309.04    Defects in Complaint That May Affect Institution of Proceeding

An opposition or a petition for cancellation must be filed via ESTTA. However, if ESTTA is unavailable due to technical problems, or due to extraordinary circumstances, an opposition or petition for cancellation may be filed on paper, (except for an opposition against a § 66(a) application) if accompanied by a Petition to the Director under 37 C.F.R. § 2.146 and the required fee. [ Note 1.] Following are circumstances that affect the institution of the proceeding, some of which are specific to paper filings.

No proceeding will be instituted, and any submitted filing fee for the proceeding will be refunded in the following circumstances:

  • (1) If an opposition filed during an extension of time to oppose is in the name of someone other than the person who obtained the extension, and the opposer is unable to show, pursuant to 37 C.F.R. § 2.102(b), that it is in privity with the person who obtained the extension, or that the person in whose name the extension was requested was misidentified through mistake. See TBMP § 303.05.
  • (2) In the rare circumstance that an opposition or a petition for cancellationin paper form, accompanied by a Petition to the Director and the required fee, and the opposition or petition to cancel is deemed prematurely filed (i.e., prior to publication of the subject mark in the Official Gazette for purposes of opposition, or prior to issuance of a registration of the subject mark, respectively, even if the registration has issued by the time of the Board’s action). See TBMP § 306.03 and TBMP § 307.03. Please Note: ESTTA does not permit a party to file a notice of opposition prior to the opposition period or a petition to cancel prior to registration of the mark.
  • (3) In the rare circumstance that an opposition is filed in paper form accompanied by a Petition to the Director and the required fee, and the opposition is filed after the time for opposing has expired; or is filed unsigned, and a signed copy is not submitted within the time limit set in the notification of this defect by the Board; or is filed without the required fee; or if the opposed application was abandoned before the opposition was filed. See TBMP § 218, TBMP § 306.04, TBMP § 308 and TBMP § 309.02(b)). Please Note: ESTTA does not permit a plaintiff to file a notice of opposition after the expiration of the opposition period or without payment of the required fee. [ Note 2.]
  • (4) If a party files an opposition, but the notice of opposition misidentifies the application serial number, and it is clear from the notice of opposition that another serial number was intended, should it come to the Board’s attention as the Board is manually instituting the opposition that a notice of allowance has issued with respect to the intended serial number or that the mark has been registered, the proceeding will not be instituted and the filing fee will be refunded.
  • (5) In the rare circumstance that a petition for cancellation is filed in paper form accompanied by a Petition to the Director and the required fee, but the petition to cancel is not accompanied by a fee sufficient to pay in full for each named petitioner for each class in the registration(s) for which cancellation is sought, the cancellation may not be instituted. [ Note 3.]

No proceeding will be instituted and the filing fee will not be refunded in the following circumstances:

  • (1) If a party files an opposition or petition for cancellation in paper form without the Petition to the Director and the required fee under37 C.F.R. §2.146, the proceeding will not be instituted and the filing fee will not be refunded.
  • (2) If a party files an opposition or petition for cancellation in paper form accompanied by the Petition to the Director and the required fee and the required showing in the Petition to the Director is found to be insufficient, the proceeding will not be instituted and the filing fee will not be refunded.

Proceedings will be instituted and the filing fee charged in the following circumstances:

  • (1) In the rare circumstance that a party files a petition for cancellation in paper form, accompanied by a Petition to the Director and the required fee, and the Petition to the Director is granted, and the petition to cancel is filed against a Principal Register registration that is more than five years old, but does not allege any ground upon which such a registration can be cancelled (see Trademark Act § 14, 15 U.S.C. § 1064 ), the cancellation will still be instituted. (The insufficiency of pleaded claims must be raised by motion, such as under Fed. R. Civ. P. 12. It may also be addressed during a discovery conference conducted with Board participation.) Any fee submitted with the petition will not be refunded. Please Note: when a plaintiff uses ESTTA to file a notice of opposition or petition to cancel, ESTTA presents a checklist of available grounds and prompts the filer to select grounds for opposition or cancellation. [ Note 4.] Failure to select or include any grounds will halt the filing process. For a petition to cancel, if the involved registration is more than five years old, ESTTA will present a listing of available grounds under Trademark Act § 14(3) and Trademark Act § 14(5), 15 U.S.C. § 1064(3)  and 15 U.S.C. § 1064(5), and will not allow a party to select other (unavailable) grounds.
  • (2) In the rare circumstances that a petition for cancellation is filed in paper form, accompanied by a Petition to the Director and the required fee, and at the time of the filing of the petition, the registration sought to be cancelled was not a "live" registration (e.g., the time for filing an affidavit of use under Trademark Act § 8, 15 U.S.C. § 1058, had expired, and no acceptable affidavit had been filed; the registration had already been cancelled as the result of a previous cancellation proceeding), the proceeding will be instituted, and then dismissed as moot. Any fee submitted with the petition for cancellation will not be refunded. Please Note: The ESTTA filing system prompts the user to input the registration number of the mark for which cancellation is sought. If the registration is not "live," ESTTA will halt the process. ESTTA will also refuse to continue an opposition filing process if the potential opposer inputs a serial number for a mark that has not yet been published for opposition or for which the opposition period has expired.
  • (3) In the rare circumstances that a party files an opposition or a petition for cancellation in paper form, accompanied by a Petition to the Director and the required fee, and the filer immediately thereafter changes its mind, and requests that the opposition or petition for cancellation not be instituted and that the papers be returned, the request ordinarily will be denied, the proceeding will be instituted, and no refund will be made. However, in cases where the Petition to the Director to file on paper is granted and there is a defect in the opposition or petition for cancellation which precludes institution, no proceeding will be instituted, and any submitted fee for the opposition or petition to cancel will be refunded.
  • (4) If a party files an opposition or a petition for cancellation but misidentifies the application serial number or registration number, and the proceeding is instituted against the incorrect serial or registration number, the filing fee will not be refunded. [ Note 5.] See TBMP § 306.01.

When a proceeding is erroneously instituted, the proceeding will be dismissed as a nullity, rather than vacated, so as to maintain the integrity of the proceeding numbers. If the opposition or cancellation was filed on paper, the Board will appropriately dispose all physical papers because the papers are scanned shortly after filing and appear in the docket for the instituted, though dismissed, proceeding. If the proceeding was instituted through ESTTA, the electronic file record for the erroneous opposition or cancellation will be retained in TTABVUE.

NOTES:

 1.   37 C.F.R. § 2.101(b)(1); 37 C.F.R. § 2.101(b)(3); 37 C.F.R. § 2.101(b)(2); 37 C.F.R. § 2.101(d); 37 C.F.R. § 2.111(c)(1); 37 C.F.R. § 2.111(c)(2).

 2.   See 37 C.F.R. § 2.101(d); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008) (where ESTTA filing process not completed because no fee was paid, date appearing on the ESTTA "Validate" screen is inoperative; opposition dismissed as a nullity). See also Birlinn Ltd. v. Stewart, 111 USPQ2d 1905, 1908 (TTAB 2014) (Board applies opportunity to cure provision in § 2.119(e) to improperly signed complaint, which defines the time period for cure as "within the time limit set in the notification of this defect by the Office").

 3.   See 37 C.F.R. § 2.111(d).

 4.   37 C.F.R. § 2.104(a)  and 37 C.F.R. § 2.112(a); See O.C. Seacrets Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1329 n.4 (TTAB 2010) ("When an opposer uses ESTTA to file a notice of opposition, ESTTA prompts the filer to list grounds for opposition").

 5.   See 37 C.F.R. § 2.194(b)(1); Yahoo! Inc., v. Loufrani, 70 UPSQ2d 1735, 1736 (TTAB 2004).