302 Commencement of Proceeding
37 C.F.R. § 2.101(a) An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee.
37 C.F.R. § 2.111(a) A cancellation proceeding is commenced by filing in the Office a timely petition for cancellation with the required fee.
37 C.F.R. § 2.116(b) The opposer in an opposition proceeding or the petitioner in a cancellation proceeding shall be in the position of plaintiff, and the applicant in an opposition proceeding or the respondent in a cancellation proceeding shall be in the position of defendant. A party that is a junior party in an interference proceeding or in a concurrent use registration proceeding shall be in the position of plaintiff against every party that is senior, and the party that is a senior party in an interference proceeding or in a concurrent use registration proceeding shall be a defendant against every party that is junior.
37 C.F.R. § 2.116(c) The notice of opposition or the petition for cancellation and the answer correspond to the complaint and answer in a court proceeding.
An opposition proceeding is commenced by the timely filing of a notice of opposition, together with the required fee, in the USPTO. [ Note 1.]
Similarly, a cancellation proceeding is commenced by the timely filing of a petition for cancellation, together with the required fee, in the USPTO. [ Note 2.]
The notice of opposition, or the petition for cancellation, and the answer thereto correspond to the complaint and answer in a court proceeding. [ Note 3.] The opposer in an opposition proceeding, or the petitioner in a cancellation proceeding, is in the position of plaintiff, and the applicant in an opposition proceeding, or the respondent in a cancellation proceeding, is in the position of defendant. [ Note 4.]
An interference proceeding commences when the Board mails a notice of interference to each of the parties to the proceeding. For further information concerning interference proceedings, see TBMP Chapter 1000.
A concurrent use proceeding commences when the Board mails a notice of the proceeding to each of the parties thereto, as described in 37 C.F.R. § 2.99(c) and 37 C.F.R. § 2.99(d)(1). For further information concerning concurrent use proceedings, see TBMP Chapter 1100.
Electronic filing via ESTTA is required for the filing of a notice of opposition or a petition for cancellation. [ Note 5.]
NOTES:
1. 37 C.F.R. § 2.101(a). See Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988) ("An opposition proceeding is initiated by a simple statement, comparable to the filing of a complaint"); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008) (untimely opposition dismissed as a nullity). Cf. Fed. R. Civ. P. 3.
4. 37 C.F.R. § 2.116(b). See Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988).
5. 37 C.F.R. § 2.101(b)(1); 37 C.F.R. § 2.101(b)(3); 37 C.F.R. § 2.111(c)(1).
302.01 Mandatory Electronic Filing
37 C.F.R § 2.101 Filing an opposition.
- (b)(1) An opposition to an application must be filed by the due date set forth in paragraph (c) of this section through ESTTA.
- (2) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an opposition against an application based on Section 1 or 44 of the Act may be filed in paper form. A paper opposition to an application based on Section 1 or 44 of the Act must be filed by the due date set forth in paragraph (c) of this section and be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph. Timeliness of the paper submission will be determined in accordance with §§ 2.195 through 2.198.
- (3) An opposition to an application based on Section 66(a) of the Act must be filed through ESTTA and may not under any circumstances be filed in paper form.
37 C.F.R. § 2.106 Answer.
- (b)
- (1) An answer must be filed through ESTTA. In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an answer may be filed in paper form. An answer filed in paper form must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (b).
37 C.F.R. § 2.111 Filing petition for cancellation.
- (c)
- (1) A petition to cancel a registration must be filed through ESTTA.
- (2)(i) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a petition to cancel may be filed in paper form. A paper petition to cancel a registration must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (c). Timeliness of the paper submission, if relevant to a ground asserted in the petition to cancel, will be determined in accordance with §§ 2.195 through 2.198.
37 C.F.R. § 2.114 Answer.
- (b)
- (1) An answer must be filed through ESTTA. In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an answer may be filed in paper form. An answer filed in paper form must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (b).
37 C.F.R. § 2.126 Form of submissions to the Trademark Trial and Appeal Board.
- (a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.
* * * *
- (b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered.
* * * *
An opposition to an application based on Trademark Act § 66(a), 15 U.S.C. § 1141f(a), must be filed electronically through ESTTA and may not under any circumstances be filed in paper form. [ Note 1.] An opposition to an application based on Trademark Act § 1 or Trademark Act § 44, 15 U.S.C. § 1051 or 15 U.S.C. § 1126, must be filed electronically through ESTTA. [ Note 2.] A petition for cancellation must be filed electronically through ESTTA. [ Note 3.] For information regarding the electronic filing requirements for extensions of time to oppose, see TBMP § 203.01.
Although an opposition against a § 66(a) application must always be filed electronically in ESTTA, and may not under any circumstances be filed in paper form, in the rare instance that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an opposition against a § 1 or § 44 application or a petition for cancellation against a § 1, § 44 or § 66(a) registration (or registered extension of protection) may be filed on paper, accompanied by a Petition to the Director and the required fee. [ Note 4.] For more information on filing oppositions and cancellations, see TBMP § 306 and TBMP § 307.
An answer to a notice of opposition or petition for cancellation must be filed through ESTTA. [ Note 5.] In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an answer may be filed in paper form accompanied by a Petition to the Director and the requisite fee. [ Note 6.] For more information on filing and serving an answer see TBMP § 311.01.
A paper-filed notice of opposition, petition to cancel, or answers thereto, which are not accompanied by a Petition to the Director and the required fee, will not be considered. [ Note 7.] Whether a paper filing of a notice of opposition, petition to cancel or answers thereto (accompanied by the required petition and fee) is permitted depends on whether a sufficient showing in the petition has been made based on the facts provided. [ Note 8.] Petitions to the Director to file on paper are subject to 37 C.F.R §2.146, including the requirement for verified facts under 37 C.F.R §2.146(c)(1). [ Note 9.] A supported petition would include an affidavit or declaration and any other available evidence to support the assertion of technical problems with ESTTA (e.g., screen print showing an ESTTA error message, a reference number from a telephone call to the TTAB regarding ESTTA unavailability), or to support the assertion of extraordinary circumstances. When submitting a Petition to the Director with the paper-filed notice of opposition, petition to cancel, or answer, the filer should send these papers in the same envelope. If a Petition to the Director has been filed through TEAS, the paper filing should include a prominent statement regarding the TEAS filing of the Petition to the Director. Fees for a paper-filed notice of opposition or petition to cancel may be paid by check, money order, credit card (using the credit card payment form) or a USPTO deposit account. See "Methods of Payment," available at https://www.uspto.gov/trademarks/trademark-fee-information. If paying by check or money order or credit card, separate checks, or money orders, or credit card forms for the Petition to the Director and the opposition or cancellation filing fee should be provided in the same envelope; written directions to deduct the fees from a deposit account should provide instructions separately for payment of fees for the Petition to the Director, and for the appropriate filing fees for the notice of opposition or petition to cancel. While all paper-filed notices of opposition and petitions to cancel and answers must be accompanied by a petition and the requisite fee, when the filing is the result of technical difficulties with ESTTA, the filer may concurrently request that the fee be waived and reimbursed.
In addition, general submissions to the Board must be filed via ESTTA. [ Note 10.] Eastern Time controls the timeliness of filing dates. [ Note 11.] In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. No fee is required. All submissions in paper form must include a written explanation of the technical problems or extraordinary circumstances encountered by the filer. [ Note 12.] Such explanations must include the specific facts underlying the inability to file by ESTTA, rather than a mere conclusory statement that technical problems or extraordinary circumstances prevented the use of ESTTA. [ Note 13.] The precise impact of ESTTA technical problems varies depending on specific facts. [ Note 14.] The exception for extraordinary circumstances may apply to situations where no USPTO technical problems exist, but the filer experiences an extraordinary situation making ESTTA unavailable to the filer, which might, in appropriate situations, include certain types of technical problems at the filer’s location or with the filer’s systems. [ Note 15.] Whether such circumstances are extraordinary will be determined on a case by case basis. In either situation, the Board will review the explanation accompanying the paper filing in its consideration of the filing, and explanations that do not meet the technical problems or extraordinary circumstances showing will not be considered. [ Note 16.]
Please Note: In the case of general submissions filed on paper, accompanied by the required explanation, parties should consider any such paper filing accepted unless the Board indicates otherwise. Thus, for any filing to which the opposing party would respond, for purposes of the response deadline, the opposing party should proceed as if the paper submission were accepted at the time of its filing and respond accordingly. [ Note 17.]
For additional information on filing via ESTTA see TBMP § 110.
NOTES:
1. 37 C.F.R. § 2.101(b)(3). Cf. In re Börlind Gesellschaft für Kosmetische Erzeugnisse GmbH, 73 USPQ2d 2019, 2020 (TTAB 2005) (former 37 C.F.R. § 2.102(a)(2) (now 37 C.F.R. § 2.102(a)(1)) requires ESTTA filing of extensions of time to oppose Trademark Act § 66(a) applications).
4. 37 C.F.R. § 2.101(b)(3); 37 C.F.R. § 2.101(b)(2); and 37 C.F.R. § 2.111(c)(2).
5. See 37 C.F.R. § 2.106(b)(1) and 37 C.F.R. § 2.114(b)(1).
6. See 37 C.F.R. § 2.106(b)(1) and 37 C.F.R. § 2.114(b)(1).
7. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (October 7, 2016). DFC Expo LLC v. Coyle, 121 USPQ2d 1903, 1905 (TTAB 2017) (among the deficiencies, filing was not accompanied by a Petition to the Director or by the required fee).
8. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966-67 (October 7, 2016).
9. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (October 7, 2016). See DFC Expo LLC v. Coyle, 121 USPQ2d 1903, 1905 (TTAB 2017) ("A Petition to the Director requires a petition fee, the necessary showing, and verification of statements supporting the petition.").
10. See 37 C.F.R. § 2.126(a).
11. See 37 C.F.R §2.195(a). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 19296, 19296 (Notice of Proposed Rulemaking April 4, 2016) (describing ongoing practice of using Eastern Time to determine the timeliness of ESTTA filing dates).
12. See 37 C.F.R. § 2.126(b).
13. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (October 7, 2016).
14. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966-67 (October 7, 2016).
15. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966-67 (October 7, 2016).
16. 37 C.F.R. § 2.126(b); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (October 7, 2016).
17. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (October 7, 2016).