306.01    In General

15 U.S.C. § 1062(a)  [Section 12(a) of the Trademark Act] Upon the filing of an application for registration and payment of the prescribed fee, the Director shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made and, if on such examination it shall appear that the applicant is entitled to registration, or would be entitled to registration upon the acceptance of the statement of use required by section 1051(d) of this title, the Director shall cause the mark to be published in the Official Gazette of the Patent and Trademark Office....

15 U.S.C. § 1063(a)  [Section 13(a) of the Trademark Act] 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) 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 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... .

37 CFR § 2.101  Filing an opposition.

  • (a) An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee. The notice must include proof of service on the applicant, or its attorney or domestic representative of record, at the correspondence address of record in the Office, as detailed in §§ 2.101(b) and 2.119.

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  • (b)
    • (1) An opposition to an application based on section 1 or 44 of the Act must be filed either on paper or through ESTTA.
    • (2) An opposition to an application based on section 66(a) of the Act must be filed through ESTTA.
  • (c) The opposition must be filed within thirty days after publication (§2.80) of the application being opposed or within an extension of time (§2.102) for filing an opposition.

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  • (d)
    • (4) The filing date of an opposition is the date of receipt in the Office of the notice of opposition, with proof of service on the applicant, or its attorney or domestic representative of record, if one has been appointed, at the correspondence address of record in the Office, and the required fee, unless the notice is filed in accordance with § 2.198.

An opposition to the registration of a mark on the Principal Register must be filed prior to the expiration of the thirty-day period after publication of the mark in the Official Gazette for opposition, or within an extension of time to oppose granted to the opposer or its privy. [ Note 1.] See TBMP § 303.

An opposition to an application based on Trademark Act § 1 or Trademark Act § 44, 15 U.S.C. § 1051  or 15 U.S.C. § 1126   may be filed on paper or electronically via the Board’s Electronic System for Trademark Trials and Appeals ("ESTTA"). If filed on paper, the certificate of mailing by first-class mail procedure described in 37 CFR § 2.197  and the Priority Mail Express® procedure described in 37 CFR § 2.198  are both available. The certificate of facsimile transmission procedure, described in 37 CFR § 2.197, is not available. [ Note 2.] See TBMP § 110.

An opposition to an application based on Trademark Act § 66(a), 15 U.S.C. § 1141f(a)  must be filed electronically via ESTTA. [ Note 3.] See TBMP § 203.01.

The filing date of an opposition is the date of receipt in the Office of the opposition and the required fee, with proof of service on the applicant, or its attorney or domestic representative of record, if one has been appointed, at the correspondence address of record in the Office,unless the notice is filed in accordance with 37 CFR § 2.198  (Filing of correspondence by Priority Mail Express®). [ Note 4.] If the notice is filed in accordance with 37 CFR § 2.198, the filing date of an opposition will be the date of deposit with the United States Postal Service ("USPS"), i.e., the date shown by the "date in" date on the Priority Mail Express® label or other official USPS notation, unless the "date in" date cannot be determined, in which case the date the notice is received in the Office is considered the filing date of the opposition. [ Note 5.]

After the close of the time period for filing an opposition, including any extension of time for filing an opposition, an opposition may not be amended to add to the goods or services opposed. [ Note 6.] Nor may an opposition, once instituted, be amended to correct a misidentified serial number associated with the application sought to be opposed. [ Note 7.] The Board may, however, be able to correct serial number misidentification errors that are brought to its attention by the opposer, in the rare instances that the opposition has not yet been instituted and time remains in the opposition period. Also, for oppositions that are not filed electronically, if there is a discrepancy in the notice of opposition regarding the identification of the mark to be opposed, but the Board can determine the correct serial number against which the opposition is intended to be filed by a reading of the notice of opposition in its entirety, the Board will ascertain the correct serial number and institute the proceeding against the correct serial number. Otherwise, a would-be opposer’s remedy is to seek to cancel the mark once the application has matured to registration, or (if time remains in the opposition period) to file a new opposition, including payment of an additional filing fee therefor, which correctly identifies the application sought to be opposed. If an opposition is instituted against an incorrect serial number, and the mistake cannot be corrected, the Board will not refund the opposition fee.

Utilizing ESTTA to file a notice of opposition offers several advantages over paper filing. Parties which use the ESTTA filing system will not face late opposition and other timing errors. The ESTTA system will not permit a would-be opposer to file an opposition against an application that has not yet been published or that has been abandoned, or where the statutory time period for filing an opposition has passed. The ESTTA system also prompts the would-be opposer, once the user identifies the serial number of the application sought to be opposed, to verify that it has correctly identified the serial number associated with the application. See TBMP § 306.04. In addition, as long as the ESTTA filing process is completed, a potential opposer is assured that its filing will be accorded a valid filing date and that the notice of opposition will contain a certificate of service attesting to service. [ Note 8.] The certificate of service appears on the ESTTA-generated filing form, and the filing form is considered part of the plaintiff’s initial pleading. Of course, the mere appearance of the certificate of service on the notice of opposition is insufficient to prove actual service; the potential opposer must also make actual service of the complaint on the defendant. [ Note 9.]

For information on opposition filing fees, see TBMP § 308. For information on how to file an opposition, see TBMP § 309.

For information concerning the effect of such matters as restoration of jurisdiction, republication, amendment, letter of protest, petition to the Director, abandonment, or the inadvertent issuance of a registration, on the filing of an opposition or a request to extend time to oppose, see generally, TBMP Chapter 200.

NOTES:

 1.   Trademark Act § 13(a), 15 U.S.C. § 1063(a), and 37 CFR § 2.102(b)  and 37 CFR § 2.102(c); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994).

 2.   See 37 CFR § 2.195(d)(3), 37 CFR § 2.197(a)  and 37 CFR § 2.198(a). See also Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008) (opposition filed by facsimile not entitled to a filing date or improperly filed).

 3.   37 CFR § 2.101(b)(2). Cf. In re: Börlind Gesellschaft für Kosmetische Erzeugnisse GmbH, 73 USPQ2d 2019, 2020 (TTAB 2005) (37 CFR § 2.102(a)(2) requires ESTTA filing of extensions of time to oppose Trademark Act § 66(a) applications).

 4.   37 CFR § 2.101(d)(4). See Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008) (untimely opposition dismissed as a nullity).

 5.   See 37 CFR § 2.198(a)(2).

 6.   See 37 CFR § 2.107; Drive Trademark Holdings LP v. Inofin and Mark Walsh, 83 USPQ2d 1433, 1436 (TTAB 2007).

 7.   . See Yahoo! Inc. v. Loufrani, 70 USPQ2d 1735, 1736 (TTAB 2004) (opposition listing the incorrect serial number of the application dismissed as a nullity). Cf. Quality S. Manufacturing Inc. v. Tork Lift Central Welding of Kent Inc., 60 USPQ2d 1703, 1704 (Comm’r 2000) (Board directed to terminate opposition that misidentified serial number associated with application; registration will not be cancelled); and In re Merck & Co. Inc., 24 USPQ2d 1317, 1318 (Comm’r 1992) (application misidentified in request for extension of time).

 8.   Schott AG v. L’Wren Scott, 88 USPQ2d 1862, 1863 n.3 (TTAB 2008) (opposer failed to include a certificate of service with the notices of opposition, filed via first class mail, and did not dispute its failure to actually forward service copies to applicant; case dismissed as nullity);Chocoladefabriken Lindt & Sprungli AG v. Flores, 91 USPQ2d 1698, 1699 n.3 (TTAB 2009) ("Of course, a potential opposer must complete the ESTTA filing process to be accorded a valid filing date"), citing Vibe Records, Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1282 (TTAB 2008) (the official filing date of an ESTTA filing is the date time-stamped when the ESTTA filing and required fee are received on the USPTO server).

 9.   The Equine Touch Foundation, Inc. v. Equinology, Inc., 91 USPQ2d 1943, 1944 n.5 (TTAB 2009).