110    Electronic Filing Using ESTTA

110.01    In General

37 C.F.R. § 2.2(g)  The acronym ESTTA means the Electronic System for Trademark Trials and Appeals, available at http://www.uspto.gov/.

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.

    • 37 C.F.R. § 2.101(b)(1)  An opposition to an application must be filed by the due date set forth in paragraph (c) of this section through ESTTA.

    37 C.F.R. § 2.102(a)(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).

37 C.F.R. § 2.101(b)(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.

37 C.F.R. § 2.102(a)(1)  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.

37 C.F.R. § 2.111(c)(1)  A petition to cancel a registration must be filed through ESTTA.

ESTTA – the Electronic System for Trademark Trials and Appeals – is the Board’s electronic filing system. ESTTA is a web-based application available on the Internet. No special software (apart from a web browser) need be installed on the user’s computer in order to use ESTTA. Likewise, users need not open an account or obtain a password, and there is no additional fee for use of ESTTA.

The Board requires use of ESTTA for the filing of all submissions in Board proceedings and for filing of extensions of time to oppose. ESTTA permits round-the-clock filing with real-time receipt confirmation, while reducing delay and the possibility of mishandling of submissions in route to or within the USPTO. Many ESTTA filings are processed automatically, with an appropriate Board order issuing within minutes of filing. Use of ESTTA helps filers avoid common (and sometimes fatal) pitfalls in filing, and allows the Board to efficiently and expeditiously process and act upon filings.

Upon completion of a successful filing, a filer using ESTTA will receive both an on-screen and email acknowledgement of receipt from ESTTA with the ESTTA tracking number and the filing information including the official filing date. The filing date is the date on which the complete ESTTA filing (including any required fee) is received in the USPTO. Although an ESTTA filing can be made from anywhere in the world, Eastern Time controls the filing date, not the local date from where the filing was made. [ Note 1.] ESTTA filers should not send hard copies of electronically-filed documents to the Board.

The ESTTA user manual, ESTTA forms, and instructions for their use can be found at https://estta.uspto.gov/. Contextually appropriate help is available throughout ESTTA by clicking on highlighted, hyper-linked terms. These terms usually appear in blue, but may differ depending on your browser settings. Filers should also check "What’s New in ESTTA" for important user guidelines.

It is the responsibility of the party making submissions to the Board using ESTTA to ensure that the submissions have been entered into the trial record. [ Note 2.] Parties are urged to check not only the ESTTA filing receipts but also TTABVUE, the Board's electronic docket information and file database, to ensure that all documents have been properly transmitted and entered. [ Note 3.]

This section is not intended to provide a comprehensive reference for use of ESTTA, but merely to emphasize ESTTA’s benefits and availability, and to provide some basic facts about its use.

NOTES:

 1.   37 C.F.R. § 2.195(a)(2). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 19296, 19296 (to be codified at 37 C.F.R. pt. 2 (proposed April 4, 2016); https://estta.uspto.gov  (instructions for filing using ESTTA).

 2.   Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1506 n.195 (TTAB 2017); Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1351 (TTAB 2014), appeal dismissed per stipulation, No. 2014-1461 (Fed. Cir. Oct. 10, 2014).

 3.   Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1506 n.195 (TTAB 2017); Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1351 (TTAB 2014), appeal dismissed per stipulation, No. 2014-1461 (Fed. Cir. Oct. 10, 2014).

110.01(a)    ESTTA is Mandatory for All Filings

Use of ESTTA is required for the filing of all submissions in Board proceedings. [ Note 1.]

Use of ESTTA previously had been mandatory only for the filing of either (1) extensions of time to oppose Madrid Protocol applications, i.e., applications under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), or (2) notices of opposition against Madrid Protocol applications. [ Note 2.] The requirement for use of 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 against requests for extension of protection under the Madrid Protocol. A request for an extension of time to oppose a Madrid Protocol application which is not filed through ESTTA will be denied in all circumstances. [ Note 3.] Similarly, a notice of opposition not filed through ESTTA against such an application will not be instituted under any circumstances. [ Note 4.] For a further discussion of filing notices of opposition against Madrid Protocol applications using ESTTA, see TBMP § 306.01.

In the rare circumstances the rules permit submissions in paper form, the paper submission must be accompanied by a written explanation showing that ESTTA was unavailable due to technical problems, or that extraordinary circumstances are present, and, where required, a Petition to the Director with the requisite petition fee. [ Note 5.] Petitions to file on paper are subject to 37 C.F.R. §2.146(a), including the requirement for verified facts.

NOTES:

 1.   See 37 C.F.R. § 2.126(a)  (submissions must be made through ESTTA); 37 C.F.R. § 2.101(b)  (notices of opposition must be filed through ESTTA); 37 C.F.R. § 2.102(a)(1)  (extensions of time to oppose must be filed in ESTTA); 37 C.F.R. § 2.102(a)(2)  (extensions of time to oppose Trademark Act § 66(a) applications must be filed through ESTTA); 37 C.F.R. § 2.101(b)(2)  (notice of opposition against § 66(a) application must be filed through ESTTA); 37 C.F.R. § 2.111(c)(1)  (petition to cancel must be filed through ESTTA).

 2.   See 37 C.F.R. § 2.126  (Form of Submissions to the Trademark Trial and Appeal Board); 37 C.F.R. § 2.102(a)(2)  (extensions of time to oppose Trademark Act § 66(a), 15 U.S.C. § 1141f(a)  applications must be filed through ESTTA); 37 C.F.R. § 2.101(b)(2)  (notice of opposition against § 66(a) application must be filed through ESTTA). See, e.g., CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011) (opposition to § 66(a) application must be filed via ESTTA); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011) (same); O.C. Seacrets Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1328 n.2 (TTAB 2010) (same).

 3.   In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019, 2020-21 (TTAB 2005).

 4.   See In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019, 2020-21 (TTAB 2005).

 5.   37 C.F.R. § 2.101(b)(2), 37 C.F.R. § 2.102(a)(2), 37 C.F.R. § 2.111(c)(2), 37 C.F.R. § 2.126(b).

110.01(b)    Plan Ahead

ESTTA users are strongly urged to plan ahead. Because unexpected problems can occur, users should keep filing deadlines in mind and allow plenty of time to resolve any issue which may arise. [ Note 1.] The Board will provide general assistance to ESTTA filers, see TBMP § 110.04 (Questions about ESTTA Filing), but cannot guarantee that any problem will be resolved prior to a deadline. As discussed above, ESTTA filing is mandatory. If ESTTA filing is not possible prior to a deadline for any reason, parties should timely submit their filings on paper, using another filing option as appropriate (e.g., certificate of mailing or Priority Mail Express® procedures). See TBMP § 111.02 (Certificate of Mailing), and TBMP § 111.01 (Priority Mail Express® procedure). Any paper filing must be accompanied by a written explanation showing that ESTTA is unavailable due to technical problems, or that extraordinary circumstances are present, and, where required, a Petition to the Director with the requisite petition fee. Petitions to file on paper are subject to 37 C.F.R. §2.146, including the requirement for verified facts.

Please Note: An extension of time to oppose, or a notice of opposition involving an application under Trademark Act § 66(a) must be filed through ESTTA, and may not under any circumstances be filed in paper form. [ Note 2.] Users should not anticipate that the Board will extend a deadline because it was not possible to file a submission by ESTTA on the due date.

NOTES:

 1.   Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1282-83 (TTAB 2008) (ESTTA filer encountered unexpected problem in ESTTA filing; filer transmitted notice of opposition by fax. Held: ESTTA filing not received and fax filing is unacceptable; opposition dismissed as a nullity.).

 2.   See 37 C.F.R. § 2.102(a)(1)  (extension of time to oppose) and 37 C.F.R. § 2.101(b)(3)  (notice of opposition). CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011) (any opposition to a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application must be filed through ESTTA); Hunt Control System, Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011) (same); O.C. Seacrets Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1328 n.2 (TTAB 2010) (same).

110.02    Attachments to ESTTA Filings

110.02(a)    In General

Many ESTTA forms permit or require the filer to attach an electronic file to be transmitted to the Board as part of the filing. For instance, an ESTTA user filing a notice of opposition or petition for cancellation must attach to its filing a pleading (i.e., a short and plain statement showing that the filer is entitled to relief). Likewise, a party filing a motion for summary judgment must attach a motion, as well as any affidavits or other evidence in support of it. When such a file can or must be attached, ESTTA will prompt the user to identify the file on the user’s computer and attach it to the ESTTA submission. Once a file has been selected and attached, the file may be opened in a separate window so that the user may determine whether all of the relevant pages of the selected file or files have been designated for filing.

110.02(b)    Form of ESTTA Attachments

Attachments to ESTTA filings may be in PDF, TIFF or TXT format. [ Note 1.] PDF is preferred, and should be used, if possible. Files should be formatted in letter size (8.5" x 11"), and should be rendered at 300 dpi resolution. ESTTA will accept either color or black and white PDF documents for uploading. It is recommended that all documents submitted electronically via ESTTA be "machine readable" to allow the Board and others to search the document using key words, and also mark and copy text from it. Most word processors feature drop-down options to "create .pdf," "save to .pdf," or "print to .pdf."

The filer is responsible for ensuring that all Board submissions – including attachments to ESTTA filings – are legible. Filers should be aware that the quality of ESTTA submissions is often better than those submitted in paper. [ Note 2.] Problems with image quality sometimes arise when poor quality documents are scanned or when the quality of legible documents is degraded in the scanning process; these problems typically arise in documents (or parts of documents) featuring graphical material, as opposed to text. Quality can sometimes be significantly degraded when contrast settings used in scanning are not appropriate for graphical material, or when color materials are scanned or copied in black and white prior to submission. If legibility of material in color or grayscale is important, filers are urged to scan the papers in color and to adjust the scanner’s contrast settings to achieve acceptable results prior to ESTTA filing. Users are urged to check the quality of their submission in TTABVUE after filing. TTABVUE contains the same images that the Board will use in considering the submission; if the TTABVUE image is not of acceptable quality, the user should not assume that the Board will be able to view and consider it appropriately. [ Note 3.] Original paper documents, when such submissions are permitted, are retained for a period of time, usually less than one year, because, the Board works from the scanned images, rather than the originals.

In addition, electronically submitted pleadings, motions, briefs, and the like must be formatted for at least 11-point type and be double-spaced. [ Note 4.] Exhibits to pleadings, motions, and briefs need not be reformatted to meet these requirements, but must be legible.

NOTES:

 1.   PDF stands for Portable Document Format, a platform-independent, open standard for document exchange. TIFF stands for Tagged Image File Format. TXT is used here to denote a plain-text file format (with .txt extension), with little or no formatting or graphics capability. TIFF and TXT files will be converted to PDF format when they are received by ESTTA. Most word processing programs can directly convert files into one of these formats. Alternatively, papers can usually be scanned in PDF or TIFF format.

 2.   In re Loggerhead Tools, LLC, 119 USPQ2d 1429, 1433 n.5 (TTAB 2016) (filers are responsible for ensuring that all submissions are legible). All paper submissions, when permitted, are scanned by the Board upon receipt. Please Note: whether filed in paper form or filed electronically, the quality of papers scanned into TTABVUE appears the same way as when they are submitted. See, e.g., In re Sela Products., LLC, 107 USPQ2d 1580, 1585 n.5 (TTAB 2013).

 3.   Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1506 n.195 (TTAB 2017) (party has responsibility of ensuring submission entered into record); Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1350-51 (TTAB 2014) (duty of party making submissions to ensure they were entered into the trial record), appeal dismissed per stipulation, No. 2014-1461 (Fed. Cir. Oct. 10, 2014); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014) ("the Board primarily uses TTABVUE in reviewing evidence"); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1758 n.16 (TTAB 2013) ("the onus is on the party making the submissions to ensure that, at a minimum, all materials are clearly readable by the adverse party and the Board"), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.).

 4.   37 C.F.R. § 2.126(a).

110.02(c)    Size Limitations

ESTTA is suited for large filings such as trial testimony and notices of reliance. There is no specific limit to the amount of evidence one may submit in support of a Board proceeding. However, filers should use reason and avoid the submission of irrelevant or merely cumulative evidence. The unnecessary submission of large records is a significant burden upon the Board. [ Note 1.] See TBMP § 702.05 for more information about submission of large records in general.

Filers should, however, be aware of certain system limitations. Filers may attach one or more files to any ESTTA form that permits or requires an attachment. The size limit for each file attached is 6 MB, and the aggregate of all attached files for a single ESTTA transmission may not exceed 53 MB. However, because very large files degrade the performance of the Board’s electronic file system, filers should limit each ESTTA submission to no more than an aggregate (all attached files combined) so as not to exceed the limitations. If a single submission, e.g., a single testimonial transcript or notice of reliance, will exceed the limitations, it should be broken into two or more submissions, in logical segments, filed consecutively.

NOTES:

 1.   Corporacion Habanos SA v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1091 (TTAB 2012) (excessive record on a single issue); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 (TTAB 2011) (excessively large record); UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1873 (TTAB 2011) (parties’ submitted much more evidence than was necessary to support respective positions).

110.03    Service of ESTTA Filings

Except for the notice of opposition, the petition to cancel, or notice of a concurrent use proceeding, every submission filed in a Board inter partes proceeding must be served upon the other parties to the proceeding, and proof of service must be provided before the paper will be considered. [ Note 1.] For all other submissions filed in ESTTA, the filer must include a certificate of service as an attachment (or as part of an attachment) to the ESTTA filing as proof of service. Many of the ESTTA forms, e.g., "consent motion forms," assist the filer by including a certificate of service as part of the ESTTA submission.

In addition to the requirement for a certificate of service, all submissions must actually be served upon the other parties to the proceeding by email, unless otherwise stipulated. [ Note 2.] See TBMP § 113 (Service of Papers).

The Board effects service of the notice of opposition or petition to cancel or notice of concurrent use proceeding by providing, in the notice of institution, a web link or web address to access the electronic proceeding record. [ Note 3.] For other filings, ESTTA does not automatically serve papers upon opposing parties or provide notice of their filing [ Note 4.]

For a further discussion regarding the filing of a notice of opposition or a petition for cancellation using ESTTA, and notification, see TBMP § 306.01 (notice of opposition); and TBMP § 307.01-TBMP § 307.02 (petition for cancellation).

NOTES:

 1.   37 C.F.R. § 2.119(a); 37 C.F.R. §2.105(a); 37 C.F.R. §2.113(a).

 2.   See, e.g., Springfield Inc. v. XD, 86 USPQ2d 1063, 1064 (TTAB 2008) ("The proof of service requirement assumes actual service on applicant, or its attorney or domestic representative of record, if any."). See also 37 C.F.R. § 2.119(b).

 3.   37 C.F.R. § 2.99(d)(1); 37 C.F.R. § 2.105(a); 37 C.F.R. § 2.113(a).

 4.   See, e,g., Equine Touch Foundation Inc. v. Equinology Inc., 91 USPQ2d 1943, 1944 n.5 (TTAB 2009) ("Actual forwarding of the service copy, however, is the responsibility of the filer, as ESTTA does not effect service for the filer."); Schott AG v. Scott, 88 USPQ2d 1862, 1863 n.3 (TTAB 2008) (same).

110.04    Questions About ESTTA Filing

Filers may call the Board with questions about filing at (571) 272-8500 or (800) 786-9199 (toll free) from 8:30 a.m. until 5:00 p.m. (Eastern Time). Alternatively, filers may send non-urgent email inquiries to ESTTA@uspto.gov, and include a description of the problem, the ESTTA tracking number and Board proceeding number (if any), and a telephone number for contact. The Board will respond to email inquiries within two business days. The email address is for technical ESTTA questions only. Submissions will not be accepted for filing by email. See TBMP § 107 ("The Board does not accept any filings by email.").

ESTTA users are encouraged to contact the Board when ESTTA is not working as expected. Whether or not one is able to overcome a problem, others are likely to have similar difficulties. Absent notification by users, the Board may be unaware of the problem, delaying any necessary repair.