303.05 Opposition Filed During Extension of Time to Oppose
37 C.F.R. § 2.102(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.
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37 C.F.R. § 2.102(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.
303.05(a) General Rule
An extension of time to oppose is a personal privilege which inures only to the benefit of the party to which it was granted and those in privity with that party. [ Note 1.] For this reason, an opposition filed during an extension of time to oppose ordinarily must be filed in the name of the party to which the extension was granted. [ Note 2.] Cf. TBMP § 206.02. An opposition filed in a different name will be accepted only if the opposition is filed by a person in privity with the person granted the extension of time or if the person that requested the extension was misidentified through mistake. [ Note 3.]
NOTES:
1. See Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) (a party cannot claim the benefit of an extension granted to another, unrelated party).
2. See 37 C.F.R. § 2.102(b); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (fact that two entities share same objection is not a basis for finding privity).
3. See Custom Computer Services, Inc. v. Paychex Properties, Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003) (privity and misidentification by mistake "are two disjunctive conditions under which an opposer may claim the benefit of an extension granted to another named entity").
303.05(b) Opposition Filed by Privy
A party in privity with a potential opposer may step into the potential opposer’s shoes and file a notice of opposition or may join with the potential opposer as a joint opposer. [ Note 1.] Thus, an opposition filed during an extension of time to oppose may be filed by a party other than the party to which the extension was granted, if it is shown to the satisfaction of the Board that the differing party is in privity with the party granted the extension. [ Note 2.] Cf. TBMP § 206.02.
The "showing" of privity should be in the form of a recitation of the facts on which the claim of privity is based, and must be submitted either with the opposition, or during the time allowed by the Board in its letter requesting an explanation of the discrepancy. If the opposition is filed both in the name of the party granted the previous extension and in the name of one or more differing parties, an explanation will be requested as to each differing party, and the opposition will not be accepted as to any differing party that fails to make a satisfactory showing of privity.
Once a timely notice of opposition has been filed, and the time for opposing has expired, the right to pursue the filed case is a right individual to the timely filer. While this right may be transferred to another party, as by an assignment of the mark with the associated goodwill, it may not be shared. [ Note 3.]
For information concerning the meaning of the term "privity," see TBMP § 206.02.
NOTES:
1. See 37 C.F.R. § 2.102(b); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (licensee, as party in privity with opposer, could have joined opposer in filing opposition during extension of time to oppose; however, having failed to join opposer in filing opposition during extension of time to oppose, licensee may not be joined after opposition is filed); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980).
2. See 37 C.F.R. § 2.102(b); Warren Distribution, Inc. v. Royal Purple, LLC, 115 USPQ2d 1667, 1669-70 (TTAB 2015) (individual employee that filed extension request not in privity with employer who filed notice of opposition); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (licensee considered to be in privity with licensor; however, having failed to join opposer in filing opposition during extension of time to oppose, licensee may not be joined after opposition is filed);. Cf. In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (fact that two entities are using marks similar to that for which application has been made and that both have been named defendants in civil actions brought by the owner of the mark in question is not a basis for finding privity);In re Spang Industries, 225 USPQ 888, 888 (Comm’r Pats. 1985) (attorney/client relationship does not invest the attorney with same right or interest as his client).
3. See SDT, Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (opposer’s licensee, having failed to join opposer in filing opposition during extension of time to oppose, cannot be joined after opposition is filed); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (extension of time granted to opposer does not inure to the benefit of unrelated third party, despite its sharing of a common interest with opposer vis-à-vis applicant’s mark). Cf. Leading Jewelers Guild, Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1901 n.1(TTAB 2007) (substitution allowed following assignment); Missouri Silver Pages Directory Publishing Corp. Inc. v. Southwestern Bell Media,Inc., 6 USPQ2d 1028, 1032 (TTAB 1988) (president/sole shareholder is in privity with opposer corporation and may be substituted as "real party in interest" during opposition); Raker Paint Factory v. United Lacquer Manufacturing Corp., 141 USPQ 407, 409 (TTAB 1964) (motion to amend complaint to substitute sole owner of company as real party in interest for opposer company granted); Pyco, Inc. v. Pico Corp., 165 USPQ 221, 222 (TTAB 1969) (substitution of opposer allowed where notice of opposition named non-existing entity that had transferred rights to opposer prior to filing of opposition). Cf. also, Chien Ming Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988) (trademark application was fatally defective because applicant was not the owner of the mark, having transferred it from himself to a corporation between the time that he executed the application and the date it was received in the Office).
303.05(c) Misidentification of Opposer
If the name of the opposer, in an opposition filed during an extension of time to oppose, differs from the name of the party to which the extension was granted, the opposition will not be rejected on that ground if it is shown to the satisfaction of the Board that the party in whose name the extension was requested was "misidentified through mistake." [ Note 1.]
The phrase "misidentified through mistake," as used in 37 C.F.R. § 2.102(b), means a mistake in the form of the opposer’s name or its entity type, not the naming of a different existing legal entity that is not in privity with the party that should have been named. [ Note 2.] See TBMP § 512.04.
The "showing" submitted in support of a claim of misidentification through mistake should be in the form of a recitation of the facts on which the claim of misidentification through mistake is based, and must be submitted either with the opposition or during the time allowed by the Board in its letter requesting an explanation of the discrepancy.
For information concerning motions for substitution of party plaintiff on grounds of misidentification, see TBMP § 512.04.
NOTES:
1. 37 C.F.R. § 2.102(b). See Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993).
2. See Custom Computer Services, Inc. v. Paychex Properties, Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003) (entity named in extensions was not a "different existing legal entity" from entity that filed opposition); Warren Distribution, Inc. v. Royal Purple, LLC, 115 USPQ2d 1667, 1670-71 (TTAB 2015) (individual employee who filed extension request a different legal entity than employer who filed notice of opposition and, thus, cannot be considered identified through mistake); Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) (word processing error resulting in identification of different legal entity was not a "mistake" within the meaning of the rule).
Cf. William & Scott Co. v. Earl’s Restaurants Ltd., 30 USPQ2d 1870, 1872 (TTAB 1994) (motion to substitute party that acquired mark from opposer prior to commencement of proceeding granted where opposition had been mistakenly filed in name of original owner); Missouri Silver Pages Directory Publishing Corp. Inc. v. Southwestern Bell Media,Inc., 6 USPQ2d 1028, 1032 (TTAB 1988) (president/sole shareholder is in privity with opposer corporation and may be substituted as "real party in interest" during opposition).
Cf. also TMEP § 803.03 and TMEP § 1201.02(c); Chien Ming Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988) (trademark application was fatally defective because applicant was not the owner of the mark, having transferred it from himself to a corporation between the time that he executed the application and the date it was received in the Office); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1640 (TTAB 1991) (correction not permitted where joint venture owned the mark but the application was filed by a corporation which was one member of the joint venture); Societe Civile Des Domaines Dourthe Freres v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1209 (TTAB 1988) (foreign manufacturer, not exclusive United States distributor, owns mark in absence of agreement between them providing otherwise); Argo & Co. v. Springer, 189 USPQ 581, 582 (TTAB 1976) (substitution allowed where, after opposition instituted, court determined that attempted incorporation of applicant was legally defective; three individuals who owned mark as tenants in common substituted for corporation initially named as owner of mark).
303.05(d) Misidentification of Applicant or Respondent
If a notice of opposition is filed against a mark where the applicant has been inadvertently misidentified in the application, the opposition will nevertheless be instituted and the real party in interest may be substituted for the named defendant during the opposition proceeding. [ Note 1.] Likewise, where a petition to cancel is filed against a registrant that has been inadvertently misidentified in the registration, the real party in interest may be substituted for the named defendant.
NOTES:
1. See Fed. R. Civ. P. 17(a); 37 C.F.R. § 2.116. See also Argo & Co. v. Springer, 189 USPQ 581, 582 (TTAB 1976) (three individuals who owned mark as tenants in common substituted for corporation initially named as owner of mark where, after opposition instituted, court in related civil proceeding determined that attempted incorporation of applicant was legally defective). Cf. In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB 1991) (application filed by corporation which was not the owner of the mark void ab initio); Societe Civile Des Domaines Dourthe Freres v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1210 (TTAB 1988) (foreign manufacturer, not exclusive United States distributor, owns mark in absence of agreement between them providing otherwise).