EXTENSION OF TIME TO OPPOSE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD (TTAB)
What is an Extension of Time to Oppose? A party who believes that he, she, or it would be damaged by the registration of a mark upon the Principal Register may file a written request to extend the time for filing an opposition. The first request can be for 30 days with no reason necessary or 90 days for good cause or consent. If the first request was for 30 days, a second request for 60 days can be made for good cause or consent. Ninety (90) additional days for a maximum of 180 days may be obtained with consent or under extraordinary circumstances.
What if you miss the time limit to oppose or to file for an extension of time to oppose? Time limits for filing Notices of Opposition or Requests for Extensions 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 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 TM web site or status line to see if it has registered.
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:
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The potential opposer needs additional time to investigate the claim
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The potential opposer needs additional time to confer with counsel
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The potential opposer is engaged in settlement discussions with applicant
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The potential opposer needs additional time to seek counsel to represent it in this matter
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How do I know if someone has filed for an extension of time to oppose my mark? The USPTO does not send you an email but they do sent a postcard and inform by making 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.
Have you been opposed? Has someone filed for an extension of time to oppose you? Do you need to oppose someone else’s trademark application in order to preserve your own rights? Call us at 1-651-500-7590. We can talk about the steps and the strategies involved and see if it is the right answer for you.
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