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:

 1.   37 CFR § 2.102(a).

 2.   37 CFR § 2.102(a)(1).

 3.   37 CFR § 2.102(a)(2).

 4.   37 CFR § 2.102(c)(3).

 5.   37 CFR § 2.102(c).

 6.   37 CFR § 2.102(c)(1).

 7.   37 CFR § 2.102(c)(3).

 8.   37 CFR § 2.102(c)(3).

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.