308 Filing Fees
308.01 Fee for Filing Opposition
308.01(a) In General
Trademark Act § 13(a), 15 U.S.C. § 1063(a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office....
- (a) An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee.
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- (c) . . . . The opposition must be accompanied by the required fee for each party joined as opposer for each class in the application for which registration is opposed (see § 2.6).
- (d) An otherwise timely opposition cannot be filed via ESTTA unless the opposition is accompanied by a fee that is sufficient to pay in full for each named party opposer to oppose the registration of a mark in each class specified in the opposition. A paper opposition that is not accompanied by the required fee sufficient to pay in full for each named party opposer for each class in the application for which registration is opposed may not be instituted. If time remains in the opposition period as originally set or as extended by the Board, the potential opposer may resubmit the opposition with the required fee.
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The rules governing opposition fees are specified in 37 C.F.R. § 2.101(c) -37 C.F.R. § 2.101(d). The amount of the required filing fee is specified in 37 C.F.R. § 2.6(a)(17). The required fee must be submitted with the opposition. The filing date of an opposition (and, hence, the date of commencement of the opposition proceeding) is the date of electronic receipt in the Office of both the opposition with the required fee. [ Note 1.] In the rare instance of a permitted filing of a paper notice of opposition (granted by a Petition to the Director), the filing date will be determined in accordance with 37 C.F.R. § 2.195, 37 C.F.R. § 2.196, 37 C.F.R. § 2.197 and 37 C.F.R. § 2.198. [ Note 2.] See TBMP § 309.
The required fee must be submitted for each party joined as opposer for each class opposed, [ Note 3.] and if fewer than the total number of classes in the application are opposed, the classes opposed should be specified. See TBMP § 304. [ Note 4.]
For information on how to pay fees, see 37 C.F.R. § 2.206 -37 C.F.R. § 2.208, and TBMP § 118. For information on fee refunds, see 37 C.F.R. § 2.209, and TBMP § 119.
NOTES:
1. See 37 C.F.R. § 2.101(e). See also Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1282-83 (TTAB 2008) (where ESTTA filing process not completed because no fee was paid, date appearing on the ESTTA "Validate" screen is inoperative; opposition dismissed as a nullity).
2. See 37 C.F.R. § 2.101(e).
3. See 37 C.F.R. § 2.101(c) and 37 C.F.R. § 2.101(d); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (second named opposer not party to proceeding where notice of opposition named two opposers, but fee payment sufficient for only one opposer and only one opposer identified in ESTTA cover sheet); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) ("With opposers, regardless of the basis of the opposition application, the opposers identified in the ESTTA cover sheet determine the fees paid through ESTTA. Any additional opposers named only in the accompanying statement, for whom no fees have been paid, will not be part of the proceeding, regardless of the filing basis of the opposed application.").
4. See 37 C.F.R. § 2.101(d).
308.01(b) Insufficient Fee
An otherwise timely opposition will not be accepted via ESTTA unless the opposition is accompanied by a fee that is sufficient to pay, in full, for each named party opposer to oppose the registration of a mark in each class specified in the opposition. [ Note 1.]
A notice of opposition against 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 2.] See TBMP § 309.
A notice of opposition against 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 3.] In rare circumstances, an opposition may be filed on paper, accompanied by a Petition to the Director and the required fee. [ Note 4.] See TBMP § 309. Absent the required fee, the opposition may not be instituted. [ Note 5.]
The institution notice will identify the parties and classes for which the required fees were submitted. See TBMP § 310.
The responsibility for filing proper fees rests with the party filing the fees.
NOTES:
1. See 37 C.F.R. § 2.101(d); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (second named opposer not party to proceeding where notice of opposition named two opposers, but fee payment sufficient for only one opposer and only one opposer identified in ESTTA cover sheet); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280 (TTAB 2008) (where ESTTA filing process not completed because no fee was paid, date appearing on the ESTTA "Validate" screen is inoperative; opposition dismissed as a nullity).
2. See 37 C.F.R. § 2.101(b)(3).
3. See 37 C.F.R. § 2.101(b)(1).
4. See 37 C.F.R. § 2.101(b)(2).
5. See 37 C.F.R. § 2.101(d). See also DFC Expo LLC v. Coyle, 121 USPQ2d 1903, 1904-05 (TTAB 2017) (among the deficiencies, filing was not accompanied by the required fee).
308.02 Fee for Filing Petition to Cancel
308.02(a) In General
Trademark Act § 14, 15 U.S.C. § 1064 A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this Act, or under the Act of March 3, 1881, or the Act of February 20, 1905....
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Trademark Act § 24, 15 U.S.C. § 1092 Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office. Whenever any person believes that he is or will be damaged by the registration of a mark on the supplemental register--
- (1) for which the effective filing date is after the date on which such person’s mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title; or
- (2) on grounds other than dilution by blurring or dilution by tarnishment, such person may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration.
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37 C.F.R. § 2.111(d) The petition for cancellation must be accompanied by the required fee for each party joined as petitioner for each class in the registration(s) for which cancellation is sought (see § 2.6). A petition cannot be filed via ESTTA unless the petition is accompanied by a fee that is sufficient to pay in full for each named petitioner to seek cancellation of the registration(s) in each class specified in the petition. A petition filed in paper form that is not accompanied by a fee sufficient to pay in full for each named petitioner for each class in the registration(s) for which cancellation is sought may not be instituted.
(e) The filing date of a petition for cancellation is the date of electronic receipt in the Office of the petition and required fee. In the rare instances that filing by paper is permitted under these rules, the filing date of a petition for cancellation will be determined in accordance with §§ 2.195 through 2.198.
The rules governing cancellation fees are specified in 37 C.F.R. § 2.111(d). The amount of the required fee is specified in 37 C.F.R. § 2.6(a)(16). The required fee for a petition to cancel must be submitted with the petition; the effective filing date of a petition to cancel (and, hence, the date of commencement of the cancellation proceeding) is the date of electronic receipt in the Office of both the petition to cancel and the required fee. [ Note 1.] See TBMP § 308.02(b). In the rare instance when an otherwise timely paper filing of a petition to cancel, accompanied by the required fees, has been permitted on Petition to the Director, the filing date will be determined in accordance with 37 C.F.R. § 2.195, 37 C.F.R. § 2.196, 37 C.F.R. § 2.197, and 37 C.F.R. § 2.198. [ Note 2.]
The required fee must be submitted for each party joined as petitioner for each class sought to be cancelled, and if cancellation is sought for fewer than the total number of classes in the registration, the classes sought to be cancelled should be specified. [ Note 3.] See TBMP § 304.
For information on how to pay fees, see 37 C.F.R. § 2.206 -37 C.F.R. § 2.208, and TBMP § 118. For information on fee refunds, see 37 C.F.R. § 2.209, and TBMP § 119.
NOTES:
1. See 37 C.F.R. § 2.111(a), 37 C.F.R. § 2.111(d), and 37 C.F.R. § 2.111(e); Williamson-Dickie Manufacturing Co. v. Mann Overall Co., 359 F.2d 450, 149 USPQ 518, 520 (CCPA 1966). Cf. Fred Beverages, Inc. v. Fred’s Capital Management Co., 605 F.3d 968, 94 USPQ2d 1958, 1960 (Fed. Cir. 2010) (Board’s decision denying petitioner’s motion for leave to amend cancellation petition, for failure to submit fee for amendment at time of filing the motion, reversed; case remanded to Board for further consideration of motion to amend).
2. See 37 C.F.R. § 2.111(e).
3. See 37 C.F.R. § 2.111(d).
308.02(b) Insufficient Fee
A petition for cancellation must be filed electronically through ESTTA. [ Note 1.] See TBMP § 309.
An otherwise timely petition for cancellation will not be accepted via ESTTA unless the petition to cancel is accompanied by a fee that is sufficient to pay in full for each named party petitioner to petition for cancellation of the registration of a mark in each class specified in the petition for cancellation. [ Note 2.]
In those rare instances where an otherwise timely petition to cancel has been filed on paper, and such filing is not accompanied by any fee, or a sufficient fee to pay in full for each named petitioner for each class in the registration(s) for which cancellation is sought, the petition to cancel will be rejected and the Board will not institute a proceeding. [ Note 3.]
Except to the extent that the five-year period of Trademark Act § 14(3), 15 U.S.C. § 1064(3) or Trademark Act § 14(5), 15 U.S.C. § 1064(5), or the three-year period of Trademark Act § 14(6), 15 U.S.C §1064(6) is applicable in a particular case, there is no time limit for the filing of a petition to cancel an issued registration. Thus, if the petition is rejected for failure to submit a fee, or a fee that is sufficient to pay in full for each named petitioner for each class in the registration(s) for which cancellation is sought, the rejection of the petition is without prejudice to petitioner’s right to electronically file, at any time thereafter, a new petition to cancel provided that the five-year period, if applicable, has not expired, or, if expired, that the petition recites a ground permitted after the expiration of the three or five-year period. [ Note 4.]
The responsibility for filing proper fees rests with the party filing the fees. [ Note 5.]
NOTES:
1. See 37 C.F.R. § 2.111(c)(1). Board practice does not permit the filing of a petition for cancellation on CD-ROM. See 37 C.F.R. § 2.126; MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42247 (August 1, 2007).
2. See 37 C.F.R. § 2.111(d). Cf. Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (second named opposer not party to proceeding where notice of opposition named two opposers, but fee payment sufficient for only one opposer and only one opposer identified in ESTTA cover sheet); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1282-83 (TTAB 2008) (where ESTTA filing process not completed because no fee was paid, date appearing on the ESTTA "Validate" screen is inoperative; opposition dismissed as a nullity).
3. See 37 C.F.R. § 2.111(d).
4. Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (defective renewal application must be corrected and refiled within statutory time period); In re Application Papers Filed November 12, 1965, 152 USPQ 194, 195 (Comm’r 1966) (regarding insufficient filing fee for patent application).
5. Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (regarding defective renewal application); In re Application Papers Filed November 12, 1965, 152 USPQ 194, 195 (Comm’r 1966) (regarding insufficient filing fee for patent application).
308.02(c) Petition Filed by Federal Trade Commission
There is no fee for a petition filed by the Federal Trade Commission to cancel a registration on the Principal Register. [ Note 1.] Cf. TBMP § 303.04.
NOTES:
1. See Trademark Act § 14, 15 U.S.C. § 1064.
308.02(d) Fee for Counterclaim
For information concerning fees for counterclaims, see TBMP § 313.02.
308.03 Fees for Joint Opposers or Petitioners
Two or more parties may file an opposition, or a petition for cancellation, jointly. However, the required fee must be submitted for each party joined as opposer, or petitioner, for each class in the application for which registration is opposed, or for each class in the registration for which cancellation is sought. [ Note 1.] See TBMP § 308.03. See also TBMP § 303. Oppositions and petitions filed through ESTTA must be accompanied by the proper fees for each party in the position of plaintiff, for each class in each application opposed or registration sought to be cancelled. [ Note 2.] See TBMP § 308.03. If all party plaintiffs are identified during the ESTTA filing process, the electronic filing system calculates the proper fees and will not institute the proceeding until the appropriate fees have been paid. [ Note 3.] In rare circumstances where an opposition or petition to cancel is filed on paper by Petition to the Director, the opposition or cancellation may not be instituted if insufficient fees have been provided to pay in full for each named party plaintiff for each class in the application sought to be opposed, or for each party plaintiff for each class in the registration sought to be cancelled. [ Note 4.]
NOTES:
1. See 37 C.F.R. § 2.101(d) and 37 C.F.R. § 2.111(d); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994).
2. See 37 C.F.R. § 2.101(d) and 37 C.F.R. § 2.111(d).
3. See 37 C.F.R. § 2.101(d) and 37 C.F.R. § 2.111(d). Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (where only one opposer was identified during the filing process, only one was charged; second named opposer not considered party to proceeding); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1021 n.1 (TTAB 2009) (second petitioner not added as party plaintiff due to failure to pay additional fee). Cf. Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1282-83 (TTAB 2008) (where ESTTA filing process not completed because no fee was paid, date appearing on the ESTTA "Validate" screen is inoperative; opposition dismissed as a nullity).
4. See 37 C.F.R. § 2.101(d) and 37 C.F.R. § 2.111(d).
308.04 Fees for Proceeding Against Multiple Class Application or Registration
The required opposition or cancellation fee must be submitted for each party joined as plaintiff for each class sought to be opposed or cancelled. [ Note 1.] See TBMP §308.04. See also TBMP § 304. Oppositions and petitions filed through ESTTA must be accompanied by the proper fees for each party in the position of plaintiff, for each class in each application opposed or registration sought to be cancelled. [ Note 2.] See TBMP §308.04. In the rare circumstances where an opposition or petition to cancel is filed on paper by the Petition to the Director, the opposition or cancellation may not be instituted if insufficient fees have been provided to pay in full for each named party plaintiff for each class in the application sought to be opposed, or for each party plaintiff for each class in the registration sought to be cancelled. [ Note 3.]
NOTES:
1. See 37 C.F.R. § 2.101(d) and 37 C.F.R. § 2.111(d).
2. See 37 C.F.R. § 2.101(d) and 37 C.F.R. § 2.111(d).
3. See 37 C.F.R. § 2.101(d) and 37 C.F.R. § 2.111(d).
308.05 Fees for Consolidated and Combined Complaints
When appropriate, a party may oppose, in a single (i.e., "consolidated") notice of opposition, different applications owned by the same defendant. However, the required fee must be submitted for each party joined as opposer for each class in which registration is opposed in each application against which the opposition is filed. [ Note 1.] See TBMP § 305 and TBMP §308.05.
Similarly, when appropriate, a party may seek to cancel, in a single (i.e., "consolidated") petition for cancellation, different registrations owned by the same defendant. Again, the required fee must be submitted for each party joined as petitioner, for each class sought to be cancelled, in each registration against which the petition for cancellation is filed. [ Note 2.] See TBMP § 305 and TBMP §308.05.
A party may not file a single pleading combining a notice of opposition to one or more applications, and a petition to cancel one or more registrations, even when each subject application and registration is owned by the same defendant. See TBMP § 305.02. Filing by ESTTA is required, and no ESTTA form exists for such a combined complaint. [ Note 3.] However, to achieve a comparable result a filer may separately electronically file a notice of opposition and a petition for cancellation and simultaneously request consolidation. [ Note 4.] It is recommended to file the request for consolidation in a separate submission in ESTTA.
See TBMP § 305 for more information on consolidated and combined complaints and filing in ESTTA. For information concerning motions to consolidate proceedings, see TBMP § 511.
NOTES:
1. See 37 C.F.R. § 2.104(b).
2. See 37 C.F.R. § 2.112(b).
3. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69953 (October 7, 2016). ("[No] exception to the requirement to file by ESTTA will be made for a combined filing, and prior case law allowing for this type of combined notice of opposition and petition for cancellation is superseded by the mandatory online filing requirement.").
4. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69953 (October 7, 2016).