213 Effect of Restoration of Jurisdiction
If the examining attorney wishes to issue a new refusal or make a requirement in an application that is the subject of a request for an extension of time to oppose, the examining attorney must make a request to the Director to restore jurisdiction over the application to the examining attorney for that purpose. [ Note 1.] If the application is the subject of an opposition, the examining attorney’s request for jurisdiction must be directed to the Board. [ Note 2.]
It should be noted that with respect to an application filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), if an opposition has commenced, the examining attorney may not request remand, [ Note 3.], and that before an opposition commences, a request to restore jurisdiction must be directed to the Director, who will take into consideration the time constraints established by treaty regarding notification of the International Bureau of the World Intellectual Property Organization of any refusal. Thus, because an application filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), is time-sensitive, the granting of a request to return such application to the examination process is unlikely. [ Note 4.]
A request for jurisdiction that is granted by the Director during an unexpired 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 previous request. After the Board learns that the examining attorney’s jurisdiction has been restored during the running of an extension of time to oppose, a Board administrative staff member will prepare an order advising potential opposer and applicant.
As appropriate, the order will approve the extension of time (or, if already approved, note that potential opposer has been granted an extension of time to oppose until a specified date); instruct the examining attorney that if the application is subsequently approved, and the mark is not republished, the application remains subject to any current extensions of time to oppose or oppositions which may have been timely filed; and advise potential opposer that the restoration of jurisdiction does not relieve the potential opposer of the responsibility of filing an opposition, or a further request for extension of time to oppose, prior to the expiration of the previous request.
The restoration of jurisdiction (or the filing of a request for jurisdiction) 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 of time to oppose during restoration of jurisdiction to the examining attorney. See TBMP § 209.01.
If, after jurisdiction has been restored, and during the running of an extension of time, the examining attorney approves the application, and the mark is not republished, the Board administrative staff member will issue an order so advising the potential opposer and applicant. The order will also approve the extension of time, if appropriate (or, if already approved, note that potential opposer has been granted an extension of time to oppose until a specified date).
If, after consideration before the examining attorney, the mark is republished, or if registration is ultimately denied, any time remaining in the opposition period, as extended (and any further request for extension) will be moot. No further extension of the original opposition period will be granted. Rather, a potential opposer’s time for opposing will recommence on the date of republication.
If a timely opposition is filed while the question of registrability is still before the examining attorney, the Board will institute the opposition. At the same time, the Board will normally suspend proceedings until the registrability of the mark has been finally determined. If, at the time the notice of opposition is filed, the opposer files a motion to suspend the opposition, citing the restoration of jurisdiction as the reason for suspension, the Board will institute the opposition, grant the motion to suspend, and indicate that the opposition is suspended pending final determination of the registrability of the mark. To ensure suspension under such circumstances, the opposer should concurrently, but in a filing separate from the notice of opposition, move to suspend the opposition.
If the examining attorney subsequently approves the application, and the mark is republished, and if the change reflected in the republication is one that might have an effect upon an opposition which was timely filed, the Board will issue an order notifying opposer and applicant of the republication, and of the reason therefor; explain that the opposition will be determined on the basis of applicant’s correct (or amended) mark, goods or services, disclaimer status, etc.; and allow opposer time to indicate whether it wishes to proceed with the opposition on that basis, or to have the opposition dismissed as a nullity. If opposer chooses to go forward, proceedings in the opposition will be resumed and appropriate dates will be set or reset.
If registration is ultimately denied by the examining attorney, any timely filed opposition will be dismissed as a nullity.
NOTES:
1. See 37 C.F.R. § 2.84(a); TMEP § 1504.01 (Jurisdiction of Examining Attorney), TMEP § 1504.02 (Jurisdiction of Trademark Trial and Appeal Board); In re Hershey, 6 USPQ2d 1470, 1471 n.2 (TTAB 1988) (restoration of jurisdiction to examining attorney by Director is not subject to review by the Board).
2. See 37 C.F.R. § 2.130 (New matter suggested by the trademark examining attorney); TMEP § 1504.02.
3. See TMEP § 1504.05.
4. See TMEP § 1902.02(l).