If a party is not sure if filing a Notice of Opposition is in its best interests, one should request an extension of time to oppose the application. There are multiple reasons why a trademark owner may need more time to determine if they want to initiate a proceeding at the Trademark Trial and Appeal Board (The "Board"). A trademark owner should not react impulsively or rashly upon learning about a third-party's trademark application, but instead conduct due diligence and make an educated and informed decision. The owner of trademark rights may simply need more time to investigate the claim. Moreover, it may be prudent to open a dialogue with the trademark applicant, and determine if an amicable resolution is feasible prior to commencing a legal proceeding with the TTAB.
Any request will be granted for extending the time to oppose, if it is filed within thirty days of the date of publication of the trademark application, there is a thirty-day request for an extension of time, and the requisite fee accompanies the request. If a party is making a first request to extend the time to oppose, it may request either thirty days without grounds or ninety days for good cause shown. A sixty-day extension is not an option for a first extension of time request.
If a party was granted an initial thirty-day extension to oppose, then a second request for sixty days may be granted, but only for good cause. The time for filing an opposition shall not extend past 180 days from the date of publication. After receiving one or two extensions, totaling 90 days, one additional extension may be granted for 60 days. This final 60 day extension will only be granted if it is upon written consent, stipulated to and signed by the applicant or its authorized representative, if a written request by the potential opposer, or its authorized representative, is filed and it states that the applicant has consented to the request, or lastly if there is a showing of extraordinary circumstances. In other words, no more than three requests to extend time to file the opposition can be made, totaling 180 days from the date of publication. Since these timeliness requirements are statutory, they cannot be extended by stipulation of the parties.
A request for an extension of time to oppose must be filed prior to the expiration of the thirty-day period after publication of the mark. Extension requests must be filed through ESTTA (Electronic System for Trademark Trials and Appeals), unless ESTTA is unavailable due to a technical issue or there are extraordinary circumstances. Under certain circumstances, a paper format may be utilized. See 37 CFR §2.102. The Board determines all requests for extensions. See our web page entitled, A Summary Of The TTAB's Amended Rules Of Practice For 2017, for more on the modifications made to the rules governing Board practice in 2017.
The request to extend time to oppose does not have to be verified, but must be signed by the potential opposer or counsel for the potential opposer. Electronic signatures are required for extension requests filed through ESTTA. The filing date of a request to extend time to file an opposition is the date reflected on the electronic receipt generated through the ESTTA filing. ESTTA will not permit a party to file a late extension of time to oppose. If the deadline to file an opposition is missed, then the next time action can be initiated will be once the certificate of registration issues. A cancellation proceeding can be commenced once the mark registers. See our web page entitled, Claims That Can Be Asserted In Opposition And Cancellation Proceedings, if you have questions about either opposition or cancellation proceedings. Please do not hesitate to contact our office for a courtesy consultation, if you have trademark questions after reviewing this web page.