202.04 Late Request
A request for an extension of time to oppose must be filed prior to the expiration of the thirty-day period after publication for opposition of the mark which is the subject of the request, in the case of a first request, or prior to the expiration of an extension granted to the requesting party or its privy, in the case of a request for a further extension. [ Note 1.] See TBMP § 206.02 for information regarding further extension requests filed by a party in privity with the person who requested and was granted the extension of time. Because these timeliness requirements are statutory, they cannot be waived by stipulation of the parties, nor can the Director upon petition waive them. [ Note 2.] The ESTTA filing system does not permit a party to file a late request for extension of time to oppose. [ Note 3.] Likewise, later paper submissions will be denied. A first request filed in paper after the expiration of the thirty-day period following publication of the subject mark, or a request for a further extension filed in paper after the expiration of the previous extension granted to the requesting party or its privy, will be denied by the Board as late, even if the applicant has consented to the granting of the late-filed request.
Moreover, once the time for opposing the registration of a mark has expired, the Office will not withhold issuance of the registration, or a notice of allowance where appropriate, while applicant negotiates for settlement with a party that failed to timely oppose. This is so even if the applicant itself requests that issuance be withheld.
Potential opposers are reminded that parties may not rely on information obtained by telephone with the Board. 37 C.F.R. § 2.191 provides in pertinent part: "The action of the Office will be based exclusively on the written record. No attention will be paid to any alleged oral promise, stipulations, or understanding in relation to which there is disagreement or doubt." [ Note 4.] See TBMP § 104 (Business to be Conducted in Writing).
NOTES:
1. Trademark Act § 13(a), 15 U.S.C. § 1063(a); 37 C.F.R. § 2.102(c). See, e.g., Renaissance Rialto Inc. v. Ky Boyd, 107 USPQ2d 1083, 1084 (TTAB 2013) (whether an opposition was timely filed is "an issue of jurisdictional significance"; untimely filed opposition dismissed without prejudice to file a cancellation for lack of jurisdiction).
2. See In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477, 1478 (Comm’r Pats. 1994) (citing In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (timeliness of extension requests is statutory and cannot be waived)). Cf. Yahoo! Inc. v. Loufrani, 70 USPQ2d 1735, 1736 (TTAB 2004) (because requirements of Section 13(a) of the Act for the filing of an opposition are statutory, they cannot be waived by stipulation of the parties, nor can they be waived by the Director on petition).
3. Cf. PPG Industries, Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1927 (TTAB 2005) ("… when a paper is filed via ESTTA, it must be signed in conformance with Rule 2.193(c)(1)(iii). As a practical matter, ESTTA will allow the filing party to complete the submission process only after the required electronic signature has been entered.").
4. See In re Merck & Co., 24 USPQ2d 1317, 1318 n.2 (Comm’r 1992).