202.01 In General
15 U.S.C § 1063(a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) [§ 43(c)] of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 [§ 12]of this title of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time for filing opposition. An opposition may be amended under such conditions as may be prescribed by the Director.
37 CFR § 2.102(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.
A first request for an extension of time to oppose an application for registration of a mark must be filed prior to the expiration of the thirty-day period after publication of the mark in the Official Gazette, pursuant to Trademark Act § 12(a), 15 U.S.C. § 1062(a), for purposes of opposition. Any request for a further extension of time to oppose must be filed prior to the expiration of an extension granted to the requesting party or its privy. [ Note 1.]
The timely filing of documents in the Office requires that the documents actually be received in the Office within the set time period unless such documents are filed in accordance with 37 CFR § 2.197 and 37 CFR § 2.198,which provide for filing of papers by certificate of mailing and Priority Mail Express® respectively. See TBMP § 110 and TBMP § 111. Documents filed in accordance with these rules are considered as having been filed on the date of deposit as first class U.S. mail or Priority Mail Express® even if the mailed correspondence is not received in the Office until after the due date. [ Note 2.] See TBMP § 110.01.The Priority Mail Express® filing procedure applies only to the "Priority Mail Express®" of the United States Postal Service, not any third-party carrier that offers overnight delivery. [ Note 3.] See TBMP § 110.01. For extension requests filed electronically through the Board’s Electronic System for Trademark Trials and Appeals (ESTTA),all time periods are calculated electronically and the filer is immediately informed of the timeliness of the filing. See TBMP § 109 and TBMP § 110.09.
In the event that a particular extension request submitted on paper is timely filed with an appropriate certificate of mailing, pursuant to 37 CFR § 2.197, but is not received in the Office, the correspondence will be considered timely if the party that submitted it supplies an additional copy of the previously mailed extension request and certificate, and includes a statement attesting to the previous timely mailing. The statement must be verified if it is made by a person other than a practitioner, as defined in 37 CFR § 11.1. [ Note 4.] TBMP § 110.01. The only evidence accepted by the Office to prove deposit of the missing extension request is an exact copy of the disputed document including a copy of the executed original certificate of mailing. A reconstructed request and certificate of mailing will not suffice. [ Note 5.] See generally TBMP § 110.
A potential opposer that has filed an extension request on paper should not wait until it has received notification from the Board of the grant or denial of the request before filing an opposition or a request for a further extension of time to oppose. If a request for an extension of time to oppose is granted, the length of the granted extension may be less than that sought in the extension request. A first extension runs from the expiration of the thirty-day opposition period after publication. In the case of a subsequent extension, it will run from the date of expiration of the previously granted extension. [ Note 6.] While the Board attempts to notify a potential opposer of the grant of an extension request filed on paper before a granted extension expires, particularly when the length of the granted extension is less than that requested, the Board is under no obligation to do so, and in some cases cannot. [ Note 7.] Note that filing extension requests electronically using ESTTA will usually eliminate this problem, since almost all ESTTA extension requests are processed automatically and granted within minutes of filing.
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 8.] A potential opposer may file a request for a thirty-day extension without a showing of cause, see TBMP § 207.02 (Extensions Up to 120 Days from Date of Publication), followed by a request for a sixty-day extension for good cause. [ Note 9.] Alternatively, the potential opposer may file a single first request for a ninety-day extension of time for good cause. [ Note 10.] 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 11.]
The final request (120-180 days after publication) can only be granted for sixty days and not any other period of time. [ Note 12.] For example, after 120 days from 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 citing of extraordinary circumstances would allow the granting 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:
1. Trademark Act § 13(a), 15 U.S.C. § 1063(a); 37 CFR § 2.102(c). See In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (timeliness of extension requests is statutory and cannot be waived).
2. See In re Pacesetter Group, Inc., 45 USPQ2d 1703, 1704 (Comm’r 1994).
3. See In re Pacesetter Group, Inc., 45 USPQ2d 1703, 1704 (Comm’r 1994) (papers filed using overnight courier not entitled to benefit of Express Mail (now Priority Mail Express®) procedure). Because the certificate of mailing and Express Mail procedures both require use of the United States Postal Service, correspondence mailed from outside of the United States is not eligible to receive the benefit of either provision. Accordingly, papers posted from outside of the United States will be accorded a filing date as of the date of their actual receipt in the USPTO. See 37 CFR § 2.195(a). Note, however, that electronic filing using ESTTA is available to all filers, from wherever transmitted. ESTTA papers are accorded the filing date (Eastern time -- USA) upon which the Office receives the complete transmission. 37 CFR § 2.195(a)(2); http://estta.uspto.gov (instructions for filing via ESTTA).
4. See 37 CFR § 2.197(b).
5. In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm’r 1995) (a declaration attesting to the filing and to the certificate of mailing is not acceptable as evidence of timely filing).
6. See In re Societe Des Produits Nestle S.A., 17 USPQ2d 1093, 1094 (Comm’r 1990).
7. See Lotus Development Corp. v. Narada Productions, Inc., 23 USPQ2d 1310, 1312 (Comm’r 1991) (where misdirection of initial extension prevented Board from addressing calculation error in the request); In re Societe Des Produits Nestle S.A., 17 USPQ2d 1093, 1094 (Comm’r 1990) (potential opposer was not notified of partial grant of extension request until after date had passed). Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (no statute or regulation imposes obligation on Office to notify parties of defects in sufficient time to allow correction); In re L.R. Sport Inc., 25 USPQ2d 1533, 1534 (Comm’r 1992) (no obligation to notify of defective statement of use); In re Application Papers Filed November 12, 1965, 152 USPQ 194, 195 (Comm’r 1966) (no obligation to discover deficiencies within a specified time).