203.01(a)    Required Electronic Filings; Paper Filings

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.

37 C.F.R. § 2.126 Form of submissions to the Trademark Trial and Appeal Board.

  • (a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.
    • (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
    • (2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.
  • (b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered. 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.
  • (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(f) must be submitted using the "Confidential" selection available in ESTTA or, where appropriate, under a separate paper 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 for public viewing with the confidential portions redacted must be submitted concurrently.

A request for an extension of time to oppose must be submitted through ESTTA and must specify the period of extension desired. [ Note 1.] Available forms and instructions for electronic filing can be found at http://estta.uspto.gov.

If ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a request to extend time to oppose an application based on Trademark Act § 1 or 44, 15 U.S.C. § 1051  or 15 U.S.C. § 1126, may be filed in paper form. [ Note 2.] See TBMP § 106.03 and TBMP § 107 for general information about paper filings. The requirements for formatting electronic and paper submissions to the Board are specified in 37 C.F.R. § 2.126(a)  and 37 C.F.R. § 2.126(b), respectively.

Under no circumstances may a request to extend the opposition period for a Madrid Protocol application, i.e., an application filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), be filed in paper form. [ Note 3.] The requirement to use ESTTA for such filings enables the USPTO to fulfill its obligation to timely notify the International Bureau of the World Intellectual Property Organization of oppositions filed against applications requesting extension of protection under the Madrid Protocol. A request for an extension of time to oppose a Madrid Protocol application that is not filed through ESTTA will be denied.

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.] During the initial 30-day period following publication of the mark, 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.] If granted, the potential opposer will have until 120 days from the date of publication within which to oppose. A sixty-day extension of time to oppose is not available as a first extension of time to oppose. [ Note 6.] Alternatively, the potential opposer may file a single first request for a ninety-day extension of time for good cause, thereby obtaining, if granted, an extension up to 120 days from the date of publication. [ Note 7.] 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 8.]

The final request (for the 120–180 day period after publication) can only be granted for sixty days and not any other period of time. [ Note 9.] For example, within the 90-120 day period from 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, even if based on consent, the request will be denied unless the reasons stated for the granting of the request are determined to be extraordinary, in which case the request will be granted for sixty days instead. In other words, although a thirty day extension of time is not permissible under 37 C.F.R. § 2.102(c)(3), the presence of extraordinary circumstances would allow the grant of a sixty day extension of time. No further extensions of time to oppose will be permitted.

The following chart illustrates the initial publication period and extensions of time to oppose which may be granted:

Publication
30 days
37 C.F.R. § 2.102(c)    		First 30 days – no reason necessary
37 C.F.R. § 2.102(c)(1)(i)    		Next 60 days – for good cause or consent
37 C.F.R. § 2.102(c)(2)    		Final 60 days – with consent or under extraordinary circumstances
37 C.F.R. § 2.102(c)(3)   
First 90 Days – for good cause or consent
37 C.F.R. § 2.102(c)(1)(ii)   

NOTES:

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

 2.   37 C.F.R. § 2.102(a)(1)  and 37 C.F.R §2.102(a)(2).

 3.   37 C.F.R. §2.102(a)(1). See NSM Resources Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1039 n.19 (TTAB 2014) (Use of ESTTA is mandatory for the filing of extensions of time to oppose applications filed under the Madrid Protocol).

 4.   37 C.F.R §2.102(c)(1)(i)  and 37 C.F.R §2.102(c)(2).

 5.   37 C.F.R §2.102(c)(1)(i) and 37 C.F.R. § 2.102(c)(2).

6. 37 C.F.R. § 2.102(c)(1)(ii).

7. 37 C.F.R. § 2.102(c)(1)(ii).

8. 37 C.F.R. § 2.102(c)(3).

9. 37 C.F.R. § 2.102(c)(3).