306.04 Late Opposition
Because the timeliness requirements of Trademark Act § 13(a), 15 U.S.C. § 1063(a), for the filing of an opposition are statutory, they cannot be waived by stipulation of the parties, nor can they be waived by the Board or by the Director on petition. [ Note 1.]
Parties using the ESTTA filing system will not face late opposition and other timing errors. The ESTTA system will not permit a would-be opposer to file an opposition against an application that has not yet been published or that has been abandoned, or where the statutory time period for filing the opposition has passed. Accordingly, ESTTA will reject an attempt to electronically file an opposition after the expiration of the would-be opposer’s time for opposing.
In the rare instance that a party files an opposition on paper and it has been permitted by the Director, on petition, an opposition that has been filed after the expiration of the would-be opposer’s time for opposing must be denied by the Board as late. The opposition will not be instituted, and any submitted opposition fee will be refunded. The fee for the petition to the Director will not be refunded. In either circumstance, the would-be opposer’s remedy lies in the filing of a petition for cancellation, pursuant to Trademark Act § 14, 15 U.S.C. § 1064 when and if a registration is issued. [ Note 2.]
For information concerning the effect of fee and signature requirements on the timing of an opposition, see TBMP § 308.02(b) and TBMP § 309.02(b), respectively.
NOTES:
1. See The Equine Touch Foundation, Inc. v. Equinology, Inc., 91 USPQ2d 1943,1945 n.6 (TTAB 2009) ("The time for filing a notice of opposition is statutory and cannot be waived by the Board"); In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm’r 1995) (waiver of now amended United States Patent and Trademark Office Rule 1.8 regarding certificates of mailing would effectively waive Trademark Act § 13, 15 U.S.C. § 1063 and, in any event, the fact that potential opposer did not retain executed hard copies of documents filed with Office and cannot prove document was timely is not an extraordinary circumstance justifying a waiver of Rule 1.8); In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477, 1478 (Comm’r 1994); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980). Please Note: In 2003, Trademark Rule 1.8 was replaced by 37 C.F.R. § 2.197, which is now the applicable rule regarding certificates of mailing.
2. See Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1436 n.10 (TTAB 2007).