113.05 Additional Time for Taking Action After Service by Mail
Whenever a party to an inter partes proceeding before the Board is required to take some action within a prescribed period of time after the service of a paper upon that party by another party to the proceeding, and the paper is served by first-class mail, Priority Mail Express®, or overnight courier, the time for taking action is enlarged by 5 days. [ Note 1.] The 5-day enlargement is not applicable to agreed use by parties of service by electronic transmission (i.e. email or fax) and parties may not stipulate to circumvent this requirement. [ Note 2.] In addition, Fed. R. Civ. P. 6(d) is not applicable to Board proceedings. As an alternative to email service, parties may stipulate to accept service by mail but also agree to serve a courtesy copy by email. Please Note: a courtesy copy does not substitute for proper service under the applicable Trademark Rules. [ Note 3.]
For example, if one party to a proceeding serves, upon another party to the proceeding, a motion to compel discovery, and service of the motion is made by first-class mail, Priority Mail Express®, or overnight courier, under 37 CFR § 2.119(c), the served party’s time for filing a response to the motion will be 20 days from the date of service of the motion, that is, from the date of mailing or of delivery to the overnight courier. Because the service was made by first-class mail, Priority Mail Express®, or overnight courier, 5 days are added to the 15-day period prescribed in 37 CFR § 2.127(a) for filing a response to a motion. The additional 5 days are added to the response period before applying 37 CFR § 2.196, which addresses the response time when the last day for taking action falls on a Saturday, Sunday, or Federal holiday.
37 CFR § 2.119(c) applies only when a party has to take some action within a prescribed period after the service of a paper upon it by another party, and service of the paper was made in one of three specified ways. It does not apply to an action that must be taken by a party within a time set in a communication from the Board. Thus, for example, when a Board action notifying a defendant of the filing of an opposition or petition to cancel allows the defendant 40 days from the date of the notification in which to file an answer to the complaint, the answer is due on or before the 40th day, not on the 45th day. Similarly, the 5-day enlargement is not applicable to 37 CFR § 2.128 which sets the time for filing the briefs on the case. TBMP § 801.02
NOTES:
2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42250 (August 1, 2007) ("As for agreed use by parties of email or fax for forwarding of service copies, the Office confirms that § 2.119(c) would not apply to service by electronic transmission (email or fax) under § 2.119(b)(6)."); see McDonald'’s Corp. v. Cambrige Overseas Development Inc., 106 USPQ2d 1339, 1340 (TTAB 2013) (parties who have stipulated to service by email may not take advantage of five additional days for service provided under 37 CFR § 2.119(c) and may not stipulate to circumvent this requirement).
3. Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1217 n.7 (TTAB 2012).