Trademark Extension of Time to Oppose

According to the USPTO FY 2020 reports, there were 18,893 extensions of time to oppose filed in FY 2020. This compares to 6,712 oppositions filed. Note that not all oppositions are preceded with extensions of time to oppose.  There are many more extensions filed than oppositions filed. (There were 2,501 cancellations filed in 2020.)

What can a trademark applicant do during an extension of time to oppose that trademark application?

• Get help! This may be a good time to improve chances of avoiding an opposition or chances of winning an opposition!
• The applicant can amend their goods or services description to narrow the description potentially negating grounds for opposition;
• The applicant can have additional time to investigate potential claims from the now named potential opposer;
• The applicant can take additional time to confer with counsel;
• The applicant can engage in settlement discussions with the potential opposer;
• The applicant can abandon the application and rebrand or potentially  craft a goods/services description that is not conflicting but requires more than just an amendment of the original application.
• The applicant can potentially do nothing and just wait out the time–sometimes extensions of time are not from serious potential opposers. Statistically most extensions of time do not result in an opposition but the statistics for how many applications are abandoned during extensions of time is not available in USPTO reports. (Abandoned applications cannot be opposed.)

What if you want to oppose an application but you missed the 30-day time frame to oppose or file for an extension of time to oppose? Time limits for filing Notices of Opposition or Requests for an Extension of Time to Oppose are strictly enforced. The next option may be to file a petition to cancel, after the trademark registers. It takes about 2-3 months from the close of the opposition period (including extensions) until a registration issues if the case is not an Intent to Use case. It may take much longer for an Intent to Use case to mature to registration. Check the TSDR of the application to see if it has registered. The USPTO has a free service called MyUSPTO that can be used to monitor changes to applications and registrations. See https://www.uspto.gov/learning-and-resources/account-faqs for more information.

What does “Good Cause” mean when referring to an extension of time to oppose someone in a trademark opposition?

Circumstances that may constitute good cause include but are not limited to additional time to investigate claim, additional time to confer with counsel, additional time to settlement discussions, additional time to seek counsel applicant's consent to the extension, settlement negotiations between the parties, the filing of a letter of protest by the potential opposer, an amendment of the subject application, the filing of a petition to the Director from the grant or denial of a previous extension, extraordinary circumstances and civil litigation between the parties.

The ESTTA form includes radio buttons to click for several “good cause” reasons:

• The potential opposer needs additional time to investigate the claim
• The potential opposer needs additional time to confer with counsel
• The potential opposer is engaged in settlement discussions with applicant
• The potential opposer needs additional time to seek counsel to represent it in this matter.

TBMP 207.02:  [   ]  A showing of good cause for an extension of time to oppose over thirty days must set forth the reasons why additional time is needed for filing an opposition. Circumstances that may constitute good cause include the potential opposer’s need to investigate the claim, the potential opposer’s need to confer with or obtain counsel, applicant’s consent to the extension, settlement negotiations between the parties, the filing of a letter of protest by the potential opposer, an amendment of the subject application, the filing of a petition to the Director from the grant or denial of a previous extension, and civil litigation between the parties.

Parties filing an extension of time to oppose must meet the same standing requirement as is required of an opposer [  ]. In other words, an extension of time to oppose may only be filed by a “person who believes that he would be damaged by the registration of a mark.” Trademark Act § 13. Because of the limited nature of extensions, [TTAB] rules do not require a ““pleading” of standing with an extension of time to oppose. Nonetheless, applicants may challenge extension requests and the Board may examine an extension request to determine whether it is meritorious. Although it is understood that a “reasonable” belief in damage may be somewhat tentative prior to the filing of a notice of opposition, it is obvious that such a belief would not have been reasonable in a case such as this one [  ]. NSM Res. Corp.; & Huck Doll LLC, 113 U.S.P.Q.2d 1029 (TTAB 2014).

A filing for additional extensions of time past the first 90 days can be disputed (Relief After Institution of Opposition) if untrue statements are made to the Board. Central Manufacturing Inc. v. Third Millennium Tech. Inc., 61 USPQ2d 1210, 1215 (TTAB 2001) (motion to dismiss granted where it was found that opposer’s allegations of consent and good cause for extension request were untrue).

How do I know if someone has filed for an extension of time to oppose my mark? The USPTO sends the correspondent of record an email, a postcard, and makes status changes to your record. The TSDR will show a message: Status:  A request for an extension of time to file an opposition has been filed with the Trademark Trial and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board web page.

The time for the extension will be 30, 60 or 90 days total unless the potential opposer is able to secure an additional 60 days with consent or under extraordrinary circumstances.

Are there fees for filing an Extension of Time to Oppose?  There is a tiered fee structure for filing an extension of time to oppose that is calculated per application rather than per class. See which extensions require a fee in the chart below:

Filing for An Extension of Time To Oppose a Trademark Application

See the whole TBMP on this at https://tbmp.uspto.gov/RDMS/TBMP/current#/current/TBMP-200d1e1.html

TBMP 202    Time for Filing Request

TBMP 202.01    In General

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) [§ 43(c)] of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 [§ 12]of this title of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time for filing opposition. An opposition may be amended under such conditions as may be prescribed by the Director.

37 CFR § 2.102(c)  The time for filing an opposition shall not be extended beyond 180 days from the date of publication. Any request to extend the time for filing an opposition must be filed before thirty days have expired from the date of publication or before the expiration of a previously granted extension of time, as appropriate. Requests to extend the time for filing an opposition must be filed as follows:

(1) A person may file a first request for:

(i) Either a thirty-day extension of time, which will be granted upon request; or

(ii) A ninety-day extension of time, which will be granted only for good cause shown. A sixty-day extension is not available as a first extension of time to oppose.

(2) If a person was granted an initial thirty-day extension of time, that person may file a request for an additional sixty-day extension of time, which will be granted only for good cause shown.

(3) After receiving one or two extensions of time totaling ninety days, a person may file one final request for an extension of time for an additional sixty days. No other time period will be allowed for a final extension of the opposition period. The Board will grant this request only upon written consent or stipulation signed by the applicant or its authorized representative, or a written request by the potential opposer or its authorized representative stating that the applicant or its authorized representative has consented to the request, or a showing of extraordinary circumstances. No further extensions of time to file an opposition will be granted under any circumstances.

(d) The filing date of a request to extend the time for filing an opposition is the date of electronic receipt in the Office of the request. In the rare instance that filing by paper is permitted under these rules, the filing date will be determined in accordance with §§ 2.195 through 2.198.

A first request for an extension of time to oppose an application for registration of a mark must be filed prior to the expiration of the thirty-day period after publication of the mark in the Official Gazette, pursuant to Trademark Act § 12(a), 15 U.S.C. § 1062(a), for purposes of opposition. Any request for a further extension of time to oppose must be filed prior to the expiration of an extension granted to the requesting party or its privy. [ Note 1.]

All requests to extend the time for filing an opposition must be filed through ESTTA. [ Note 2.] For an application based on Trademark Act §§ 1 or 44, a request to extend the opposition period may be filed in paper form only if ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present for. [ Note 3.] Any paper request must be timely, [ Note 4.] and must be accompanied by a Petition to the Director with the requisite fees and showing. [ Note 5.] The timeliness of the paper submission will be determined in accordance with 37 CFR § 2.195  through 37 CFR § 2.198. [ Note 6.] See TBMP § 111.02 (certificate of mailing procedure) and TBMP § 111.01 (Priority Mail Express®) for further information about submissions filed in paper form and procedures providing for the timeliness of any paper submissions.

No more than three requests to extend the time for filing an opposition, totaling 180 days from the date of publication, may be filed.[ Note 7.] A potential opposer may file a request for a thirty-day extension without a showing of cause, see TBMP § 207.02 (Extensions Up to 120 Days from Date of Publication), followed by a request for a sixty-day extension for good cause. [ Note 8.] Alternatively, the potential opposer may file a single first request for a ninety-day extension of time for good cause. [ Note 9.] After one or two granted requests totaling 120 days from the date of publication, the potenial opposer may request one final extension of time for an additional sixty days, but only with the consent of the applicant or a showing of extraordinary circumstances. [ Note 10.]

The final request (120-180 days after publication) can only be granted for sixty days and not any other period of time. [ Note 11.] For example, after 120 days from publication, the potential opposer cannot request a thirty-day extension of time, even with the consent of the applicant. If an extension of less than sixty days is requested based on consent, the request will be denied unless the reasons stated for the granting of the request are extraordinary,in which case the rquest will be granted for sixty days instead of the thirty days requested. This is because a thirty-day extension of time is not permissible under 37 CFR § 2.102(c)(3). However, the citing of extraordinary circumstances would allow the granting of a sixty-day extension of time.

The following chart illustrates the initial publication period and extensions of time to oppose which may be granted:

Notes

1.   Trademark Act § 13(a), 15 U.S.C. § 1063(a); 37 CFR § 2.102(c). See In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (timeliness of extension requests is statutory and cannot be waived).

 2.   37 CFR § 2.102(a)(1).

 3.   37 CFR § 2.102(a)(1). Requests for extension of time to oppose a Trademark Act § 66(a) application may not under any circumstances be filed in paper form.

 4.   37 CFR § 2.102(a)(1)  and 37 CFR § 2.102(a)(2).

 5.   37 CFR § 2.102(a)(2).

 6.   37 CFR § 2.102(a)(2).

 7   37 CFR § 2.102(c)  .

 8.   37 CFR § 2.102(c)(1)(i) -37 CFR § 2.102(c)(2).

 9.   37 CFR § 2.102(c)(1)(ii).

 10.   37 CFR § 2.102(c)(3)  .

 11.   37 CFR § 2.102(c)(3).

DO YOU HAVE PRIOR RIGHTS IN A MARK THAT SOMEONE ELSE IS TRYING TO REGISTER? (IS SOMEONE NEW USING YOUR TRADEMARK?)

Email us at W@Tmk.law. Or Call us at 1-651-500-7590. We can take the steps to oppose that mark on your behalf. If the mark has already registered, you may be able to cancel the mark. See Grounds for Opposition for more information.