203 Form of Request
203.01 General Considerations
203.01(a) Required Electronic Filings; Paper Filings
37 C.F.R. § 2.102 Extension of time for filing an opposition.
- (a) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file a request with the Trademark Trial and Appeal Board to extend the time for filing an opposition. The request need not be verified, but must be signed by the potential opposer or by the potential opposer’s attorney, as specified in § 11.1 of this chapter, or authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c) are required for electronically filed extension requests.
- (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). In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a request to extend the opposition period for an application based on Section 1 or 44 of the Act may be filed in paper form by the opposition due date set forth in § 2.101(c). 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.
- (2) A paper request to extend the opposition period for an application based on Section 1 or 44 of the Act must be filed by the due date set forth in § 2.101(c) and be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under paragraph (a)(1) of this section. Timeliness of the paper submission will be determined in accordance with §§ 2.195 through 2.198.
- (b) A request to extend the time for filing an opposition must identify the potential opposer with reasonable certainty. Any opposition filed during an extension of time must be in the name of the person to whom the extension was granted, except that an opposition may be accepted if the person in whose name the extension was requested was misidentified through mistake or if the opposition is filed in the name of a person in privity with the person who requested and was granted the extension of time.
- (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.
- (1) A person may file a first request for:
- (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.
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.
A request for an extension of time to oppose must be submitted through ESTTA and must specify the period of extension desired. [ Note 1.] Available forms and instructions for electronic filing can be found at http://estta.uspto.gov.
If ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a request to extend time to oppose an application based on Trademark Act § 1 or 44, 15 U.S.C. § 1051 or 15 U.S.C. § 1126, may be filed in paper form. [ Note 2.] See TBMP § 106.03 and TBMP § 107 for general information about paper filings. The requirements for formatting electronic and paper submissions to the Board are specified in 37 C.F.R. § 2.126(a) and 37 C.F.R. § 2.126(b), respectively.
Under no circumstances may a request to extend the opposition period for a Madrid Protocol application, i.e., an application filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), be filed in paper form. [ Note 3.] The requirement to use 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 filed against applications requesting extension of protection under the Madrid Protocol. A request for an extension of time to oppose a Madrid Protocol application that is not filed through ESTTA will be denied.
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 4.] 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, followed by a request for a sixty-day extension for good cause, if the first request was granted. [ Note 5.] If granted, the potential opposer will have until 120 days from the date of publication within which to oppose. A sixty-day extension of time to oppose is not available as a first extension of time to oppose. [ Note 6.] 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 7.] 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 8.]
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 9.] 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 instead. 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 grant 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. 37 C.F.R. § 2.102(a)(1); 37 C.F.R. § 2.102(c). See also 37 C.F.R §2.126(a) ("Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.").
2. 37 C.F.R. § 2.102(a)(1) and 37 C.F.R §2.102(a)(2).
3. 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).
4. 37 C.F.R §2.102(c)(1)(i) and 37 C.F.R §2.102(c)(2).
5. 37 C.F.R §2.102(c)(1)(i) and 37 C.F.R. § 2.102(c)(2).
6. 37 C.F.R. § 2.102(c)(1)(ii).
203.01(b) Note on Electronic Filing With ESTTA
Electronic filing of extensions of time to oppose using ESTTA is required in all instances. In the rare occasion that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a request to extend the time to oppose an application based on Trademark Act § 1 or 44, 15 U.S.C § 1051 or 15 U.S.C § 1126 may be filed in paper form. [ Note 1.] A potential opposer is encouraged to plan ahead. "System status" for current and planned outages may be checked on the USPTO website. At times, a system may be down for a short period. A potential opposer, if unsuccessful at electronic filing on a first attempt, should try again later in the day before resorting to paper filing. Under no circumstances may a request to extend the opposition period for an application based on Trademark Act § 66(a), 15 U.S.C § 1141f(a), be filed on paper. [ Note 2.]
To assist the user, ESTTA provides prompts to supply and verify all required information. Most extensions of time to oppose filed via ESTTA are automatically processed, providing a nearly instantaneous Board order (with an email notification providing a link to the filing in TTABVUE) granting the requested extension (if appropriate).
ESTTA forms, including a request for extension of time to oppose, and filing instructions can be found at https://estta.uspto.gov. Filers with questions about electronic filing may call (571) 272-8500 or (800) 786-9199 (toll free) (8:30 am – 5:00 pm Eastern Time) for assistance, or send an email to TTABISInfo@uspto.gov. [ Note 3.] For technical questions that arise during filing via ESTTA, the filer may send an email to ESTTA@uspto.gov. Questions of a general nature regarding Board proceedings should be directed to the phone numbers listed above.
See TBMP § 106.03 and TBMP § 110 for general information on ESTTA filing.
NOTES:
1. 37 C.F.R. § 2.102(a)(1) and 37 C.F.R. § 2.102(a)(2).
2. 37 C.F.R. § 2.102(a)(1). See also In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019, 2020-21 (TTAB 2005) (requests for extension of time to oppose a Trademark Act § 66(a) (Madrid Protocol) application must be filed via ESTTA; paper requests for extensions will be denied).
3. When sending an email inquiry, include a description of the problem or question, the ESTTA tracking number (if any), the Board proceeding (or application) number (if any), and a name and telephone number for contact. The Board will respond to email inquiries within two business days. Email should not be used for more urgent inquiries.
203.02 Identifying Information
203.02(a) In General
ESTTA contains the necessary forms for filing extensions of time to oppose. Selecting the correct form will appropriately identify the filing, and once the required fields for identifying the application and potential opposer are completed, the filing can be electronically transmitted to the Office. Any attachments to ESTTA forms should be separately captioned and identified for clarity. An email notification of the Office’s receipt of the transmission will be sent and most extension requests will be automatically processed. Multiple claimants seeking to proceed as co-opposers should use a separate form for each potential opposer. See TBMP §203.02(b)
In the rare instances where the rules permit an extension request against a Trademark Act § 1 or 44 application to be filed on paper, it should bear at its top the heading "IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD," followed by information identifying the application to which the request pertains, namely, the name of the applicant, and the application serial number, filing date, mark, and date of publication in the Official Gazette. [ Note 1.] The request should also bear an appropriate title describing its nature, such as "Request for Extension of Time to Oppose" or "Request for Further Extension of Time to Oppose." For ESTTA users, once the correct form is selected, the filing will be appropriately identified.
NOTES:
1. See In re Merck & Co., 24 USPQ2d 1317, 1318 (Comm’r 1992) (Board’s refusal to institute opposition as untimely was proper where potential opposer had misidentified applicant and serial number in its extension request). Cf. 37 C.F.R. § 2.194(b)(1) ("A letter about a trademark application should identify the serial number, the name of the applicant, and the mark."); Yahoo! Inc. v. Loufrani, 70 USPQ2d 1735, 1736 n.4 (TTAB 2004) (opposition dismissed as nullity where notice of opposition misidentified the application sought to be opposed).
203.02(b) Requirement for Identification of Potential Opposer
A request for an extension of time to oppose must identify the potential opposer with reasonable certainty. [ Note 1.] An extension request filed through ESTTA cannot be electronically transmitted to the Office unless all required fields, including the field for identification of the potential opposer, are completed. If a paper-filed request for extension of time to oppose fails to identify the potential opposer with reasonable certainty, and assuming all other requirements for the paper filing are satisfied, the defect regarding the identity of the potential opposer may be corrected only if the correction can be made prior to the expiration of the time for filing the request, that is, before the expiration of the thirty-day opposition period following publication of the subject mark in the case of a first request, or before the expiration of the previous extension in the case of a request for a further extension. Any requests for extensions of time to oppose in which the potential opposer is not identified with reasonable certainty cannot be remedied after the opposition period, including any extensions, has expired. [ Note 2.]
If a paper-filed request for a further extension of time to oppose does not specifically name the potential opposer, but it is clear from the circumstances that the request is being submitted on behalf of the same potential opposer which obtained an earlier extension, the request may be construed by the Board as identifying the potential opposer with reasonable certainty. However, the better, and safer, practice is to specifically name the potential opposer in each request for an extension of time to oppose.
ESTTA Tip: When filing electronic requests for extensions of time to oppose on behalf of more than one potential opposer, file a separate request for each potential opposer. Do not file a joint request (i.e., on behalf of "ABC, Co. and XYZ Inc."), as this will make it more difficult to include both potential opposers as parties to an opposition, if one is filed. When filing the opposition, both (separate) potential opposers can be easily added as parties to the same opposition proceeding, and all fees will be calculated correctly. [ Note 3.]
NOTES:
2. See In re Spang Industries, Inc., 225 USPQ 888, 888 (Comm’r 1985) (since extension request failed to identify any party except attorney filing request, and since privity does not include attorney/client relationship, subsequent notice of opposition was untimely). Cf. In re Su Wung Chong, 20 USPQ2d 1399, 1400 (Comm’r 1991) (inadvertence is not extraordinary circumstance to waive rule requiring that statement indicating consent or showing extraordinary circumstances for extension over 120 days must be submitted at time extension request is filed, not after the fact); In re Societe Des Produits Nestle S.A., 17 USPQ2d 1093, 1094 (Comm’r 1990) (subsequently obtained consent is not sufficient to allow Board to entertain request for reconsideration, and omission, in itself, is not extraordinary circumstance to waive requirement that consent accompany extension request).
3. Cf. Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (electronically-filed opposition in which opposers were not separately named did not include correct fees; consequently one potential opposer was not considered to be a party); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (Multiple claimants may initiate opposition together and proceed as co-opposers, if opposition is filed within statutory opposition period or during extension of time, and if each of joint opposers submits opposition fee and establishes standing and grounds for opposition).
203.03 Signature
37 C.F.R. § 2.120(a) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file a request with the Trademark Trial and Appeal Board, to extend the time for filing an opposition. The request need not be verified, but must be signed by the potential opposer or by the potential opposer’s attorney, as specified in § 11.1 of this chapter, or authorized representative, as specified in § 11.1 4(b) of this chapter. Electronic signatures pursuant to 2.193(c) are required for electronically filed extension requests.
A request for an extension of time to oppose must be signed either by the potential opposer or by its attorney, as specified in 37 C.F.R. § 11.1 or other authorized representative, as specified in 37 C.F.R. § 11.14(b). [ Note 1.] See also TBMP § 114.06. The required signature information fields include the signature; the name of the person signing; a description of the capacity in which he or she signs (e.g., as the individual who is the potential opposer, if the potential opposer is an individual; as a corporate officer, specifying the particular office held, if the potential opposer is a corporation; as potential opposer’s attorney; etc.); his or her email and business address (to which correspondence relating to the request will be sent); and telephone number. An extension request filed through ESTTA cannot be electronically transmitted to the Office unless all required fields, including the signature field, are completed.
An extension request filed electronically through ESTTA does not require a conventional signature. Instead the party or its representative enters a "symbol" that has been adopted as a signature. The Board will accept any combination of letters, numbers, space and/or punctuation marks as a valid signature if it is placed between two forward slash ("/") symbols. [ Note 2.] See TBMP § 106.02.
In the rare instance where an extension request against a Trademark Act § 1 or 44 application is filed in paper form, the request should bear, under the written signature, the name, in typed or printed form, of the person signing; a description of the capacity in which he or she signs (e.g., as the individual who is the potential opposer, if the potential opposer is an individual; as a corporate officer, specifying the particular office held, if the potential opposer is a corporation; as potential opposer’s attorney; etc.); his or her email and business address (to which correspondence relating to the request will be sent); and telephone number.
If all other requirements for a paper-filed request are met, an unsigned paper-filed request will not be refused consideration if a signed copy is submitted to the Office within the time limit set in the written notification of this defect by the Board. [ Note 3.] TBMP § 106.02.
A potential opposer that has submitted an unsigned paper request should not wait until it has submitted a signed copy of the request (in response to the Board’s written notification of the defect), and the Board has acted on the request, before filing an opposition or a request for a further extension of time to oppose. If the extension request is ultimately granted, the length of the granted extension may be less than that sought in the extension request, and it will run from the expiration of the thirty-day opposition period after publication, in the case of a first request, or from the date of expiration of the previously granted extension, in the case of a subsequent request. If no opposition or request for further extension of time to oppose is filed prior to the expiration of any extension ultimately granted to the potential opposer, the time for opposing will be deemed to have expired, and the application that was the subject of the request will be sent for issuance of a registration or a notice of allowance, as appropriate. See TBMP § 202.01 (Time for Filing Request).
NOTES:
1. 37 C.F.R. § 2.102(a); La Maur, Inc. v. Andis Clipper Co., 181 USPQ 783, 784 (Comm’r 1974) (extension requests signed and filed on behalf of potential opposer by its attorney acceptable).
2. 37 C.F.R. § 2.193(c). See TMEP § 611.01(b) (Requirements for Signature), TMEP § 611.01(c) (Signature of Documents Filed Electronically).
3. 37 C.F.R. § 2.119(e). See also Birlinn Ltd. v. Stewart, 111 USPQ2d 1905 (TTAB 2014) (Board applies opportunity to cure provision in 2.119(e) to improperly signed papers, which defines the time period for cure as "within the time limit set in the notification of this defect by the Office"); 37 C.F.R. § 2.119(e).
203.04 Service
Except for the notice of opposition and petition to cancel, every paper filed in the USPTO in inter partes cases must be served upon the other parties to the proceeding, and proof of such service must be made before the Board will consider the paper. [ Note 1.] Because a request for an extension of time to oppose is filed prior to the commencement of the opposition, it is ex parte, rather than inter partes, in nature. Accordingly, the request need not be served (or include proof of service) upon the applicant. [ Note 2.] Once the Board has acted upon a request for an extension of time to oppose, the Board will send the applicant a copy of the Board’s action thereon. [ Note 3.]
NOTES:
2. La Maur, Inc. v. Andis Clipper Co., 181 USPQ 783, 784 (Comm’r 1974) (request for extension of time is an ex parte matter; requests need not be served on applicant).
3. Trademark Act § 13, 15 U.S.C. § 1063.
203.05 Duplicate Requests
It sometimes happens that duplicate requests for an extension of time to oppose are filed on behalf of the same party by two attorneys from the same firm, or from differing firms, or by an attorney from a firm and in-house counsel. Attorneys should make every effort to avoid the filing of such duplicate requests, which waste the time and resources of the Board and the attorneys, and to promptly notify the Board upon discovery of any such duplicate requests.
Most requests for extension of time filed via ESTTA are automatically processed. Because they are not examined by Board staff, duplicate requests may be granted. Whether filed through ESTTA or on paper, counsel should avoid duplicate filings by checking the application status in TTABVUE prior to filing an extension request.