118.02(b)    Fees for Opposition and Cancellation Proceedings

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.
  • (b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file an opposition addressed to the Trademark Trial and Appeal Board. The opposition need not be verified, but must be signed by the opposer or the opposer’s attorney, as specified in § 11.1 of this chapter, or other authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c) are required for oppositions filed through ESTTA under paragraph (b)(1) or (2) of this section.
    • (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. The opposition must be accompanied by the required fee for each party joined as opposer for each class in the application for which registration is opposed (see § 2.6).
  • (d) An otherwise timely opposition cannot be filed via ESTTA unless the opposition is accompanied by a fee that is sufficient to pay in full for each named party opposer to oppose the registration of a mark in each class specified in the opposition. A paper opposition that is not accompanied by the required fee sufficient to pay in full for each named party opposer for each class in the application for which registration is opposed may not be instituted. If time remains in the opposition period as originally set or as extended by the Board, the potential opposer may resubmit the opposition with the required fee.
  • (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.
  • * * * *

37 C.F.R. § 2.111  Filing petition for cancellation.

  • (a) A cancellation proceeding is commenced by filing in the Office a timely petition for cancellation with the required fee.
  • (b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. The petition for cancellation need not be verified, but must be signed by the petitioner or the petitioner’s attorney, as specified in § 11.1 of this chapter, or other authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c) are required for petitions submitted electronically via ESTTA. The petition for cancellation may be filed at any time in the case of registrations on the Supplemental Register or under the Act of 1920, or registrations under the Act of 1881 or the Act of 1905 which have not been published under section 12(c) of the Act, or on any ground specified in section 14(3) or section 14(5) of the Act, or at any time after the three-year period following the date of registration on the ground specified in section 14(6) of the Act. In all other cases, including nonuse claims not specified in section 14(6), the petition for cancellation and the required fee must be filed within five years from the date of registration of the mark under the Act or from the date of publication under section 12(c) of the Act.
  • (c)
    • (1) A petition to cancel a registration must be filed through ESTTA.
    • (2)
      • (i) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a petition to cancel may be filed in paper form. A paper petition to cancel a registration must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (c). Timeliness of the paper submission, if relevant to a ground asserted in the petition to cancel, will be determined in accordance with §§ 2.195 through 2.198.
      • (ii) For a petition to cancel a registration on the fifth year anniversary of the date of registration of the mark, a petitioner for cancellation who meets the requirements of § 2.147(b) may submit a petition to the Director to accept a timely filed paper petition to cancel.
  • (d) The petition for cancellation must be accompanied by the required fee for each party joined as petitioner for each class in the registration(s) for which cancellation is sought (see § 2.6). A petition cannot be filed via ESTTA unless the petition is accompanied by a fee that is sufficient to pay in full for each named petitioner to seek cancellation of the registration(s) in each class specified in the petition. A petition filed in paper form that is not accompanied by a fee sufficient to pay in full for each named petitioner for each class in the registration(s) for which cancellation is sought may not be instituted.
  • (e) The filing date of a petition for cancellation is the date of electronic receipt in the Office of the petition and required fee. In the rare instances that filing by paper is permitted under these rules, the filing date of a petition for cancellation will be determined in accordance with §§ 2.195 through 2.198.

The filing fee for an opposition or cancellation proceeding must be tendered with the notice of opposition or petition for cancellation. A notice of opposition or petition for cancellation filed without a filing fee will not be accorded a filing date. [ Note 1.]

When a notice of opposition or petition for cancellation is filed using ESTTA, the correct fee will be calculated and payment must be made before the filing will be uploaded to the USPTO for processing. Note that in order for fees to be properly calculated, each opposer or petitioner must be entered separately. [ Note 2.]

If an otherwise timely notice of opposition or petition for cancellation is submitted on paper with less than the full fee due for each party opposer or party petitioner and for each class opposed or sought to be cancelled, the proceeding may not be instituted. [ Note 3.] A paper filing of a notice of opposition or petition to cancel must be accompanied by a Petition to the Director, with required fee, and a showing that ESTTA is unavailable due to technical problems, or extraordinary circumstances are present. [ Note 4.] Petitions to file on paper generally are subject to 37 C.F.R. § 2.146, including the requirement for verified facts. [ Note 5.] However, a Petition to the Director to accept paper submission of a petition to cancel a registration on the fifth year anniversary of the date of registration is subject to the requirements of 37 C.F.R. § 2.147(b), including the requirement for a declaration under 37 C.F.R. § 2.20  or 28 U.S.C. § 1746. [ Note 6.]

Please Note: Effective January 2, 2021, the USPTO revised 37 C.F.R. § 2.114(a)  to provide that a partial refund of the fee for a petition to cancel may be made in cases based solely on abandonment or nonuse where default judgment is entered because there is no appearance by a defendant and no filings are made other than the petition to cancel. [ Note 7.]

For information regarding the fees for filing a notice of appeal, an appeal brief, or a request for an extension of time to file an appeal brief in an ex parte appeal, see TBMP § 1202.04, TBMP § 1203.02(a), TBMP §1302.04, and TBMP §1303.02(d).

NOTES:

 1.   37 C.F.R. § 2.101(d)  and 37 C.F.R. § 2.111(d).

 2.   See Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (multiple opposers not entered separately in ESTTA, resulting in improper fee being calculated and paid; opposition considered to be properly filed by first-named opposer only).

 3.   37 C.F.R. § 2.101(d)  and 37 C.F.R. § 2.111(d).

 4.   37 C.F.R. § 2.101(b)(2)  and 37 C.F.R. § 2.111(c)(2).

 5.   37 C.F.R. § 2.101(b)(2); 37 C.F.R. § 2.111(c)(2)(i).

 6.   37 C.F.R. § 2.111(c)(2)(ii).

 7.   37 C.F.R § 2.114(a)(2). See TRADEMARK FEE ADJUSTMENT, 85 Fed. Reg. 73197, 73210-11 (Nov. 17, 2020), effective January 2, 2021.