301    Types of Board Proceedings

301.01    In General

The Board has jurisdiction over four types of inter partes proceedings, namely, oppositions, cancellations, interferences, and concurrent use proceedings. See TBMP § 102.

An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a registration of a mark on the Principal Register. "Any person who believes that he would be damaged by the registration of a mark" may, upon payment of the prescribed fee, file an opposition thereto, but the opposition may be filed only as a timely response to the publication of the mark, under Trademark Act § 12(a), 15 U.S.C. § 1062(a), in the Official Gazette of the USPTO. [ Note 1.]

A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration of a trademark on the Principal or the Supplemental Register. "Any person who believes that he would be damaged by the registration of a mark" may, upon payment of the prescribed fee, file a petition to cancel thereto, but the petition to cancel may only be filed after the issuance of the registration. [ Note 2.]

An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more registrations which are in conflict), is entitled to registration. [ Note 3.] The proceeding is declared by the Office only on petition to the Director showing extraordinary circumstances therefor, that is, that the party who filed the petition would be unduly prejudiced without an interference. [ Note 4.] See TBMP § 1002.

A concurrent use proceeding is a proceeding in which the Board determines whether one or more applicants is entitled to a concurrent registration, that is, a registration with conditions and limitations, fixed by the Board, ordinarily as to the geographic scope of the applicant’s mark or the goods and/or services on or in connection with which the mark is used. [ Note 5.] See TBMP § 1101.01.

NOTES:

 1.   See Trademark Act § 13, 15 U.S.C. § 1063. See also Trademark Act § 68(a)(2), 15 U.S.C. § 1141h(a)(2)  (an application filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), is subject to opposition under Trademark Act § 13, 15 U.S.C. § 1063).

 2.   See Trademark Act § 14 and Trademark Act § 24, 15 U.S.C. § 1064  and 15 U.S.C. § 1092.

 3.   See Trademark Act § 16, 15 U.S.C. § 1066; Trademark Act § 18, 15 U.S.C. § 1068.

 4.   See Trademark Act § 16, 15 U.S.C. § 1066; 37 C.F.R. § 2.91.

 5.   See Trademark Act § 2(d),15 U.S.C. § 1052(d); Trademark Act § 17,15 U.S.C. § 1067; Trademark Act § 18, 15 U.S.C. § 1068; 37 C.F.R. § 2.42, 37 C.F.R. § 2.73, 37 C.F.R. § 2.99; The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 n.9 (TTAB 1995).

301.02    Mark on Supplemental Register Not Subject to Opposition

15 U.S.C. § 1092 [Trademark Act § 24] Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office.

Although the mark in an application for registration on the Principal Register is published for, and subject to, opposition, the mark in an application for registration on the Supplemental Register is not. [ Note 1.] See also TBMP § 205.

Accordingly, the Board must reject any opposition filed with respect to the mark in an application for registration on the Supplemental Register. ESTTA, does not permit a party to file a notice of opposition against an application for registration on the Supplemental Register. In the rare circumstance that an opposition against such an application is filed in paper form, the opposition papers will not be returned to the person who filed them but any opposition fee submitted will be refunded. The fee for the required petition to the Director to file on paper will not be refunded. The remedy of the would-be opposer lies in the electronic filing of a petition to cancel the registration of the mark, once the registration has issued. [ Note 2.]

NOTES:

 1.   See Trademark Act § 12(a), Trademark Act § 13(a), and Trademark Act § 24, 15 U.S.C. § 1062(a), 15 U.S.C. § 1063(a), and 15 U.S.C. § 1092.

 2.   See Trademark Act § 24, 15 U.S.C. § 1092.

301.03    Mark Filed Under the Madrid Protocol is Subject to Opposition

A request for extension of protection of an international registration to the United States, filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a)  ("the Madrid Protocol"), is examined as an application for registration on the Principal Register. Thus, an application whose filing basis is Trademark Act § 66(a), 15 U.S.C. § 1141f(a), is subject to opposition under Trademark Act § 13, 15 U.S.C. § 1063. [ Note 1.]

NOTES:

 1.   See Trademark Act § 68(a)(2),15 U.S.C. § 1141h(a)(2).