309.01    In General

37 C.F.R. § 2.101(b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file an opposition addressed to the Trademark Trial and Appeal Board. ...

  • (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.
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37 C.F.R. § 2.111(b)  Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part.

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37 C.F.R. § 2.111(c)(1) A petition to cancel a registration must be filed through ESTTA.

37 C.F.R. § 2111(c)(2)  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. § 2.116(c) The notice of opposition or the petition for cancellation and the answer correspond to the complaint and answer in a court proceeding.

37 C.F.R. § 2.119(e) Every submission filed in an inter partes proceeding, and every request for an extension of time to file an opposition, must be signed by the party filing it, or by the party’s attorney or other authorized representative, but an unsigned submission will not be refused consideration if a signed copy is submitted to the Office within the time limit set in the notification of this defect by the Office.

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.
    • (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
    • (2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.
  • (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. A paper submission, including exhibits and depositions, must meet the following requirements:
    • (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
    • (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
    • (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
    • (4) A paper submission must not be stapled or bound;
    • (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
    • (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
  • (c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the "Confidential" selection available in ESTTA or, where appropriate, under a separate paper cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.
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Submissions, including oppositions and petitions to cancel, must be made to the Board electronically via ESTTA. [ Note 1.] An opposition to an application based on Trademark Act § 66(a), 15 U.S.C. § 1141f(a), may not under any circumstances be filed in paper form [ Note 2.], but if ESTTA is unavailable due to technical problems, or due to extraordinary circumstances, 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, may be filed on paper, accompanied by a Petition to the Director and the required fee. [ Note 3.] Similarly, if ESTTA is unavailable due to technical problems, or due to extraordinary circumstances, a petition to cancel against a § 1 or § 44 registration or a § 66(a) registered extension of protection may be filed on paper, accompanied by a Petition to the Director and the required fee. [ Note 4.]

The notice of opposition, or petition to cancel, corresponds to the complaint in a court proceeding. [ Note 5.] For purposes of simplicity, the term "complaint" is often used hereafter in this section to refer to a notice of opposition or a petition to cancel.

NOTES:

 1.   See 37 C.F.R. § 2.126(a); 37 C.F.R. § 2.101(b)(1); 37 C.F.R. § 2.101(b)(3); 37 C.F.R. § 2.111(c)(1).

 2.   See 37 C.F.R. § 2.101(b)(3). See also CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011) (any opposition to a Section 66(a) application must be filed through ESTTA); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011) (same).

 3.   See 37 C.F.R. § 2.101(b)(2).

 4.   37 C.F.R. § 2.111(c)(2).

 5.   See 37 C.F.R. § 2.116(c).