303.05(b)    Opposition Filed by Privy

A party in privity with a potential opposer may step into the potential opposer’s shoes and file a notice of opposition or may join with the potential opposer as a joint opposer. [ Note 1.] Thus, an opposition filed during an extension of time to oppose may be filed by a party other than the party to which the extension was granted, if it is shown to the satisfaction of the Board that the differing party is in privity with the party granted the extension. [ Note 2.] Cf. TBMP § 206.02.

The "showing" of privity should be in the form of a recitation of the facts on which the claim of privity is based, and must be submitted either with the opposition, or during the time allowed by the Board in its letter requesting an explanation of the discrepancy. If the opposition is filed both in the name of the party granted the previous extension and in the name of one or more differing parties, an explanation will be requested as to each differing party, and the opposition will not be accepted as to any differing party that fails to make a satisfactory showing of privity.

Once a timely notice of opposition has been filed, and the time for opposing has expired, the right to pursue the filed case is a right individual to the timely filer. While this right may be transferred to another party, as by an assignment of the mark with the associated goodwill, it may not be shared. [ Note 3.]

For information concerning the meaning of the term "privity," see TBMP § 206.02.

NOTES:

 1.   See 37 C.F.R. § 2.102(b); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (licensee, as party in privity with opposer, could have joined opposer in filing opposition during extension of time to oppose; however, having failed to join opposer in filing opposition during extension of time to oppose, licensee may not be joined after opposition is filed); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980).

 2.   See 37 C.F.R. § 2.102(b); Warren Distribution, Inc. v. Royal Purple, LLC, 115 USPQ2d 1667, 1669-70 (TTAB 2015) (individual employee that filed extension request not in privity with employer who filed notice of opposition); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (licensee considered to be in privity with licensor; however, having failed to join opposer in filing opposition during extension of time to oppose, licensee may not be joined after opposition is filed);. Cf. In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (fact that two entities are using marks similar to that for which application has been made and that both have been named defendants in civil actions brought by the owner of the mark in question is not a basis for finding privity);In re Spang Industries, 225 USPQ 888, 888 (Comm’r Pats. 1985) (attorney/client relationship does not invest the attorney with same right or interest as his client).

 3.   See SDT, Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (opposer’s licensee, having failed to join opposer in filing opposition during extension of time to oppose, cannot be joined after opposition is filed); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (extension of time granted to opposer does not inure to the benefit of unrelated third party, despite its sharing of a common interest with opposer vis-à-vis applicant’s mark). Cf. Leading Jewelers Guild, Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1901 n.1(TTAB 2007) (substitution allowed following assignment); Missouri Silver Pages Directory Publishing Corp. Inc. v. Southwestern Bell Media,Inc., 6 USPQ2d 1028, 1032 (TTAB 1988) (president/sole shareholder is in privity with opposer corporation and may be substituted as "real party in interest" during opposition); Raker Paint Factory v. United Lacquer Manufacturing Corp., 141 USPQ 407, 409 (TTAB 1964) (motion to amend complaint to substitute sole owner of company as real party in interest for opposer company granted); Pyco, Inc. v. Pico Corp., 165 USPQ 221, 222 (TTAB 1969) (substitution of opposer allowed where notice of opposition named non-existing entity that had transferred rights to opposer prior to filing of opposition). Cf. also, Chien Ming Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988) (trademark application was fatally defective because applicant was not the owner of the mark, having transferred it from himself to a corporation between the time that he executed the application and the date it was received in the Office).