206.01 General Rule
Any person, whether natural or juristic who believes that he, she, or it would be damaged by the registration of a mark upon the Principal Register may, upon payment of the prescribed fee, file an opposition in the Office, stating the grounds therefor, within 30 days after the publication of the mark in the Official Gazette for purposes of opposition. [ Note 1.] See also TBMP § 303.02.
Similarly, any person, whether natural or juristic, who believes that he, she, or it would be damaged by the registration of a mark upon the Principal Register may file a request to extend the time for filing an opposition. [ Note 2.] See TBMP § 203. A request for an extension of time to oppose must identify the potential opposer with reasonable certainty. [ Note 3.] See TBMP § 203.02(b).
The potential opposer’s belief in its prospective damage arising from registration (i.e., its standing, now referred to as an entitlement to bring a statutory cause of action, see TBMP § 309.03(b)) need not be explicitly stated in an extension request, and is rarely an issue. Nonetheless, a request for extension of time to oppose may not be filed for improper purposes, such as harassment or delay. Although the Board may question a potential opposer’s entitlement to bring a statutory cause of action in appropriate cases, either upon motion or sua sponte, the question will rarely be before the Board because, most of the time, an order automatically granting the requested extension is issued by ESTTA. Moreover, because extensions are limited in time, and potential opposers are not required to state potential grounds for an opposition, it will almost always be more appropriate to defer the issue of entitlement to bring a statutory cause of action until an opposition (if any) is filed, setting out the grounds for the opposition and the opposer’s belief in damage. See, e.g., TBMP § 503 (Motion to Dismiss for Failure to State a Claim).
An extension of time to oppose is a personal privilege which inures only to the benefit of the party to which it was granted and those in privity with that party. [ Note 4.] For this reason, a request for a further extension of time to oppose, or an opposition filed during an extension of time, ordinarily must be filed in the name of the party to which the previous extension was granted. [ Note 5.] TBMP § 206.02 (Request by Privy). A request for a further extension, or an opposition, filed in a different name will be accepted if a person in privity with the person granted the previous extension files it, or if the person that requested the extension was misidentified through mistake. [ Note 6.]
NOTES:
1. Trademark Act § 13(a), 15 U.S.C. § 1063(a); 37 C.F.R. § 2.101.
2. Trademark Act § 13(a), 15 U.S.C. § 1063(a); 37 C.F.R. § 2.102.
4. See 37 C.F.R. §2.102(b); Renaissance Rialto Inc. v. Ky Boyd, 107 USPQ2d 1083, 1087 (TTAB 2013) (acquisition of another's right to oppose, independent of a transfer of rights to a trademark and its associated goodwill, is an insufficient basis upon which to claim the benefit of the transferor's personal privilege in an extension of time to oppose an application; opposition dismissed for lack of jurisdiction); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) ("[A]n extension of time to oppose inures to the benefit of the potential opposer and its privies, so that a party in privity with a potential opposer may step into the potential opposer's shoes and file a notice of opposition or may join with the potential opposer as a joint opposer."; "Typically, the right to go forward with an opposition may be transferred when the opposer, or its pleaded mark and the goodwill associated therewith, has been acquired by another party."); Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) ("An extension of time to oppose is a personal privilege, inuring only to the benefit of the party to which it was granted or a party shown to be in privity therewith. A party cannot claim the benefit of an extension granted to another (unrelated) party."); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (unrelated entities).
5. Renaissance Rialto Inc. v. Boyd, 107 USPQ2d 1083, 1087 (TTAB 2013) (acquisition of another’s right to oppose, independent of a transfer of rights to a trademark and its associated goodwill, is an insufficient basis upon which to claim the benefit of the transferor’s personal privilege in an extension of time to oppose); Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) ("A party cannot claim the benefit of an extension granted to another (unrelated) party.").
6. See Custom Computer Services, Inc. v. Paychex Properties, Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003) (privity and misidentification by mistake "are two disjunctive conditions under which an opposer may claim the benefit of an extension granted to another named entity"); Warren Distribution, Inc. v. Royal Purple, LLC, 115 USPQ2d 1667, 1669-70 (TTAB 2015) (company that filed notice of opposition not in privity with individual who filed extension request in her own name; and such individual was not "misidentified" as entity seeking extension "by mistake.").