110.01 In General
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- (g) The acronym ESTTA means the Electronic System for Trademark Trials and Appeals and, as used in this part, includes all related electronic systems required to complete an electronic submission through ESTTA.
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- (r) Eastern Time means Eastern Standard Time or Eastern Daylight Time, as appropriate.
- (s) The term electronic submission as used in this part refers to any submission made through an electronic filing system available on the Office's website, but not through email or facsimile transmission.
37 C.F.R. § 2.126 Form of submissions to the Trademark Trial and Appeal Board.
- (a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.
- (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
- (2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.
- (b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered. A paper submission, including exhibits and depositions, must meet the following requirements:
- (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
- (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
- (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
- (4) A paper submission must not be stapled or bound;
- (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
- (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
- (c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the "Confidential" selection available in ESTTA or, where appropriate, under a separate paper cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.
37 C.F.R. § 2.101(b)(1) An opposition to an application must be filed by the due date set forth in paragraph (c) of this section through ESTTA.
37 C.F.R. § 2.102(a)(1) A request to extend the time for filing an opposition to an application must be filed through ESTTA by the opposition due date set forth in § 2.101(c).
37 C.F.R. § 2.101(b)(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.
37 C.F.R. § 2.102(a)(1) A request to extend the opposition period for 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.
37 C.F.R. § 2.111(c)(1) A petition to cancel a registration must be filed through ESTTA.
37 C.F.R. § 2.190(b) Electronic trademark documents. … Documents that relate to proceedings before the Trademark Trial and Appeal Board must be filed electronically with the Board through ESTTA.
37 C.F.R. § 2.195(a) Electronic submissions. The filing date of an electronic submission is the date the Office receives the submission, based on Eastern Time, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.
ESTTA – the Electronic System for Trademark Trials and Appeals – is the Board’s electronic filing system. ESTTA is a web-based application available on the Internet. No special software (apart from a web browser) need be installed on the user’s computer in order to use ESTTA. Likewise, users need not open an account or obtain a password, and there is no additional fee for use of ESTTA.
The Board requires use of ESTTA for the filing of all submissions in Board proceedings and for filing of extensions of time to oppose. ESTTA permits round-the-clock filing with real-time receipt confirmation, while reducing delay and the possibility of mishandling of submissions in route to or within the USPTO. Many ESTTA filings are processed automatically, with an appropriate Board order issuing within minutes of filing. Use of ESTTA helps filers avoid common (and sometimes fatal) pitfalls in filing, and allows the Board to efficiently and expeditiously process and act upon filings.
Upon completion of a successful filing, a filer using ESTTA will receive both an on-screen and email acknowledgement of receipt from ESTTA with the ESTTA tracking number and the filing information including the official filing date. The filing date is the date on which the complete ESTTA filing (including any required fee) is received in the USPTO. Although an ESTTA filing can be made from anywhere in the world, Eastern Time controls the filing date, not the local date from where the filing was made. [ Note 1.] ESTTA filers should not send hard copies of electronically-filed documents to the Board.
The ESTTA user manual, ESTTA forms, and instructions for their use can be found at https://estta.uspto.gov/. Contextually appropriate help is available throughout ESTTA by clicking on highlighted, hyper-linked terms. These terms usually appear in blue, but may differ depending on your browser settings. Filers should also check "What’s New in ESTTA" for important user guidelines.
It is the responsibility of the party making submissions to the Board using ESTTA to ensure that the submissions have been entered into the trial record. Parties are urged to check not only the ESTTA filing receipts but also TTABVUE, the Board's electronic docket information and file database, to ensure that all documents have been properly transmitted and entered. [ Note 2.]
This section is not intended to provide a comprehensive reference for use of ESTTA, but merely to emphasize ESTTA’s benefits and availability, and to provide some basic facts about its use.
NOTES:
1. 37 C.F.R. § 2.2; 37 C.F.R. § 2.195(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 19296, 19296 (to be codified at 37 C.F.R. pt. 2 (proposed April 4, 2016)); https://estta.uspto.gov (instructions for filing using ESTTA).
2. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1506 n.195 (TTAB 2017); Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1351 (TTAB 2014), appeal dismissed per stipulation, No. 2014-1461 (Fed. Cir. Oct. 10, 2014).
110.01(a) ESTTA is Mandatory for All Filings
Use of ESTTA is required for the filing of all submissions in Board proceedings. [ Note 1.]
Use of ESTTA previously had been mandatory only for the filing of either (1) extensions of time to oppose Madrid Protocol applications, i.e., applications under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), or (2) notices of opposition against Madrid Protocol applications. [ Note 2.] The requirement for use of ESTTA for such filings enables the USPTO to fulfill its obligation to timely notify the International Bureau of the World Intellectual Property Organization of oppositions against requests for extension of protection under the Madrid Protocol. A request for an extension of time to oppose a Madrid Protocol application which is not filed through ESTTA will be denied in all circumstances. [ Note 3.] Similarly, a notice of opposition not filed through ESTTA against such an application will not be instituted under any circumstances. [ Note 4.] For a further discussion of filing notices of opposition against Madrid Protocol applications using ESTTA, see TBMP § 306.01.
In the rare circumstances the rules permit submissions in paper form, the paper submission must be accompanied by a written explanation showing that ESTTA was unavailable due to technical problems, or that extraordinary circumstances are present, and, where required, a Petition to the Director with the requisite petition fee. [ Note 5.] Petitions to file on paper are generally subject to 37 C.F.R. § 2.146, including the requirement for verified facts. [ Note 6.]. 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 7.]
NOTES:
1. See 37 C.F.R. § 2.126(a) (submissions must be made through ESTTA); 37 C.F.R. § 2.101(b) (notices of opposition must be filed through ESTTA); 37 C.F.R. § 2.102(a)(1) (extensions of time to oppose must be filed in ESTTA); 37 C.F.R. § 2.102(a)(2) (extensions of time to oppose Trademark Act § 66(a) applications must be filed through ESTTA); 37 C.F.R. § 2.101(b)(2) (notice of opposition against § 66(a) application must be filed through ESTTA); 37 C.F.R. § 2.111(c)(1) (petition to cancel must be filed through ESTTA). 37 C.F.R . § 2.190(b) (electronic trademark documents).
2. See 37 C.F.R. § 2.126 (Form of Submissions to the Trademark Trial and Appeal Board); 37 C.F.R. § 2.102(a)(2) (extensions of time to oppose Trademark Act § 66(a), 15 U.S.C. § 1141f(a) applications must be filed through ESTTA); 37 C.F.R. § 2.101(b)(2) (notice of opposition against § 66(a) application must be filed through ESTTA). See, e.g., CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011) (opposition to § 66(a) application must be filed via ESTTA); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011) (same); O.C. Seacrets Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1328 n.2 (TTAB 2010) (same).
3. In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019, 2020-21 (TTAB 2005).
4. See In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019, 2020-21 (TTAB 2005).
5. 37 C.F.R. § 2.101(b)(2); 37 C.F.R. § 2.102(a)(2); 37 C.F.R. § 2.111(c)(2)(i); 37 C.F.R. § 2.126(b).
6. 37 C.F.R. § 2.101(b)(2); 37 C.F.R. § 2.102(a)(1); 37 C.F.R. § 2.111(c)(2)(i).
110.01(b) Plan Ahead
ESTTA users are strongly urged to plan ahead. Because unexpected problems can occur, users should keep filing deadlines in mind and allow plenty of time to resolve any issue which may arise. [ Note 1.] The Board will provide general assistance to ESTTA filers, see TBMP § 110.04 (Questions about ESTTA Filing), but cannot guarantee that any problem will be resolved prior to a deadline. As discussed above, ESTTA filing is mandatory. If ESTTA filing is not possible prior to a deadline for any reason, parties should timely submit their filings on paper, using another filing option as appropriate (e.g., certificate of mailing or Priority Mail Express® procedures). See TBMP § 111.02 (Certificate of Mailing), and TBMP § 111.01 (Priority Mail Express® procedure). Any paper filing must be accompanied by a written explanation showing that ESTTA is unavailable due to technical problems, or that extraordinary circumstances are present, and, where required, a Petition to the Director with the requisite petition fee. Petitions to file on paper are generally subject to 37 C.F.R. § 2.146, including the requirement for verified facts. [ Note 2.] 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 3.]
Please Note: An extension of time to oppose, or a notice of opposition involving an application under Trademark Act § 66(a) must be filed through ESTTA, and may not under any circumstances be filed in paper form. [ Note 4.] Users should not anticipate that the Board will extend a deadline because it was not possible to file a submission by ESTTA on the due date.
NOTES:
1. Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1282-83 (TTAB 2008) (ESTTA filer encountered unexpected problem in ESTTA filing; filer transmitted notice of opposition by fax. Held: ESTTA filing not received and fax filing is unacceptable; opposition dismissed as a nullity.).
2. 37 C.F.R. § 2.101(b)(2); 37 C.F.R. § 2.102(a)(1); 37 C.F.R. § 2.111(c)(2)(i).
3. 37 C.F.R. § 2.111(c)(2)(ii).
4. See 37 C.F.R. § 2.102(a)(1) (extension of time to oppose) and 37 C.F.R. § 2.101(b)(3) (notice of opposition). CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011) (any opposition to a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application must be filed through ESTTA); Hunt Control System, Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011) (same); O.C. Seacrets Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1328 n.2 (TTAB 2010) (same).