306.01    In General

15 U.S.C. § 1062(a) [Section 12(a) of the Trademark Act] Upon the filing of an application for registration and payment of the prescribed fee, the Director shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made and, if on such examination it shall appear that the applicant is entitled to registration, or would be entitled to registration upon the acceptance of the statement of use required by section 1051(d) of this title, the Director shall cause the mark to be published in the Official Gazette of the Patent and Trademark Office....

15 U.S.C. § 1063(a)  [Section 13(a) of the Trademark Act] 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... .

37 C.F.R. § 2.101 Filing an opposition.

  • (a) An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee.

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  • (b)
    • (1) An opposition to an application must be filed by the due date set forth in paragraph (c) of this section through ESTTA.
    • (2) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an opposition against an application based on Section 1 or 44 of the Act may be filed in paper form. A paper opposition to an application based on Section 1 or 44 of the Act must be filed by the due date set forth in paragraph (c) of this section and be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph. Timeliness of the paper submission will be determined in accordance with §§ 2.195 through 2.198.
    • (3) An opposition to 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.
  • (c) The opposition must be filed within thirty days after publication (§2.80) of the application being opposed or within an extension of time (§2.102) for filing an opposition.

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  • (e) The filing date of an opposition is the date of electronic receipt in the Office of the notice of opposition, and required fee. In the rare instances that filing by paper is permitted under these rules, the filing date will be determined in accordance with §§ 2.195 through 2.198.

An opposition to the registration of a mark on the Principal Register must be filed prior to the expiration of the thirty-day period after publication of the mark in the Official Gazette for opposition, or within an extension of time to oppose granted to the opposer or its privy. [ Note 1.] See TBMP § 303.

An opposition to an application based on Trademark Act § 1 or Trademark Act § 44, 15 U.S.C. § 1051  or 15 U.S.C. § 1126   must be filed electronically via ESTTA. [ Note 2.] In the rare circumstance that an opposition is filed on paper, accompanied by the Petition to the Director and the required fee, the certificate of mailing by first-class mail procedure described in 37 C.F.R. § 2.197  and the Priority Mail Express® procedure described in 37 C.F.R. § 2.198  are both available. Please note: The institution of a timely paper-filed opposition will occur only if the Petition to the Director is granted and the opposition does not have any other defects. See TBMP § 309.04. The certificate of facsimile transmission procedure, described in 37 C.F.R. § 2.197, is not available. [ Note 3.] See TBMP § 111.02.

An opposition to an application based on Trademark Act § 66(a), 15 U.S.C. § 1141f(a)  must be filed electronically via ESTTA and may not be filed on paper under any circumstances. [ Note 4.] See TBMP § 203.01.

The filing date of an opposition is the date of electronic receipt in the Office of the opposition and the required fee. [ Note 5.] In the rare instance that a paper filing is permitted, the filing date will be determined in accordance with 37 C.F.R. § 2.195, 37 C.F.R. § 2.196, and 37 C.F.R. § 2.197  unless the notice is filed in accordance with 37 C.F.R. § 2.198  (Filing of correspondence by Priority Mail Express®). [ Note 6.] If the notice is filed in accordance with 37 C.F.R. § 2.198, the filing date of an opposition will be the date of deposit with the United States Postal Service ("USPS"), i.e., the date shown by the "date in" date on the Priority Mail Express® label or other official USPS notation, unless the "date in" date cannot be determined, in which case the date the notice is received in the Office is considered the filing date of the opposition. [ Note 7.]

After the close of the time period for filing an opposition, including any extension of time for filing an opposition, an opposition may not be amended to add to the goods or services opposed or to add a joint opposer. [ Note 8.] Nor may an opposition, once instituted, be amended to correct a misidentified serial number associated with the application sought to be opposed. [ Note 9.] The Board may, however, be able to correct serial number misidentification errors that are brought to its attention by the opposer, in the rare instances that the opposition has not yet been instituted and time remains in the opposition period. In such a circumstance, a would-be opposer’s remedy is to seek to cancel the mark once the application has matured to registration by filing a petition to cancel in ESTTA, or (if time remains in the opposition period) to file a new opposition through ESTTA, including payment of the filing fee therefor, which correctly identifies the application sought to be opposed. If an opposition is instituted against an incorrect serial number, and the mistake cannot be corrected, the Board will not refund the opposition fee.

Parties using the ESTTA filing system will not face late opposition and other timing errors. The ESTTA system will not permit a would-be opposer to file an opposition against an application that has not yet been published or that has been abandoned, or where the statutory time period for filing an opposition has passed. The ESTTA system also prompts the would-be opposer, once the user identifies the serial number of the application sought to be opposed, to verify that it has correctly identified the serial number associated with the application. See TBMP § 306.04. In addition, as long as the ESTTA filing process is completed, a potential opposer is assured that its filing will be accorded a valid filing date. [ Note 10.]

For information on opposition filing fees, see TBMP § 308. For information on how to file an opposition, see TBMP § 309. For information on service of the notice of opposition, see TBMP § 309.02(c).

For information concerning the effect of such matters as restoration of jurisdiction, republication, amendment, letter of protest, petition to the Director, abandonment, or the inadvertent issuance of a registration, on the filing of an opposition or a request to extend time to oppose, see generally, TBMP Chapter 200.

NOTES:

 1.   Trademark Act § 13(a), 15 U.S.C. § 1063(a), and 37 C.F.R. § 2.102(b)  and 37 C.F.R. § 2.102(c); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994).

 2.   See 37 C.F.R. § 2.101(b)(1).

 3.   See 37 C.F.R. § 2.195(d)(3), 37 C.F.R. § 2.197(a)  and 37 C.F.R. § 2.198(a). See also Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008) (opposition filed by facsimile not entitled to a filing date or improperly filed).

 4.   37 C.F.R. § 2.101(b)(3). Cf. In re Börlind Gesellschaft für Kosmetische Erzeugnisse GmbH, 73 USPQ2d 2019, 2020 (TTAB 2005) (former 37 C.F.R. § 2.102(a)(2) (now 37 C.F.R. § 2.102(a)(1)) requires ESTTA filing of extensions of time to oppose Trademark Act § 66(a) applications).

 5.   See 37 C.F.R. § 2.101(e).

 6.   37 C.F.R. § 2.101(e). See DFC Expo LLC v. Coyle, 121 USPQ2d 1903 (TTAB 2017) (among the deficiencies, filing, received after the deadline, was not accompanied a certificate of mailing); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008) (untimely opposition dismissed as a nullity).

 7.   See 37 C.F.R. § 2.198(a)(2).

 8.   See 37 C.F.R. § 2.107(a); Drive Trademark Holdings LP v. Inofin and Mark Walsh, 83 USPQ2d 1433, 1436 (TTAB 2007).

 9.   See Yahoo! Inc. v. Loufrani, 70 USPQ2d 1735, 1736 (TTAB 2004) (opposition listing the incorrect serial number of the application dismissed as a nullity). Cf. Quality S. Manufacturing Inc. v. Tork Lift Central Welding of Kent Inc., 60 USPQ2d 1703, 1704 (Comm’r 2000) (Board directed to terminate opposition that misidentified serial number associated with application; registration will not be cancelled); and In re Merck & Co. Inc., 24 USPQ2d 1317, 1318 (Comm’r 1992) (application misidentified in request for extension of time).

 10.   37 C.F.R. § 2.101(e); Chocoladefabriken Lindt & Sprungli AG v. Flores, 91 USPQ2d 1698, 1699 n.3 (TTAB 2009) ("Of course, a potential opposer must complete the ESTTA filing process to be accorded a valid filing date"), citingVibe Records, Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1282 (TTAB 2008) (the official filing date of an ESTTA filing is the date time-stamped when the ESTTA filing and required fee are received on the USPTO server).