209 Action by Board on Request
209.01 Suspension Policy
The Board will not suspend the running of an extension of time to oppose for any reason. A potential opposer must either continue to file timely requests for extensions of time, if it wishes to preserve its right to oppose, or file the notice of opposition. Once the notice of opposition is filed, however, the Board will suspend the opposition under appropriate circumstances. See, e.g., TBMP § 211.03 (no suspension pending decision on petition to the Director), TBMP § 212.05 (no suspension pending consideration of amendment), TBMP § 215 (no suspension pending decision on letter of protest), TBMP § 216 (no suspension pending cancellation of an inadvertentlyissued registration). For information on the suspension of an opposition proceeding after commencement, see TBMP § 510.
209.02 Determination of Extension Expiration Date
ESTTA automatically calculates extension dates, in the permissible intervals, with the appropriate fee, where applicable.
The extension expiration date stated in an action granting an extension is the date upon which the extension actually expires, even if that date is a Saturday, Sunday, or a federal holiday within the District of Columbia. If the expiration date falls on a Saturday, Sunday, or a federal holiday within the District of Columbia, an opposition, or a request for a further extension, filed by the potential opposer on the next succeeding day which is not a Saturday, Sunday, or a federal holiday will be considered timely. [ Note 1.] See TBMP § 112. However, the beginning date for calculating any subsequent extension is the actual expiration date of the previous extension, regardless of whether the expiration date fell on a weekend or federal holiday. [ Note 2.]
A potential opposer may file a first request for a thirty-day extension without a showing of cause, [ Note 3.] followed by a request for a sixty-day extension for good cause that is filed prior to the expiration of the first thirty-day period. [ Note 4.] See TBMP § 207.02. Alternatively, the potential opposer may file a single request for a ninety-day extension of time for good cause. [ Note 5.] After one or two granted requests totaling 120 days from the date of publication, see TBMP § 207.02, and prior to the expiration of the previous extension, the potential opposer may file one final extension request for an additional sixty days with the consent of applicant or a showing of extraordinary circumstances. [ Note 6.]
Extensions of time to oppose will only be granted in the increments set out in 37 C.F.R. § 2.102(c).
ESTTA automatically calculates the appropriate extension periods, and filers will be prompted to select a time period which complies with 37 C.F.R. § 2.102(c).
For permitted paper filings, incorrectly requested time periods are addressed as follows:
If a paper filing of a potential opposer seeks a first request for an extension of time to oppose which is longer than thirty days (or seeks an extension of "thirty days," but specifies an extension expiration date which is later than the expiration date of the requested "thirty days"), and good cause is shown and the required fee submitted, the extension, if granted, will be set to expire in ninety days. [ Note 7.] See TBMP § 207.02.
If a permitted paper filing of a potential opposer seeks a further request for extension of time to oppose (that is, beyond a first thirty-day request) and asks for a time which is longer or shorter than sixty days (or asks for certain number of days, but specifies an extension expiration date which is longer or shorter than the expiration date of the requested number of days), shows good cause and submits the required fee, the additional extension, if granted, will be set to expire in sixty days. [ Note 8.]
If a permitted paper filing of a potential opposer requests an extension of time for any other period other than a sixty-day request after receiving a first thirty-day and an additional sixty-day extension of time, or a first ninety-day extension of time, the request will be denied unless the party has shown extraordinary circumstances and submitted the required fee. [ Note 9.] See TBMP § 207.03.
See TBMP § 204 for information on the required fees for certain extensions of time to oppose.
NOTES:
1. See 37 C.F.R. § 2.195 (Receipt of trademark correspondence); 37 C.F.R. § 2.196 (Times for taking action: Expiration on Saturday, Sunday or federal holiday); Lotus Development Corp. v. Narada Productions, Inc., 23 USPQ2d 1310, 1312 (Comm’r 1991) (30-day extension expired on Saturday; rule allowing filing of opposition or subsequent extension on following Monday does not extend opposition period; subsequent extension period ran from Saturday, not the next Monday).
2. Lotus Development Corp. v. Narada Productions, Inc., 23 USPQ2d 1310, 1312 (Comm’r 1991).
3. See 37 C.F.R. § 2.102(c)(1)(i).
4. See 37 C.F.R. § 2.102(c)(2).
5. See 37 C.F.R. § 2.102(c)(1)(ii).
6. See 37 C.F.R. § 2.102(c)(3).
7. See 37 C.F.R §2.102(c)(1)(i) and 37 C.F.R §2.102(c)(2) ("A sixty-day extension is not available as a first extension of time to oppose."). Cf. Kimberly-Clark Corp. v. Paper Converting Industries, Inc., 21 USPQ2d 1875, 1877 (Comm’r 1991) (under former rules, initial request extending beyond thirty days with required showing of good cause granted).