211.03 Petition to the Director
If an applicant or potential opposer is dissatisfied with an order of the Board on a request for an extension of time to oppose, it may file a petition to the Director for review of the order in question. [ Note 1.]
The petition to the Director must include a statement of the facts relevant to the petition, the points to be reviewed, the action or relief requested, and the requisite fee, as specified in 37 C.F.R. § 2.6. Any brief in support of the petition must be embodied in or accompany the petition. If facts are to be proved, the proof must be in the form of affidavits or declarations in accordance with 37 C.F.R. § 2.20, and these affidavits or declarations, with any exhibits thereto, must accompany the petition. [ Note 2.]
A petition from the grant or denial of a request for an extension of time to oppose must be filed within 15 days from the mailing date of the grant or denial of the request. [ Note 3.] A petition from the denial of a request must be served on the attorney or other authorized representative of the applicant, if any, or on the applicant. [ Note 4.] A petition from the grant of a request must be served on the attorney or other authorized representative of the opposer, if any, or on the opposer. [ Note 5.] Proof of service of the petition must be made as provided in 37 C.F.R. § 2.119 . [ Note 6.] See TBMP § 113.03 (Elements of Certificate), and TBMP § 113.04 (Manner of Service). The potential opposer or the applicant, as the case may be, may file a response within 15 days from the date of service of the petition. [ Note 7.] A copy of the response must be served upon the petitioner, with proof of service as provided by 37 C.F.R. § 2.119(a). No further document relating to the petition may be filed. [ Note 8.]
The filing of a petition by the potential opposer from the denial, or by the applicant from the granting, of a request for an extension of time to oppose, does not relieve the potential opposer of the responsibility of filing an opposition, or a request for a further extension of time to oppose, prior to the expiration of the extension which is the subject of the petition. [ Note 9.] The filing of a petition will constitute good cause for extensions of time to oppose aggregating up to 120 days from the date of publication of the mark, but will not constitute extraordinary circumstances justifying an extension of time beyond 120 days from publication. The Board will not suspend the time for filing an opposition or subsequent extension pending consideration of a petition to the Director. See TBMP § 209.01.
If the petition is resolved unfavorably to opposer during the running of an extension of time, any opposition or request for further extension of time to oppose filed during or after the extension period in question will be rejected as untimely.
If a potential opposer files a timely opposition during the pendency of its petition to the Director, the Board will institute the opposition. At the same time, the Board will normally suspend the opposition pending resolution of the petition. If, along with the notice of opposition, the opposer files a motion to suspend the opposition, citing the pending petition as the reason for suspension, the Board will institute the opposition, grant the motion to suspend, and state that the opposition is suspended pending resolution of the petition to the Director. A copy of the Board’s order will be sent to both parties.
If the decision on the petition is ultimately unfavorable to opposer, the opposition will be dismissed.
NOTES:
1. 37 C.F.R. § 2.146 (Petitions to the Director). See TMEP § 1704 (Petitionable Subject Matter).
9. See 37 C.F.R. § 2.146(g); In re Docrite Inc., 40 USPQ2d 1636, 1637 n.1 (Comm’r 1996) (citing 37 C.F.R. § 2.146(g), and stating that filing petition to review denial of request to extend time to oppose does not stay time to file opposition or further extensions of time to oppose).