207 Requirements for Showing of Cause; Extraordinary Circumstances
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.
207.01 In General
The time for filing an opposition will not be extended beyond 180 days from the date of publication. [ Note 1.] No more than three requests to extend the time to oppose may be filed. [ Note 2.] During the initial 30-day period following publicationof the mark, a potential opposer may file a first 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. [ Note 3.] 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 4.] A sixty-day extension if not available as a first extension of time to oppose. [ Note 5.] After one or two granted requests totaling 120 days from the date of publication, see TBMP § 207.02,the potential opposer may request one final extension of time for an additional sixty days, but only with the consent of applicant or a showing of extraordinary circumstances. [ Note 6.]
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 7.] 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:
2. 37 C.F.R. § 2.102(c)(1)(i) - 37 C.F.R. § 2.102(c)(2).
207.02 Extensions Up to 120 Days From the Date of Publication
A first extension of time to oppose for not more than thirty days will be granted upon written request, if the request is otherwise appropriate (e.g., is timely filed by a party who believes it would be damaged by registration, and identifies the potential opposer with reasonable certainty). See TBMP § 202 (Time for Filing Request), TBMP § 206 (Who May File an Extension of Time to Oppose). No showing of cause is required for the first thirty-day extension. [ Note 1.]
Following the first thirty-day extension of time to oppose, the Board may grant a further extension of time for sixty days, provided good cause is shown for the further extension and the request is otherwise appropriate (e.g., is timely filed before the first thirty-day extension expires, and includes a showing of privity, if necessary). [ Note 2.] See TBMP § 202 (Time for Filing Request), TBMP § 206 (Who May File an Extension of Time to Oppose).
Alternatively, a potential opposer may request a ninety-day extension of time in the first request, provided good cause for the extension is shown. [ Note 3.] If an otherwise proper first extension request seeks an extension of ninety days, but does not include a showing of good cause for the time in excess of thirty days, the potential opposer will be granted an extension of only thirty days. [ Note 4.]
See TBMP § 209.02 for information on calculating extension expiration dates.
A showing of good cause for an extension of time to oppose over thirty days must set forth the reasons why additional time is needed for filing an opposition. Circumstances that may constitute good cause include the potential opposer’s need to investigate the claim, the potential opposer’s need to confer with or obtain counsel, applicant’s consent to the extension, settlement negotiations between the parties, the filing of a letter of protest by the potential opposer, an amendment of the subject application, the filing of a petition to the Director from the grant or denial of a previous extension, and civil litigation between the parties. The merits of the potential opposition are not relevant to the issue of whether good cause exists for the requested extension. See TBMP § 215 (Effect of Letter of Protest), TBMP § 212 (Amendment of Application During or After Extension), TBMP § 211.03 (Petition to the Director).
NOTES:
1. See Trademark Act § 13(a), 15 U.S.C. § 1063(a); 37 C.F.R. § 2.102(c)(1)(i).
3. 37 C.F.R. § 2.102(c)(1)(ii).
4. See Lotus Development Corp. v. Narada Productions, Inc., 23 USPQ2d 1310, 1312 (Comm’r 1991) (under previous rule, potential opposer only entitled to extension of 30 days where initial request exceeded thirty days by two days and potential opposer did not assert good cause for additional days).
207.03 Extensions Beyond 120 Days From the Date of Publication
The time for filing an opposition will not be extended beyond 180 days from the date of publication. 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 request, the potential opposer may request one final extension of time for an additional sixty days. [ Note 1.]
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 2.] 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 file an opposition will be granted under any circumstances. [ Note 3.]
The Board will grant this request if the potential opposer submits one of the following: (1) a written consent or stipulation signed by the applicant or its authorized representative, or (2) a request by the potential opposer or its authorized representative stating that the applicant or its authorized representative has consented to the request, or (3) a showing of extraordinary circumstances. [ Note 4.]
Extraordinary circumstances are those which are beyond what is usual or ordinary, for example fire, extreme weather, or death. Settlement negotiations between the parties, the filing of a letter of protest by the potential opposer, the pendency of a post-publication amendment, or civil litigation between the parties do not constitute extraordinary circumstances. [ Note 5.]
Applicant's consent to an extension of time to oppose must be express, though it may be provided orally, and the extension request must state that such consent has been provided. It is not sufficient to indicate in the extension request that the parties are discussing settlement; the request must expressly state that applicant has consented to the extension. [ Note 6.] In the rare circumstances where the rules permit the request to be filed in paper form, the statement of applicant's consent should appear in the body of the request, not merely in the title (e.g. "Consented Request to Extend") of the filing.
ESTTA provides prompts for either of these elements (extraordinary circumstances or applicant’s consent) and a request will not be electronically transmitted to the Office until one of these fields is selected and completed. As a result, extension requests successfully filed using ESTTA will rarely, if ever, be deficient for failure to supply the statement of extraordinary circumstances, or the statement that applicant has consented.
In the case of a permitted paper filing, if one of these elements (i.e., the showing of extraordinary circumstances, or applicant’s written consent, or the statement that applicant has consented) is omitted from an extension request based in whole or in part upon the omitted element, the Board can allow the defect to be corrected only if the correction is made prior to the expiration of the time for filing the request, that is, prior to the expiration of the previous extension. [ Note 7.]
See TBMP § 209.02 for information on calculating extension expiration dates.
NOTES:
5. In re Societe Des Produits Nestle S.A., 17 USPQ2d 1093, 1094 (Comm’r 1990) (mere existence of settlement discussions does not constitute extraordinary circumstances).
6. See In re Su Wung Chong, 20 USPQ2d 1399, 1400 (Comm’r 1991) (inadvertent omission of showing of extraordinary circumstances, or consent, at the time extension request was filed does not constitute reason to accept extension; whether applicant’s silence in response to potential opposer’s inquiries about extension requests amounted to consent was "not the question on petition.").
7. In re Societe Des Produits Nestle S.A., 17 USPQ2d 1093, 1094 (Comm’r 1990) (extraordinary circumstances not shown for extension; subsequently obtained consent insufficient). Cf. In re Spang Industries, Inc. 225 USPQ 888, 888 (Comm’r 1985) (potential opposer not identified with reasonable certainty; defect not curable after time for filing extension expired).