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:

• 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

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 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. Below is an example of a First 30 day extension of time filed.

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.

DEFINITION: The USPTO definition of ‘publication for opposition’ or ‘published for opposition’:

If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette.

The USPTO will send a Notice of Publication to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, or on a foreign registration under §44, or a Notice of Allowance will issue for intent-to-use applications.