206 Who May File an Extension of Time to Oppose
37 C.F.R. § 2.102 Extension of time for filing an opposition.
- (a) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file a request with the Trademark Trial and Appeal Board to extend the time for filing an opposition. …
- (b) A request to extend the time for filing an opposition must identify the potential opposer with reasonable certainty. Any opposition filed during an extension of time must be in the name of the person to whom the extension was granted, except that an opposition may be accepted if the person in whose name the extension was requested was misidentified through mistake or if the opposition is filed in the name of a person in privity with the person who requested and was granted the extension of time.
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.").
206.02 Request for Further Extension Filed by Privy
A request for a further extension, or an opposition, filed by a different party will not be rejected on that ground if it is shown to the satisfaction of the Board that the different party is in privity with the party granted the previous extension. [ Note 1.] The "showing" should be in the form of a recitation of the facts upon which the claim of privity is based. The showing must be submitted with the request or opposition. ESTTA will prompt the filer to provide an explanation. In the rare instance that the rules permit the filing to be made in paper form, the Board will issue an order requesting an explanation of the discrepancy. If the request for a further extension, or the opposition, is filed both in the name of the party granted the previous extension and in the name of one or more different parties, an explanation will be requested as to each different party, and the request will not be granted, or the opposition accepted, as to any different party which fails to make a satisfactory showing of privity.
In the field of trademarks, the concept of privity generally includes, inter alia, the relationship of successive ownership of a mark (e.g., assignor, assignee) and the relationship of "related companies" within the meaning of Trademark Act § 5 and Trademark Act § 45, 15 U.S.C. § 1055 and 15 U.S.C. § 1127. [ Note 2.] It does not, however, include the attorney/client relationship. [ Note 3.]
If, at the time when a first request for an extension of time to oppose is being prepared, it is not clear which of two or more entities will ultimately be the opposer(s), the better practice is to name each of them, in that and any subsequent extension request, as a potential opposer, thereby avoiding any need for a showing of privity when an opposition or subsequent extension request is later filed by one or more of them.
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 4.]
NOTES:
1. 37 C.F.R. § 2.102(b); In re Spang Industries, Inc., 225 USPQ 888, 888 (Comm’r 1985) ("parties in privity must have the same right or interest"); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (licensee, as party in privity with opposer, could have joined opposer in filing opposition during extension of time to oppose); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (two unrelated entities that merely share same objection to registration are not in privity).
2. See International Nutrition Co. v. Horphag Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492, 1495 (Fed. Cir. 2000) (discussion of various ‘privity’ relationships); Warren Distribution, Inc. v. Royal Purple, LLC, 115 USPQ2d 1667, 1670-71 (TTAB 2015) (notice of opposition untimely where opposer was not in privity with employee who filed extension request in individual name); Renaissance Rialto Inc. v. Boyd, 107 USPQ2d 1083, 1086-87 (TTAB 2013) (notice of opposition untimely where opposer, as purported assignee, could not succeed to any proprietary interest in the mark because transferor had no rights to transfer; case dismissed for lack of jurisdiction); Rolex Watch U.S.A., Inc. v. Madison Watch Co., Inc., 211 USPQ 352, 358 (TTAB 1981) (regarding right of owner, or one in privity with owner, to maintain opposition or cancellation based on Trademark Act § 2(d)); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (two unrelated entities that merely share same objection to registration are not in privity despite having both been named as defendants in civil actions brought by owner of mark). Cf. John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1946-47 (TTAB 2010) (res judicata; privity with parties to previous action); Argo & Co. v. Carpetsheen Manufacturing., Inc., 187 USPQ 366, 367 (TTAB 1975) (motion to suspend granted in view of privity of applicant with parties in civil action); F. Jacobson & Sons, Inc. v. Excelled Sheepskin & Leather Coat Co., 140 USPQ 281, 282 (Comm’r 1963) (parent in privity). But see Tokaido v. Honda Associates Inc., 179 USPQ 861, 862 (TTAB 1973) (respondent’s motion to suspend for civil action between respondent and third party denied where petitioner as nonexclusive licensee of third party was not in privity with third party).
3. In re Spang Industries, Inc., 225 USPQ 888, 888 (Comm’r 1985) ("An attorney/client relationship does not invest the attorney with the same right or interest as his client ....").
4. 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; one potential opposer was accordingly not considered to be a party).
206.03 Misidentification of Potential Opposer
A request for a further extension, or an opposition, filed in a different name will not be rejected on that ground if it is shown to the satisfaction of the Board that the party in whose name the extension was requested was misidentified through mistake. [ Note 1.] The phrase "misidentified through mistake," as used in 37 C.F.R. § 2.102(b), means a mistake in the form of the potential opposer’s name or its entity type, not the naming of a different existing legal entity that is not in privity with the party that should have been named. [ Note 2.]
The "showing" submitted in support of a claim of misidentification through mistake should be in the form of a recitation of the facts upon which the claim of misidentification through mistake is based. The showing must be submitted with the request or opposition. ESTTA will prompt the filer to provide an explanation. In the rare instance that the rules permit the filing to be made in paper form, the Board will issue an order requesting an explanation of the discrepancy.
NOTES:
1. See 37 C.F.R. § 2.102(b); Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993).
2. Custom Computer Services, Inc. v. Paychex Properties, Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003) (entity named in extensions was not a "different existing legal entity" from entity that filed opposition); Warren Distribution, Inc. v. Royal Purple, LLC, 115 USPQ2d 1667, 1670-71 (TTAB 2015) (no misidentification through mistake between employee who filed extension request as individual and employer who filed notice of opposition); Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) (word processing error resulting in identification of different legal entity was not a "mistake" within the meaning of the rule); TMEP § 803.06 (Applicant May Not be Changed).
Cf. Arbrook, Inc. v. La Citrique Belge, Naamloze Vennootschap, 184 USPQ 505, 506 (TTAB 1974) (motion to substitute granted where opposition was mistakenly filed in name of original owner and original owner assigned mark to opposer nunc pro tunc); Davidson v. Instantype, Inc., 165 USPQ 269, 271 (TTAB 1970) (leave to amend to substitute proper party granted where opposition was filed in name of the individual rather than in the name of the corporation); Pyco, Inc. v. Pico Corp., 165 USPQ 221, 222 (TTAB 1969) (where succession occurred prior to filing of opposition, erroneous identification of opposer as a partner in a firm which no longer existed was not fatal); Raker Paint Factory v. United Lacquer Manufacturing Corp., 141 USPQ 407, 409 (TTAB 1964) (sole owner substituted for partnership where original plaintiff identified as partnership composed of that individual, since originally named plaintiff was not actually in existence when opposition was filed and even if it were, as a partner, he is a successor to the partnership).
Cf. also In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB 1991) (correction not permitted where joint venture owned the mark but the application was filed by a corporation which was one member of the joint venture); In re Atlanta Blue Print Co., 19 USPQ2d 1078, 1079 (Comm’r 1990) (permitted to amend name of registrant in Trademark Act §§ 8 and 15, 15 U.S.C. §§ 1058 and 1065, declaration where trade name was inadvertently substituted for corporate name); In re Techsonic Industries, Inc., 216 USPQ 619, 620 (TTAB 1982) (allowed to correct application where applicant was identified by only a portion of its earlier used name and earlier name had already been supplanted by new name at time application was filed, but at all times was one single entity); Argo & Co. v. Springer, 198 USPQ 626, 634 (TTAB 1978) (Board granted applicant’s motion to change its name from corporation which was defectively incorporated to individuals who were true owners of mark at time of filing); In re Eucryl, Ltd., 193 USPQ 377, 378 (TTAB 1976) (exclusive U.S. distributor is owner only if it has agreement with manufacturer providing for right to apply; since distributor had no right to apply, despite its being a sister company and thus related to manufacturer, subsequent assignment to manufacturer did not cure defect); Argo & Co. v. Springer, 189 USPQ 581, 582 (TTAB 1976) (defendant can be substituted when originally named party was not in existence at time of filing complaint); U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc., 183 USPQ 613, 614 (Comm’r 1974) (deletion of "company" permissible).