appeal Board.
- (a) Submissions may be made to the Trademark Trial and Appeal Board on paper where Board practice or the rules in this part permit. A paper submission, including exhibits and depositions, must meet the following requirements:
- (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
- (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
- (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
- (4) A paper submission must not be stapled or bound
- (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
- (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
- (b) Submissions may be made to the Trademark Trial and Appeal Board electronically via the Internet where the rules in the part or Board practice permit, according to the parameters established by the Board and published on the web site of the Office. Text in an electronic submission must be in at least 11-point type and double-spaced. Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission.
- (c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to 2.125(e) must be submitted under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must be submitted.
A request for an extension of time to oppose must be made in writing and must specify the period of extension desired. [ Note 1.]
A request for extension of time to oppose a Trademark Act § 1 or Trademark Act § 44, 15 U.S.C. § 1051 or 15 U.S.C. § 1126 application may either be filed on paper or through ESTTA. [ Note 2.] See TBMP § 106.03 and TBMP § 107. However, a request for extension of time to oppose a Trademark Act § 66(a), 15 U.S.C. § 1141f(a) (Madrid Protocol), application must be filed through ESTTA. [ Note 3.] See TBMP §106.03. The requirements for paper and electronic submissions to the Board are specified in 37 CFR § 2.126(a) and 37 CFR § 2.126(c), respectively. Available forms and instructions for electronic filing can be found at http://estta.uspto.gov.
No more than three requests to extend the time for filing an opposition, totaling 180 days from the date of publication, may be filed. [ Note 4.] A potential opposer may file a request for a thirty-day extension without a showing of cause, see TBMP § 207.02,followed by a request for a sixty-day extension for good cause, if the first request was granted. [ Note 5.] Alternatively, the potential opposer may file a single first request for a ninety-day extension of time for good cause. [ Note 6.] After one or two granted requests totaling 120 days from the date of publication, the potential opposer may request one final extension of time for an additional sixty days, but only with the consent of the applicant or a showing of extraordinary circumstances. [ Note 7.]
The final request (120–180 days after publication) can only be granted for sixty days and not any other period of time. [ Note 8.] For example, at 120 days after publication, the potential opposer cannot request a thirty day extension of time, even with the consent of the applicant. If an extension of less than sixty days is requested based on consent, the request will be denied unless the reasons stated for the granting of the request are extraordinary, in which case the request will be granted for sixty days instead of the thirty days requested. This is because a thirty day extension of time is not permissible under 37 CFR § 2.102(c)(3). However, the citation of extraordinary circumstances would allow the grant of a sixty day extension of time.
The following chart illustrates the initial publication period and extensions of time to oppose which may be granted:
| Publication 30 days 37 CFR § 2.102(c) | First 30 days – no reason necessary 37 CFR § 2.102(c)(1) | Next 60 days – for good cause or consent 37 CFR § 2.102(c)(2) | Final 60 days – with consent or under extraordinary circumstances 37 CFR § 2.102(c)(3) |
| First 90 Days – for good cause or consent 37 CFR § 2.102(c)(1) | |||
NOTES:
203.01(b) Note on Electronic Filing With ESTTA
Electronic filing of extensions of time to oppose using ESTTA is optional, except in the case of extensions of time to oppose applications under Trademark Act § 66(a), 15 U.S.C. § 1141f(a) (Madrid Protocol). [ Note 1.] It should be noted, however, that nearly all extensions of time to oppose are now filed electronically using ESTTA. Electronic filing is strongly encouraged by the Board. Use of ESTTA for filing extensions of time to oppose provides users with instant proof of timely filing, even when use of a certificate of mailing or the Express Mail procedure is unavailable. See TBMP § 202.01. Moreover, because ESTTA prompts the user to supply and verify all required information, use of ESTTA for filing extensions of time to oppose will usually avoid common pitfalls in filing. Most extensions of time to oppose filed via ESTTA are automatically processed, providing a nearly instantaneous order (with an email notification providing a link to the filing in TTABVUE) granting the requested extension (if appropriate).
ESTTA forms, including a request for extension of time to oppose, and filing instructions can be found at http://estta.uspto.gov. Filers with questions about electronic filing may call (571) 272-8500 or (800) 786-9199 (toll free) (8:30 am – 5:00 pm Eastern Time) for assistance, or send an email to TTABInfo@uspto.gov. [ Note 2.] For technical questions that arise during filing via ESTTA, the filer may send an email to ESTTA@uspto.gov. Questions of a general nature regarding Board proceedings should be directed to the phone numbers listed above. Papers will not be accepted for filing by email.
See TBMP § 106.03 and TBMP § 110.09 for general information on ESTTA filing.
NOTES:
1. 37 CFR § 2.102(a)(2). See In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019, 2020-21 (TTAB 2005) (requests for extension of time to oppose a Trademark Act § 66(a) (Madrid Protocol) application must be filed via ESTTA; paper requests for extensions will be denied).
2. When sending an email inquiry, include a description of the problem or question, the ESTTA tracking number (if any), the Board proceeding (or application) number (if any), and a telephone number for contact. The Board will respond to email inquiries within two business days. Email should not be used for more urgent inquiries.
203.02 Identifying Information
203.02(a) In General
An extension request filed on paper should bear at its top the heading "IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD," followed by information identifying the application to which the request pertains, namely, the name of the applicant, and the application serial number, filing date, mark, and date of publication in the Official Gazette. [ Note 1.] The request should also bear an appropriate title describing its nature, such as "Request for Extension of Time to Oppose" or "Request for Further Extension of Time to Oppose." For ESTTA users, once the correct form is selected, the filing will be appropriately identified. Any attachments to ESTTA forms should be separately captioned and identified for clarity.
NOTES:
1. See In re Merck & Co., 24 USPQ2d 1317, 1318 (Comm’r 1992) (Board’s refusal to institute opposition as untimely was proper where potential opposer had misidentified applicant and serial number in its extension request). Cf. 37 CFR § 2.194(b)(1) -37 CFR § 2.194(b)(2) ("A letter about a trademark application should identify the serial number, the name of the applicant, and the mark." "A letter about a registered trademark should identify the registration number, the name of the registrant, and the mark.").
203.02(b) Requirement for Identification of Potential Opposer
A request for an extension of time to oppose must identify the potential opposer with reasonable certainty. [ Note 1.] If a request for extension of time to oppose fails to identify the potential opposer with reasonable certainty, the Board can allow the defect to be corrected only if the correction is made prior to the expiration of the time for filing the request, that is, before the expiration of the thirty-day opposition period following publication of the subject mark in the case of a first request, or before the expiration of the previous extension in the case of a request for a further extension. [ Note 2.]
If a request for a further extension of time to oppose does not specifically name the potential opposer, but it is clear from the circumstances that the request is being submitted on behalf of the same potential opposer which obtained an earlier extension, the request may be construed by the Board as identifying the potential opposer with reasonable certainty. However, the better, and safer, practice is to specifically name the potential opposer in each request for an extension of time to oppose.
Tip for ESTTA filers: When filing electronic requests for extensions of time to oppose on behalf of more than one potential opposer, file a separate request for each potential opposer. Do not file a joint request (i.e., on behalf of "ABC, Co. and XYZ Inc."), as this will make it more difficult to include both potential opposers as parties to an opposition, if one is filed. When filing the opposition, both (separate) potential opposers can be easily added as parties to the same opposition proceeding, and all fees will be calculated correctly. [ Note 3.]
NOTES:
2. See In re Spang Industries, Inc., 225 USPQ 888, 888 (Comm’r 1985) (since extension request failed to identify any party except attorney filing request, and since privity does not include attorney/client relationship, subsequent notice of opposition was untimely). Cf. In re Su Wung Chong, 20 USPQ2d 1399, 1400 (Comm’r 1991) (inadvertence is not extraordinary circumstance to waive rule requiring that statement indicating consent or showing extraordinary circumstances for extension over 120 days must be submitted at time extension request is filed, not after the fact); In re Societe Des Produits Nestle S.A., 17 USPQ2d 1093, 1094 (Comm’r 1990) (subsequently obtained consent is not sufficient and omission, in itself, is not extraordinary circumstance to waive requirement that consent accompany extension request).
3. Cf. Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (electronically-filed opposition in which opposers were not separately named did not include correct fees; one potential opposer was accordingly not considered to be a party).
203.03 Signature
37 CFR § 2.102(a) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file in the Office a written request, addressed to the Trademark Trial and Appeal Board, to extend the time for filing an opposition. The written request need not be verified, but must be signed by the potential opposer or by the potential opposer’s attorney, as specified in § 11.1 of this chapter, or authorized representative, as specified in § 11.1 4(b) of this chapter. Electronic signatures pursuant to 2.193(c) are required for electronically filed extension requests.
A request for an extension of time to oppose must be signed either by the potential opposer or by its attorney, as specified in 37 CFR § 11.1 or other authorized representative, as specified in 37 CFR § 11.14(b). [ Note 1.] See alsoTBMP § 114.06. A paper request should bear, under the written signature, the name, in typed or printed form, of the person signing; a description of the capacity in which he or she signs (e.g., as the individual who is the potential opposer, if the potential opposer is an individual; as a corporate officer, specifying the particular office held, if the potential opposer is a corporation; as potential opposer’s attorney; etc.); his or her business address (to which correspondence relating to the request will be sent); and telephone number. This information is required on the electronic form as well.
An extension request filed electronically through ESTTA does not require a conventional signature. Instead the party or its representative enters a "symbol" that has been adopted as a signature. The Board will accept any combination of letters, numbers, space and/or punctuation marks as a valid signature if it is placed between two forward slash ("/") symbols. [ Note 2.] See TBMP § 106.02.
While a request for an extension of time to oppose must be signed, an unsigned paper request will not be refused consideration if a signed copy is submitted to the Office within the time limit set in the written notification of this defect by the Board. [ Note 3.] TBMP § 106.02. An extension request filed through ESTTA cannot be electronically transmitted to the Office unless all required fields, including the signature field, are completed.
A potential opposer that has submitted an unsigned paper request should not wait until it has submitted a signed copy of the request (in response to the Board’s written notification of the defect), and the Board has acted on the request, before filing an opposition or a request for a further extension of time to oppose. If the extension request is ultimately granted, the length of the granted extension may be less than that sought in the extension request, and it will run from the expiration of the thirty-day opposition period after publication, in the case of a first request, or from the date of expiration of the previously granted extension, in the case of a subsequent request. If no opposition or request for further extension of time to oppose is filed prior to the expiration of any extension ultimately granted (after submission of a signed copy of the request) to the potential opposer, the time for opposing will be deemed to have expired, and the application that was the subject of the request will be sent for issuance of a registration or a notice of allowance, as appropriate. See TBMP § 202.01 (Time for Filing Request).
NOTES:
1. 37 CFR § 2.102(a); La Maur, Inc. v. Andis Clipper Co., 181 USPQ 783, 784 (Comm’r 1974) (extension requests signed and filed on behalf of potential opposer by its attorney acceptable).
2. 37 CFR § 2.193(c). See TMEP § 611.01(b) (Requirements for Signature), TMEP § 611.01(c) (Signature of Documents Filed Electronically).
3. 37 CFR § 2.119(e). See also Birlinn Ltd. v. Stewart, 111 USPQ2d 1905 (TTAB 2014) (Board applies opportunity to cure provision in 2.119(e) to improperly signed papers, which defines the time period for cure as "within the time limit set in the notification of this defect by the Office"); 37 CFR § 2.119(e).
203.04 Service
Every paper filed in the USPTO in inter partes cases must be served upon the other parties to the proceeding, and proof of such service must be made before the Board will consider the paper. [ Note 1.] The timely filing of a notice of opposition in the Office with proof of service and the required fee commences an opposition proceeding. [ Note 2.] Because a request for an extension of time to oppose is filed prior to the commencement of the opposition, it is ex parte, rather than inter partes, in nature. Accordingly, the request need not be served (or include proof of service) upon the applicant. [ Note 3.] Once the Board has acted upon a request for an extension of time to oppose, the Board will send the applicant a copy of the Board’s action thereon. [ Note 4.]
NOTES:
3. La Maur, Inc. v. Andis Clipper Co., 181 USPQ 783, 784 (Comm’r 1974) (request for extension of time is an ex parte matter; requests need not be served on applicant).
4. Trademark Act § 13, 15 U.S.C. § 1063.
203.05 Duplicate Requests
It sometimes happens that duplicate requests for an extension of time to oppose are filed on behalf of the same party by two attorneys from the same firm, or from differing firms, or by an attorney from a firm and in-house counsel. Attorneys should make every effort to avoid the filing of such duplicate requests, which waste the time and resources of the Board and the attorneys.
When duplicate paper requests have been filed and the first request has been granted, the second request is given no consideration, and the attorneys are notified in writing of the duplicate filings and are requested to take appropriate action to avoid filing duplicate requests in the future. [ Note 1.] If requests filed by different attorneys on behalf of the same party are duplicates but for the fact that the second request seeks a longer extension than the first, the second request will be granted, if otherwise appropriate.
NOTES:
1. Most requests for extension of time filed via ESTTA are automatically processed. Because they are not examined by Board staff, duplicate requests may be granted. However filed, counsel should avoid duplicate filings by checking the application status in TTABVUE prior to filing an extension request (or any other paper).