202.04 Late Request
A request for an extension of time to oppose must be filed prior to the expiration of the thirty-day period after publication (for opposition) of the mark which is the subject of the request, in the case of a first request, or prior to the expiration of an extension granted to the requesting party or its privy, in the case of a request for a further extension. [ Note 1.] See TBMP § 206.02 for information regarding further extension requests filed by privy. Because these timeliness requirements are statutory, they cannot be waived by stipulation of the parties, nor can the Director upon petition waive them. [ Note 2.] Accordingly, a first request filed after the expiration of the thirty-day period following publication of the subject mark, or a request for a further extension filed after the expiration of the previous extension granted to the requesting party or its privy, must be denied by the Board as late, even if the applicant has consented to the granting of the late filed request.
Moreover, once the time for opposing the registration of a mark has expired, the Office will not withhold issuance of the registration while applicant negotiates for settlement with a party that failed to timely oppose. This is so even if the applicant itself requests that issuance be withheld.
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).
2. See In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm’r 1995) (waiver of 37 CFR § 1.8 (now 37 CFR § 2.197) would effectively waive Trademark Act § 13, 15 U.S.C § 1063(a), and, in any event, fact that potential opposer did not retain executed hard copies of documents filed with Office and cannot prove document was timely is not an extraordinary circumstance justifying a waiver of 37 CFR § 1.8); In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477, 1478 (Comm’r 1994); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980).