203.02 Identifying Information
203.02(a) In General
ESTTA contains the necessary forms for filing extensions of time to oppose. Selecting the correct form will appropriately identify the filing, and once the required fields for identifying the application and potential opposer are completed, the filing can be electronically transmitted to the Office. Any attachments to ESTTA forms should be separately captioned and identified for clarity. An email notification of the Office’s receipt of the transmission will be sent and most extension requests will be automatically processed. Multiple claimants seeking to proceed as co-opposers should use a separate form for each potential opposer. See TBMP § 203.02(b).
In the rare instances where the rules permit an extension request against a Trademark Act §§ 1 or 44 application to be filed on paper, it should bear at its top the heading "IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD," followed by information identifying the application to which the request pertains, namely, the name of the applicant, and the application serial number, filing date, mark, and date of publication in the Official Gazette. [ Note 1.] The request should also bear an appropriate title describing its nature, such as "Request for Extension of Time to Oppose" or "Request for Further Extension of Time to Oppose." For ESTTA users, once the correct form is selected, the filing will be appropriately identified.
NOTES:
1. See In re Merck & Co., 24 USPQ2d 1317, 1318 (Comm’r 1992) (Board’s refusal to institute opposition as untimely was proper where potential opposer had misidentified applicant and serial number in its extension request). Cf. 37 C.F.R. § 2.194(b)(1) ("A letter about a trademark application should identify the serial number, the name of the applicant, and the mark."); Yahoo! Inc. v. Loufrani, 70 USPQ2d 1735, 1736 n.4 (TTAB 2004) (opposition dismissed as nullity where notice of opposition misidentified the application sought to be opposed).
203.02(b) Requirement for Identification of Potential Opposer
A request for an extension of time to oppose must identify the potential opposer with reasonable certainty. [ Note 1.] An extension request filed through ESTTA cannot be electronically transmitted to the Office unless all required fields, including the field for identification of the potential opposer, are completed. If a paper-filed request for extension of time to oppose fails to identify the potential opposer with reasonable certainty, and assuming all other requirements for the paper filing are satisfied, the defect regarding the identity of the potential opposer may be corrected only if the correction can be made prior to the expiration of the time for filing the request, that is, before the expiration of the thirty-day opposition period following publication of the subject mark in the case of a first request, or before the expiration of the previous extension in the case of a request for a further extension. Any requests for extensions of time to oppose in which the potential opposer is not identified with reasonable certainty cannot be remedied after the opposition period, including any extensions, has expired. [ Note 2.]
If a paper-filed request for a further extension of time to oppose does not specifically name the potential opposer, but it is clear from the circumstances that the request is being submitted on behalf of the same potential opposer which obtained an earlier extension, the request may be construed by the Board as identifying the potential opposer with reasonable certainty. However, the better, and safer, practice is to specifically name the potential opposer in each request for an extension of time to oppose.
ESTTA Tip: When filing electronic requests for extensions of time to oppose on behalf of more than one potential opposer, file a separate request for each potential opposer. Do not file a joint request (i.e., on behalf of "ABC, Co. and XYZ Inc."), as this will make it more difficult to include both potential opposers as parties to an opposition, if one is filed. When filing the opposition, both (separate) potential opposers can be easily added as parties to the same opposition proceeding, and all fees will be calculated correctly. [ Note 3.]
NOTES:
2. See In re Spang Industries, Inc., 225 USPQ 888, 888 (Comm’r 1985) (since extension request failed to identify any party except attorney filing request, and since privity does not include attorney/client relationship, subsequent notice of opposition was untimely). Cf. In re Su Wung Chong, 20 USPQ2d 1399, 1400 (Comm’r 1991) (inadvertence is not extraordinary circumstance to waive rule requiring that statement indicating consent or showing extraordinary circumstances for extension over 120 days must be submitted at time extension request is filed, not after the fact); In re Societe Des Produits Nestle S.A., 17 USPQ2d 1093, 1094 (Comm’r 1990) (subsequently obtained consent is not sufficient to allow Board to entertain request for reconsideration, and omission, in itself, is not extraordinary circumstance to waive requirement that consent accompany extension request).
3. Cf. Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (electronically-filed opposition in which opposers were not separately named did not include correct fees; consequently one potential opposer was not considered to be a party); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (Multiple claimants may initiate opposition together and proceed as co-opposers, if opposition is filed within statutory opposition period or during extension of time, and if each of joint opposers submits opposition fee and establishes standing and grounds for opposition.).