211 Relief From Action of Board
211.01 Request for Reconsideration
If an applicant or potential opposer is dissatisfied with an order of the Board on a request for an extension of time to oppose, it may file a request for reconsideration of the action, stating the reasons. The request should be filed promptly after the filing party learns of or receives the Board’s order, whichever is first.
A request for reconsideration of a Board action relating to a request for an extension of time to oppose is examined by one of the Board’s administrative staff members, who will prepare an order granting or denying the request. A copy of the order is entered in the record of the subject application, sent to the applicant, and sent to the potential opposer.
There is no requirement that a request for reconsideration be served upon the non-filing party. If there is no indication that service has been made, the Board will send the non-filing party a copy of the request, usually in the nature of a link to the TTABVUE database, together with that party’s copy of the Board’s order granting or denying the request.
The filing of a request for reconsideration of the denial, or the granting, of a request for an extension of time to oppose does not relieve the potential opposer of the responsibility of filing an opposition, or a request for a further extension of time to oppose, before the expiration of the relevant extension. [ Note 1.] The Board will not suspend the time for filing an opposition or a subsequent extension of time pending consideration of a request for reconsideration. See TBMP § 209.01.
An ESTTA form for electronically filing a request for reconsideration is now available. Consequently, the filing must be made through ESTTA.
NOTES:
1. Cf. 37 C.F.R. § 2.89(g) ("Failure to notify the applicant of the grant or denial of the request prior to the expiration of the existing period or requested extension does not relieve the applicant of the responsibility of timely filing a statement of use under § 2.88.").
211.02 Relief after Institution of Opposition
If an applicant is dissatisfied with an order of the Board on a request for an extension of time to oppose and the opposition has been filed and instituted, the applicant may raise the issue by means of a motion to dismiss the opposition for lack of jurisdiction. [ Note 1.]
NOTES:
1. Central Manufacturing Inc. v. Third Millennium Tech. Inc., 61 USPQ2d 1210, 1215 (TTAB 2001) (motion to dismiss granted where it was found that opposer’s allegations of consent and good cause for extension request were untrue); Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1075 n.2 (TTAB 1993) (applicant may question propriety of extensions of time in a motion to dismiss).
211.03 Petition to the Director
If an applicant or potential opposer is dissatisfied with an order of the Board on a request for an extension of time to oppose, it may file a petition to the Director for review of the order in question. [ Note 1.]
The petition to the Director must include a statement of the facts relevant to the petition, the points to be reviewed, the action or relief requested, and the requisite fee, as specified in 37 C.F.R. § 2.6. Any brief in support of the petition must be embodied in or accompany the petition. If facts are to be proved, the proof must be in the form of verified statements which, with any exhibits thereto, must accompany the petition. [ Note 2.]
A petition from the grant or denial of a request for an extension of time to oppose must be: filed not later than 15 days after the issue date of the grant or denial of the request; served on the attorney, if any, or on the applicant; and served on the attorney, if any, or on the opposer. Proof of service of the petition must be made as provided in 37 C.F.R. § 2.119 . [ Note 3.] See TBMP § 113.03 (Elements of Certificate), and TBMP § 113.04 (Manner of Service). The potential opposer or the applicant, as the case may be, may file a response not later than 15 days after the date of service of the petition. A copy of the response must be served upon the petitioner, with proof of service as provided by 37 C.F.R. § 2.119. No further document relating to the petition may be filed. [ Note 4.]
The filing of a petition by the potential opposer from the denial, or by the applicant from the granting, of a request for an extension of time to oppose, does not relieve the potential opposer of the responsibility of filing an opposition, or a request for a further extension of time to oppose, prior to the expiration of the extension which is the subject of the petition. [ Note 5.] The filing of a petition will constitute good cause for extensions of time to oppose aggregating up to 120 days from the date of publication of the mark, but will not constitute extraordinary circumstances justifying an extension of time beyond 120 days from publication. The Board will not suspend the time for filing an opposition or subsequent extension pending consideration of a petition to the Director. See TBMP § 209.01.
If the petition is resolved unfavorably to opposer during the running of an extension of time, any opposition or request for further extension of time to oppose filed during or after the extension period in question will be rejected as untimely.
If a potential opposer files a timely opposition during the pendency of its petition to the Director, the Board will institute the opposition. At the same time, the Board will normally suspend the opposition pending resolution of the petition. If, along with the notice of opposition, the opposer files a motion to suspend the opposition, citing the pending petition as the reason for suspension, the Board will institute the opposition, grant the motion to suspend, and state that the opposition is suspended pending resolution of the petition to the Director. A copy of the Board’s order will be sent to both parties.
If the decision on the petition is ultimately unfavorable to opposer, the opposition will be dismissed.
NOTES:
1. 37 C.F.R. § 2.146 (Petitions to the Director). See TMEP § 1704 (Petitionable Subject Matter).
5. See 37 C.F.R. § 2.146(g); In re Docrite Inc., 40 USPQ2d 1636, 1637 n.1 (Comm’r 1996) (citing 37 C.F.R. § 2.146(g) and stating that filing petition to review denial of request to extend time to oppose does not stay time to file opposition or further extensions of time to oppose).