201    In General

Trademark Act § 13(a),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) 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. An opposition may be amended under such conditions as may be prescribed by the Director.

37 C.F.R. § 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.
  • (b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file an opposition addressed to the Trademark Trial and Appeal Board. The opposition need not be verified, but must be signed by the opposer or the opposer’s attorney, as specified in § 11.1 of this chapter, or other authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c) are required for oppositions filed through ESTTA under paragraphs (b)(1) or (2) of this section.
    • (1) An opposition to an application must be filed by the due date set forth in paragraph (c) of this section through ESTTA.
    • (2) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an opposition against an application based on Section 1 or 44 of the Act may be filed in paper form. A paper opposition to an application based on Section 1 or 44 of the Act must be filed by the due date set forth in paragraph (c) of this section and be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph. Timeliness of the paper submission will be determined in accordance with §§ 2.195 through 2.198.
    • (3) An opposition to an application based on section 66(a) of the Act must be filed through ESTTA and may not under any circumstances be filed in paper form.
  • (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. The opposition must be accompanied by the required fee for each party joined as opposer for each class in the application for which registration is opposed (see § 2.6).
  • (d) An otherwise timely opposition cannot be filed via ESTTA unless the opposition is accompanied by a fee that is sufficient to pay in full for each named party opposer to oppose the registration of a mark in each class specified in the opposition. A paper opposition that is not accompanied by the required fee sufficient to pay in full for each named party opposer for each class in the application for which registration is opposed may not be instituted. If time remains in the opposition period as originally set or as extended by the Board, the potential opposer may resubmit the opposition with the required fee.
  • (e) The filing date of an opposition is the date of electronic receipt in the Office of the notice of opposition and required fee. In the rare instances that filing by paper is permitted under these rules, the filing date will be determined in accordance with §§ 2.195 through 2.198.

37 C.F.R. § 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 a request with the Trademark Trial and Appeal Board to extend the time for filing an opposition. The 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 request to extend the time for filing an opposition to an application must be filed through ESTTA by the opposition due date set forth in § 2.101(c). In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a request to extend the opposition period for an application based on Section 1 or 44 of the Act may be filed in paper form by the opposition due date set forth in § 2.101(c). A request to extend the opposition period for an application based on Section 66(a) of the Act must be filed through ESTTA and may not under any circumstances be filed in paper form.
    • (2) A paper request to extend the opposition period for an application based on Section 1 or 44 of the Act must be filed by the due date set forth in § 2.101(c) and be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under paragraph (a)(1) of this section. Timeliness of the paper submission will be determined in accordance with §§ 2.195 through 2.198.
  • (b) A 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 must be in the name of the person to whom the extension was granted, except that 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:
      • (i) Either a thirty-day extension of time, which will be granted upon request; or
      • (ii) A ninety-day extension of time, which will be granted only for good cause shown. A sixty-day extension is not available as a first extension of time to oppose.
    • (2) If a person was granted an initial 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. No other time period will be allowed for a final extension of the opposition period. 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.
  • (d) The filing date of a request to extend the time for filing an opposition is the date of electronic receipt in the Office of the request. In the rare instance that filing by paper is permitted under these rules, the filing date will be determined in accordance with §§ 2.195 through 2.198.

Any person, whether natural or juristic, who believes that he, she, or it would be damaged by the registration of a mark on the Principal Register may, upon payment of the prescribed fee, file an opposition in the Office, stating the grounds therefor, within 30 days after the publication of the mark in the Official Gazette for purposes of opposition. [ Note 1.] See TBMP § 303.02 ("Meaning of the term "person").

For further information concerning the filing of an opposition, see TBMP Chapter 300.

Similarly, any person who believes that he, she, or it would be damaged by the registration of a mark on the Principal Register may file a request to extend the time for filing an opposition. [ Note 2.] Requests for extensions of time to oppose are filed with and determined by the Board. [ Note 3.] Requests for extension of time to oppose an application based on Section 1 or 44 of the Act must be filed through ESTTA unless ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present. [ Note 4.] However, requests for extension of time to oppose a § 66(a) application must always be filed electronically in ESTTA, and may not under any circumstances be filed in paper form. [ Note 5.]

The time for filing a request for an extension of time to oppose is governed by Trademark Act § 13(a), 15 U.S.C. § 1063(a), and 37 C.F.R. § 2.102(c). Other requirements for a request for an extension of time to oppose are set forth in 37 C.F.R. § 2.102(a), 37 C.F.R. § 2.102(b), and 37 C.F.R. § 2.102(d). Moreover, an extension of time to oppose must also meet the general requirements for submissions to the Board specified in 37 C.F.R. § 2.126. SeeTBMP §106.03. Each of these requirements is discussed in the sections that follow.

NOTES:

 1.   Trademark Act § 13(a), 15 U.S.C. § 1063(a); 37 C.F.R. § 2.101. See also 37 C.F.R §2.80  (mark entitled to registration will be published in the Official Gazette for opposition).

 2.   Trademark Act § 13(a), 15 U.S.C. § 1063(a); 37 C.F.R. § 2.102.

 3.   See 37 C.F.R. § 2.102(a); Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1075 n.2 (TTAB 1993) (37 C.F.R. § 2.102 delegates the authority to the Board to grant ex parte extensions of time to oppose). See TMEP §1503.04

 4.   37 C.F.R. § 2.102(a)(1). See also 37 C.F.R §2.126(a)  ("Submissions must be made to the Trademark Trial and Appeal Board via ESTTA").

 5.   37 C.F.R. § 2.102(a)(1). 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).