1503    Opposition

1503.01    Filing a Notice of Opposition

Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Board, and paying the required fee, within thirty days after the date of publication, or within an extension period granted by the Board for filing an opposition.   See 15 U.S.C. §1063; 37 C.F.R. §§2.101 -2.107; TBMP §303. See TMEP §1504.02 regarding jurisdiction of the Board over an application upon the filing of a notice of opposition.

The notice of opposition must include a concise statement of the reasons for the opposer’s belief that the opposer would be damaged by the registration of the opposed mark, and must state the grounds for opposition.  37 C.F.R. §2.104(a); TBMP §309.03(a)(2).

A notice of opposition to an application based on §1 or §44 of the Trademark Act must be filed through the Electronic System for Trademark Trials and Appeals (ESTTA) at https://estta.uspto.gov/.  37 C.F.R. §2.101(b)(1). If ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an opposition to an application based on §1 or §44 may be filed in paper form. 37 C.F.R. §2.101(b)(2). The paper opposition must be filed by the due date set forth in 37 C.F.R. §2.101(c)  and must be accompanied by a paper petition to the Director under 37 C.F.R. §2.146, with the required fees and a showing that ESTTA was unavailable because of technical problems or that extraordinary circumstances are present. 37 C.F.R. §2.101(b)(2); see DFC Expo LLC, 121 USPQ2d 1903, 1906 (TTAB 2017) ; TBMP §309.02. See 37 C.F.R. §2.197  and §2.198, and TMEP §305.02 and §305.03 regarding certificate of mailing and Priority Mail Express® procedures and TBMP §106.03 and §107 for general information regarding permitted paper submissions with the Board.

A notice of opposition to an application based on §66(a) of the Act must be filed through ESTTA and may not be filed in paper form under any circumstances.  37 C.F.R. §2.101(b)(3); TBMP §309.01; see In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005).

A notice of opposition does not have to be verified, and it may be signed by either the opposer or the opposer’s attorney.  37 C.F.R. §2.101(b); TBMP §309.02(b).

1503.02    Joining Persons in an Opposition

Two or more persons may join in an opposition.   TBMP §303.06.   Related companies are separate persons for the purpose of filing an opposition.  

1503.03    Time for Opposing

An opposition must be filed within thirty days after the date of publication in the Trademark Official Gazette, or within an extension period granted by the Board.  15 U.S.C. §1063(a);  37 C.F.R. §2.101(c); TBMP §§306-306.04.  The time within which to file an opposition is set by statute and may not be extended or waived.   In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477 (Comm'r Pats. 1994); In re Cooper, 209 USPQ 670 (Comm’r Pats. 1980); TBMP §306.04.

When a registration is issued, inadvertently, from an application that was the subject of a timely filed notice of opposition, the Board is without authority to cancel the registration and restore it to application status.  In this situation, the Board will refer the registration file to the Office of the Deputy Commissioner for Trademark Examination Policy for appropriate action.   See TBMP §216.   See also TMEP §1609.10(a) regarding correction of USPTO errors.

1503.04    Extension of Time to Oppose

Requests for extensions of time to oppose are handled by the Board.   See TBMP Chapter 200.

A request for an extension of time must be filed within thirty days after the date of publication in the Trademark Official Gazette, or within an extension period granted by the Board.  15 U.S.C. §1063(a); 37 C.F.R. §2.102(c); TBMP §202.01.  The time within which to file a request for extension of time to oppose is set by statute and may not be extended or waived.   In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477 (Comm'r Pats. 1994 ); In re Cooper, 209 USPQ 670 (Comm’r Pats. 1980).

A request for extension of time to oppose an application based on §1 or §44 of the Trademark Act must be filed through ESTTA, at https://estta.uspto.gov/.  37 C.F.R. §2.102(a)(1).  If ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a request to extend the opposition period for an application based on §1 or §44 may be filed in paper form. 37 C.F.R. §2.102(a)(1); TBMP §203.01(a) The paper extension request must be filed by the due date set forth in 37 C.F.R. §2.101(c)  and must be accompanied by a paper Petition to Director under 37 C.F.R. §2.146, with the required fees and a showing that ESTTA was unavailable because of technical problems or that extraordinary circumstances are present. 37 C.F.R. §2.102(a)(2). See TBMP §106.03 and §107 for general information regarding permitted paper submissions with the Board.

A request for extension of time to oppose a §66(a) application must be filed through ESTTA and may not be filed in paper form under any circumstances.  37 C.F.R. §2.102(a)(1); TBMP §203.01(a); see In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005).

For additional information regarding filing a request for an extension of time to oppose, see TBMP Chapters 200 and 300.

When a registration is issued, inadvertently, from an application that was the subject of an unexpired extension of time to oppose on the date of registration, the Board is without authority to cancel the registration and restore it to application status.  See TBMP §216.   In this situation, a request to have the registration cancelled as inadvertently issued should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy.  See TMEP §1609.10(a) regarding correction of USPTO errors.

1503.05    Opposition to §66(a) Applications

Section 68(a)(2) of the Trademark Act, 15 U.S.C. §1141h(a)(2), provides that a request for extension of protection is subject to opposition under §13 of the Trademark Act, 15 U.S.C. §1063.  The USPTO must notify the International Bureau of the World Intellectual Property Organization (IB) within 18 months of the date the IB sends the request for extension of protection to the USPTO of:  (1) a notification of refusal based on the filing of an opposition; or (2) a notification of the possibility that an opposition may be filed after expiration of the 18-month period. 15 U.S.C.  §1141h(c)(1)(B)-(C); see TMEP §§1904.03, 1904.04.

An opposition to a §66(a) application, or a request for extension of time to oppose a §66(a) application, must be filed through ESTTA and may not be filed in paper form under any circumstances.  37 C.F.R. §§2.101(b)(3), 2.102(a)(1); TBMP §309.01; see In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005).

Once filed, an opposition to a §66(a) application may not be amended to add to the grounds for opposition, to add to the goods/services opposed, or to add a joint opposer. 37 C.F.R. §§2.104(c), 2.107(b). The opposition is limited to the goods, services, grounds, and named opposers set forth in the ESTTA-generated opposition form cover sheet. 37 C.F.R. §§2.104(c), 2.107(b)  ("The grounds for opposition, the goods or services opposed, and the named opposers are limited to those identified in the ESTTA cover sheet regardless of what is contained in any attached statement.") CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1962 (TTAB 2011) ; Hunt Control Sys., Inc. v. Koninklijke Philips Elec. N.V., 98 USPQ2d 1558, 1561-62 (TTAB 2011); see TBMP §315.