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).