202 Time for Filing Request
202.01 In General
Trademark Act § 13(a), 15 U.S.C § 1063(a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time for filing opposition. An opposition may be amended under such conditions as may be prescribed by the Director.
37 C.F.R. § 2.102(c) The time for filing an opposition shall not be extended beyond 180 days from the date of publication. Any request to extend the time for filing an opposition must be filed before thirty days have expired from the date of publication or before the expiration of a previously granted extension of time, as appropriate. Requests to extend the time for filing an opposition must be filed as follows:
- (1) A person may file a first request for:
- (i) Either a thirty-day extension of time, which will be granted upon request; or
- (ii) A ninety-day extension of time, which will be granted only for good cause shown. A sixty-day extension is not available as a first extension of time to oppose.
- (2) If a person was granted an initial thirty-day extension of time, that person may file a request for an additional sixty-day extension of time, which will be granted only for good cause shown.
- (3) After receiving one or two extensions of time totaling ninety days, a person may file one final request for an extension of time for an additional sixty days. No other time period will be allowed for a final extension of the opposition period. The Board will grant this request only upon written consent or stipulation signed by the applicant or its authorized representative, or a written request by the potential opposer or its authorized representative stating that the applicant or its authorized representative has consented to the request, or a showing of extraordinary circumstances. No further extensions of time to file an opposition will be granted under any circumstances.
- (d) The filing date of a request to extend the time for filing an opposition is the date of electronic receipt in the Office of the request. In the rare instance that filing by paper is permitted under these rules, the filing date will be determined in accordance with §§ 2.195 through 2.198.
A first request for an extension of time to oppose an application for registration of a mark must be filed prior to the expiration of the thirty-day period after publication of the mark in the Official Gazette, pursuant to Trademark Act § 12(a), 15 U.S.C. § 1062(a). [ Note 1.] Any request for a further extension of time to oppose must be filed by the initial requesting party, or its privy, prior to the expiration of an extension granted to the requesting party or its privy. [ Note 2.]
All requests to extend the time for filing an opposition must be filed through ESTTA. [ Note 3.] For an application based on Trademark Act §§ 1 or 44, a request to extend the opposition period may be filed in paper form only if ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present. [ Note 4.] Requests for extension of time to oppose a Trademark Act § 66(a) application may not under any circumstances be filed in paper form. [ Note 5.]
Any paper request must be timely, [ Note 6.], and must be accompanied by a Petition to the Director with the requisite fees and a showing that ESTTA was unavailable because of technical problems or that extraordinary circumstances are present. [ Note 7.] The timeliness of any paper submission will be determined in accordance with 37 C.F.R. § 2.195 through 37 C.F.R. § 2.198. [ Note 8.] See TBMP § 111.02 (certificate of mailing procedure) and TBMP § 111.01 (Priority Mail Express®) for further information about submissions filed in paper form and procedures providing for the timeliness of any paper submissions. Paper filings must also meet the general requirements for submissions to the Board specified in 37 C.F.R §2.126. See TBMP §106.03 and TBMP §107
No more than three requests to extend the time for filing an opposition, totaling 180 days from the date of publication, may be filed.[ Note 9.] During the initial 30-day period following publication of the mark, a potential opposer may file a request for a thirty-day extension without a showing of cause, see TBMP § 207.02 (Extensions Up to 120 Days from Date of Publication), followed by a request for a sixty-day extension for good cause. [ Note 10.] If granted, the potential opposer will have until 120 days from the date of publication within which to oppose. Alternatively, the potential opposer may file a single first request for a ninety-day extension of time for good cause, thereby obtaining, if granted, an extension up to 120 days from the date of publication. [ Note 11.] A sixty-day extention is not available as a first extension of time to oppose. [ Note 12.] After one or two granted requests totaling 120 days from the date of publication, the potential opposer may request one final extension of time for an additional sixty days, but only with the consent of the applicant or a showing of extraordinary circumstances. [ Note 13.]
The final request (for the 120-180 day period after publication) can only be granted for sixty days and not any other period of time. [ Note 14.] For example, within the 90-120 day period from publication, the potential opposer cannot request a thirty-day extension of time, even with the consent of the applicant. If an extension of less than sixty days is requested, even if based on consent, the request will be denied unless the reasons stated for the granting of the request are determined to be extraordinary, in which case the request will be granted for sixty days. In other words, although a thirty-day extension of time is not permissible under 37 C.F.R. § 2.102(c)(3), the presence of extraordinary circumstances would allow the granting of a sixty-day extension of time. No further extensions of time to oppose will be permitted.
The following chart illustrates the initial publication period and extensions of time to oppose which may be granted:
| Publication 30 days 37 C.F.R. § 2.102(c) | First 30 days – no reason necessary 37 C.F.R. § 2.102(c)(1)(i) | Next 60 days – for good cause or consent 37 C.F.R. § 2.102(c)(2) | Final 60 days – with consent or under extraordinary circumstances 37 C.F.R. § 2.102(c)(3) |
| First 90 Days – for good cause or consent 37 C.F.R. § 2.102(c)(1)(ii) | |||
NOTES:
1. Trademark Act § 13(a), 15 U.S.C. § 1063(a); 37 C.F.R. § 2.102(c). See In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477, 1478 (Comm’r Pats. 1994) (citing In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (timeliness of extension requests is statutory and cannot be waived). Cf. Yahoo! Inc. v. Loufrani, 70 USPQ2d 1735, 1736 (TTAB 2004) (because requirements of Section 13(a) of the Act for the filing of an opposition are statutory, they cannot be waived by stipulation of the parties, nor can they be waived by the Director on petition).
3. 37 C.F.R. § 2.102(a)(1). See also 37 C.F.R §2.126(a) ("Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.").
4. 37 C.F.R. § 2.102(a)(1) and 37 C.F.R §2.126(a).
5. 37 C.F.R §2.102(a)(1). See NSM Resources Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1039 n.19 (TTAB 2014) (Use of ESTTA is mandatory for the filing of extensions of time to oppose applications filed under the Madrid Protocol).
7. 37 C.F.R §2.120(a)(2). Cf. DFC Expo LLC v. Coyle, 121 USPQ2d 1903 (TTAB 2017) (untimely paper submission of notice of opposition without certificate of mailing, fees, or petition to Director denied).
8. 37 C.F.R. § 2.102(a)(2) and 37 C.F.R §2.102(d).
9. 37 C.F.R §2.102(c)(1)(i) and 37 C.F.R §2.102(c)(2).
10. 37 C.F.R §2.102(c)(1)(i) and 37 C.F.R §2.102(c)(2)
11. 37 C.F.R §2.102(c)(1)(ii).
202.02 Date of Publication of Mark
The date of publication of a mark is the issue date of the Official Gazette in which the mark appears, pursuant to Trademark Act § 12(a), 15 U.S.C. § 1062(a), for purposes of opposition.
202.03 Premature Request
Trademark Act § 13(a), 15 U.S.C. § 1063(a), provides that an opposition to the registration of a mark upon the Principal Register may be filed "within thirty days after" the publication of the mark in the Official Gazette under Trademark Act § 12(a), 15 U.S.C. § 1062(a). Trademark Act § 13(a), 15 U.S.C. § 1063(a) also provides for extensions of the time for filing an opposition under certain conditions. ESTTA, does not permit a party to file a premature notice of opposition or premature request for an extension of time to oppose. Any paper-filed opposition, and any paper-filed request for an extension of time to oppose, filed before the date of publication of the mark sought to be opposed, is premature, and the Board will reject the opposition even if the mark has been published by the time of the Board’s action. Cf. TBMP § 306.03 (Premature Opposition).
202.04 Late Request
A request for an extension of time to oppose must be filed prior to the expiration of the thirty-day period after publication for opposition of the mark which is the subject of the request, in the case of a first request, or prior to the expiration of an extension granted to the requesting party or its privy, in the case of a request for a further extension. [ Note 1.] See TBMP § 206.02 for information regarding further extension requests filed by a party in privity with the person who requested and was granted the extension of time. Because these timeliness requirements are statutory, they cannot be waived by stipulation of the parties, nor can the Director upon petition waive them. [ Note 2.] The ESTTA filing system, does not permit a party to file a late request for extension of time to oppose. [ Note 3.] Likewise, later paper submissions will be denied. A first request filed in paper after the expiration of the thirty-day period following publication of the subject mark, or a request for a further extension filed in paper after the expiration of the previous extension granted to the requesting party or its privy, will be denied by the Board as late, even if the applicant has consented to the granting of the late-filed request.
Moreover, once the time for opposing the registration of a mark has expired, the Office will not withhold issuance of the registration, or a notice of allowance where appropriate, while applicant negotiates for settlement with a party that failed to timely oppose. This is so even if the applicant itself requests that issuance be withheld.
Potential opposers are reminded that parties may not rely on information obtained by telephone with the Board. 37 C.F.R §2.191 provides in pertinent part: "The action of the Office will be based exclusively on the written record. No attention will be paid to any alleged oral promise, stipulations, or understanding in relation to which there is disagreement or doubt." [ Note 4.] See TBMP §104 (Business to be Conducted in Writing).
NOTES:
1. Trademark Act § 13(a), 15 U.S.C. § 1063(a); 37 C.F.R. § 2.102(c).
2. See In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477, 1478 (Comm’r Pats. 1994) (citing In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (timeliness of extension requests is statutory and cannot be waived). Cf. Yahoo! Inc. v. Loufrani, 70 USPQ2d 1735, 1736 (TTAB 2004) (because requirements of Section 13(a) of the Act for the filing of an opposition are statutory, they cannot be waived by stipulation of the parties, nor can they be waived by the Director on petition)..
3. Cf. PPG Industries, Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1927 (TTAB 2005) ("… when a paper is filed via ESTTA, it must be signed in conformance with Rule 2.193(c)(1)(iii). As a practical matter, ESTTA will allow the filing party to complete the submission process only after the required electronic signature has been entered.").
4. See In re Merck & Co., 24 USPQ2d 1317, 1318 n. 2 (Comm’r 1992).