Suggested Format for Notice of Opposition

[This form used to be available from www.uspto.gov/web/offices/dcom/ttab/oppositionformat.pdf but is no longer published by the USPTO except in archives of the first edition of the TBMP https://www.uspto.gov/sites/default/files/documents/tbmp_1stedition.pdf]

(This is a suggested format for preparing a Notice of Opposition.  This document is not meant to be used as a form to be filled in and returned to the Board.  Rather, it is a suggested format, which shows how the Notice of Opposition should be set up.

Opposers may follow this format in preparing their own Notice of Opposition but need not copy those portions of the suggested format which are not relevant.)

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of trademark application Serial No.............................

For the mark...............................................................................

Published in the Official Gazette on....…..(Date)..............................

(Name of opposer)

              v.

(Name of applicant)

NOTICE OF OPPOSITION

       State opposer's name, address, and entity information as follows:

(1)

                            (Name of individual as opposer, and business trade name, if any;

                    ______________________Business address)_____________________

OR                            (Name of partnership as opposer; Names of partners;

                    ________________Business address of partnership)__________________

OR                       (Name of corporation as opposer; State or country of incorporation;

                    _______________Business address of corporation)___________________

The above-identified opposer believes that it/he/she will be damaged

by registration of the mark shown in the above-identified application, and

hereby opposes the same.(2)

The grounds for opposition are as follows:

[Please set forth, in separately numbered paragraphs,

the allegations of opposer’s standing and grounds for opposition.](3)

By ________(Signature)(4)________ Date____________________

(Identification of person signing)(5)

FOOTNOTES

(1) If opposer is an individual, state the opposer's name, business trade name, if any, and

business address.  If opposer is a partnership, state the name of the partnership, the names

of the partners, and the business address of the partnership.  If opposer is a corporation,

state the name of the corporation, the state (or country, if opposer is a foreign

corporation) of incorporation, and the business address of the corporation.  If opposer is

an association or other similar type of juristic entity, state the information required for a

corporation, changing the term "corporation" throughout to an appropriate designation.

(2) The required fee must be submitted for each party joined as opposer for each class

opposed, and if fewer than the total number of classes in the application are opposed, the

classes opposed should be specified.

(3) Set forth a short and plain statement here showing why the opposer believes it/he/she

would be damaged by the registration of the opposed mark, and state the grounds for

opposing.  Each numbered paragraph should be limited, as far as practicable, to a

statement of a single set of circumstances.  See Rules 8(a) and 10(b) of the Federal Rules

of Civil Procedure.

(4) The opposition need not be verified, and may be signed by the opposer or by the

opposer's attorney or other authorized representative.  If an opposer signing for itself is a

partnership, the signature must be made by a partner; if an opposer signing for itself is a

corporation or similar juristic entity, the signature must be made by an officer of the

corporation or other juristic entity who has authority to sign for the entity and whose title

is given.

(5) State the capacity in which the signing individual signs, e.g., attorney for opposer,

opposer (if opposer is an individual), partner of opposer (if opposer is a partnership),

officer of opposer identified by title (if opposer is a corporation), etc.

REPRESENTATION INFORMATION

  If the opposer is not domiciled in the United States, and is not represented by an

attorney or other authorized representative located in the United States, a domestic

representative must be designated.

  If the opposer wishes to furnish a power of attorney, it may do so, but an attorney

at law is not required to furnish a power.

NOTICE OF OPPOSITION (a complaint in an Opposition Proceeding)

A party can only be opposed during the time when a trademark application has been published for opposition or during an extension of time after the initial 30 day potential opposition period.

It is possible to receive a Notice of Opposition slightly after the opposition period has closed if the party opposing filed on paper by mail or if there was some other delay in the ESTTA (Electronic System for Trademark Trials and Appeals) system. Once filed and accepted by the TTAB (Trademark Trial and Appeal Board), the proceeding will show up at TTABVUE (Trademark Trial and Appeal Board Inquiry System).

An application that has been opposed will have a status change (which may not immediately updated) on its TSDR (Trademark Status & Document Retrieval) page:

Status: An opposition after publication is pending at the Trademark Trial and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board web page.

TBMP 309.02    Form of Complaint [Notice of Opposition or Petition for Cancellation]

The form of a complaint must meet the general requirements for submissions to the Board as set forth in 37 CFR § 2.126. See TBMP § 106.03. When the complaint is filed electronically through ESTTA, the text in the electronic submission must be in at least 11-point type and double-spaced, and any exhibits pertaining to the electronic submission must be made electronically as an attachment to the complaint and be clear and legible. [ Note 1.]

An opposition against a Trademark Act § 1, Trademark Act § 44, and Trademark Act § 66(a), 15 U.S.C. § 1051  or 15 U.S.C. § 1126, or 15 U.S.C. § 1141f(a)  application must be filed electronically through ESTTA. [ Note 2.] Similarly, a petition for cancellation, must be filed electronically through ESTTA. [ Note 3.] In the rare instances when a complaint is filed on paper, the submission, including any exhibits, must be in at least 11-point type and double-spaced, may not be stapled or bound or have any extruding tabs or other such devices, and must otherwise comply with the requirements of 37 CFR § 2.126(b).

NOTES:

 1.   See 37 CFR § 2.126(a)(1)  and 37 CFR § 2.126(a)(2).

 2.   See 37 CFR § 2.101(b)(1); 37 CFR § 2.101(b)(3).

 3.   37 CFR § 2.111(c)(1).

TBMP 309.02    Form of Complaint (June 2019)

The form of a complaint must meet the general requirements for submissions to the Board as set forth in 37 C.F.R. § 2.126. See TBMP § 106.03. When the complaint is filed electronically through ESTTA, the text in the electronic submission must be in at least 11-point type and double-spaced, and any exhibits pertaining to the electronic submission must be made electronically as an attachment to the complaint and be clear and legible. [ Note 1.]

An opposition against a Trademark Act § 1, Trademark Act § 44, and Trademark Act § 66(a), 15 U.S.C. § 1051  or 15 U.S.C. § 1126, or 15 U.S.C. § 1141f(a)  application must be filed electronically through ESTTA. [ Note 2.] Similarly, a petition for cancellation, must be filed electronically through ESTTA. [ Note 3.] In the rare instances when a complaint is filed on paper, the submission, including any exhibits, must be in at least 11-point type and double-spaced, may not be stapled or bound or have any extruding tabs or other such devices, and must otherwise comply with the requirements of 37 C.F.R. § 2.126(b).

NOTES:

 1.   See 37 C.F.R. § 2.126(a)(1)  and 37 C.F.R. § 2.126(a)(2).

 2.   See 37 C.F.R. § 2.101(b)(1); 37 C.F.R. § 2.101(b)(3).

 3.   37 C.F.R. § 2.111(c)(1).

TBMP 309.02(a)    Format for Complaint

Parties are required to use ESTTA to commence the proceeding and for general filing purposes. [ Note 1.] Using ESTTA, a person can complete and submit a notice of opposition or petition for cancellation over the Internet, making an official filing online. ESTTA gives step-by-step instructions for properly completing a filing. In the rare circumstances that a filing through ESTTA cannot be accomplished, see 37 C.F.R. § 2.101(b)(2)  and 37 C.F.R. § 2.111(c)(2), the ESTTA form (docket) "cover sheet" created using ESTTA may be completed and then be printed out for mailing to the Board along with the notice of opposition or petition to cancel, accompanied by the requirements for such a paper filing. [ Note 2.] If filed on paper, the certificate of mailing by first-class mail procedure described in 37 C.F.R. § 2.197  and the Priority Mail Express® procedure described in 37 C.F.R. § 2.198  are both available. Please Note: Oppositions against § 66(a) applications cannot be filed on paper under any circumstances.

The Board views the ESTTA filing form and the attached pleading as comprising a single document or paper being filed with the Board. [ Note 3.] Upon filing via ESTTA, the filer will receive an email acknowledgement of receipt from ESTTA with the ESTTA tracking number and the filing information. After the proceeding is instituted, whenever a party submits a filing via ESTTA, the ESTTA cover sheet is automatically "pre-populated" with the party’s name as that party is listed in TTABVUE (the Board’s database of electronic proceeding files). The electronic files of the Board are accessible on the Internet via TTABVUE, although confidential filings will not be made available for public viewing. See TBMP § 108, TBMP § 120.02 and TBMP § 121.

An opposition against an application based on Trademark Act § 66(a), 15 U.S.C. § 1141f(a), must be filed electronically through ESTTA. [ Note 4.] ESTTA requires the opposer of a § 66(a) application to provide information essential to the opposition in order to allow the USPTO to meet promptly its notification obligation to the World Intellectual Property Organization ("WIPO").Such essential information includes: 1) the specific goods and/or services in the application which are being opposed; 2) the ground(s) for the opposition; and 3) the application or registration number(s) for any mark owned by opposer and cited as a basis for the opposition. [ Note 5.] Only the information provided on the ESTTA form is sent to WIPO. [ Note 6.]

With oppositions to applications that have other filing bases and with petitions to cancel, in the rare circumstances that they are filed on paper, (accompanied by a Petition to the Director and the required fee), they need not follow a particular format, but must meet the requirements of 37 C.F.R. § 2.126(b)  for paper submissions and include the necessary information.

The complaint (which in ESTTA is the attachment) should include the following information:

Heading: The complaint should bear at its top the heading "IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD."

Identification of subject application or registration: The heading should be followed by information identifying the application or registration that is the subject of the complaint with the wording "Serial No.______" for an opposition or "Registration No.______" for a petition to cancel.

Name of proceeding: The application or registration number should be followed by the name of the proceeding (i.e., "ABC Corporation v. XYZ Company") and the wording "Opposition No. ______" or "Cancellation No. ______."

Title of Paper: The title should describe the nature of the paper (i.e., "Notice of Opposition" or "Petition to Cancel").

Plaintiff information: The complaint should also include plaintiff’s name, entity type (i.e., individual, partnership, corporation, association, etc.), and business address; the names of the partners, if the plaintiff is a partnership, or the state or country of incorporation, if the plaintiff is a corporation.

Registrant information in petition to cancel:A petition to cancel should indicate the name and correspondence address and the current email address(es) of the current owner of record of the registration. [ Note 7.] To determine the correspondence address of the owner of the registration, the petitioner may consult the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. [ Note 8.] The TSDR display of information includes a tab for "status," a tab for "documents" and a link to "View Assignments." The petitioner may consult the assignments database to determine whether the registration has been assigned. If the registration has been assigned, and the assignment has been recorded, the assignee is considered the owner of record and the complaint should name the assignee as defendant in the proceeding. See TBMP § 309.02(c)(2). Plaintiffs are encouraged to provide information about a new owner, which may not be in the Office’s TSDR database, even if there is a domestic representative. [ Note 9.] Also, plaintiffs are encouraged to provide current contact information for attorneys, or in the case of registrations under § 66(a) of the Act, current contact information for the designated representative for the international registration, which may not be in the Office’s TSDR database. [ Note 10.] Providing such information facilitates the Board’s location and service of the proper parties in order to avoid defaults that may subsequently be set aside and thus prolong the process. [ Note 11.]

Substance of complaint: The complaint must also include a pleading of the substance (i.e., standing and grounds) of the complaint. See TBMP § 309.03.

Signature: The complaint must be signed and include a description of the capacity in which the signing individual signs, e.g., attorney for plaintiff, plaintiff (if plaintiff is an individual), partner of plaintiff (if plaintiff is a partnership), officer of plaintiff identified by title (if plaintiff is a corporation), etc. See TBMP § 309.02(b).

NOTES:

 1.   37 C.F.R. § 2.101(b)(1); 37 C.F.R. § 2.111(c)(1); 37 C.F.R. § 2.126(a).

 2.   37 C.F.R. § 2.101(b)(2)  and 37 C.F.R. § 2.111(c)(2).

 3.   See PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB 2005) ("Since ESTTA’s inception, the Board has viewed the ESTTA filing form and any attachments thereto as comprising a single document or paper being filed with the Board"). See also CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1961-62 (TTAB 2011); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011); Schott AG v. Scott, 88 USPQ2d 1862, 1863 n.3 (TTAB 2008) ("[T]he ESTTA generated filing form … is considered part of the plaintiff’s initial pleading"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) (ESTTA cover sheet is considered part of the complete opposition pleading).

 4.   37 C.F.R. § 2.101(b)(3).

 5.   See Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011).

 6.   See CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011).

 7.   See 37 C.F.R. § 2.112(a). See also Informix Software Inc. v. Oracle Corp., 40 USPQ2d 1153, 1155 (N.D. Cal. 1996) (the proper defendant in suit for cancellation of a registration is the owner of that registration, not an exclusive licensee).

 8.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42243 (August 1, 2007).

 9.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69958 (October 7, 2016).

 10.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69958 (October 7, 2016).

 11.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69958 (October 7, 2016).

TBMP 309.02(b)    Signature of Complaint

The complaint need not be verified, but it must be signed by the plaintiff or by the plaintiff’s attorney, as specified in 37 C.F.R. § 11.1, or other authorized representative, as specified in 37 C.F.R. § 11.14(b). [ Note 1.] See TBMP § 106.02 and TBMP § 114.06. Electronic signatures pursuant to 37 C.F.R. § 2.193(c)  are required for complaints submitted electronically via ESTTA. [ Note 2.] The Board views the electronic signature on the ESTTA filing form as pertaining to all attachments thereto. [ Note 3.] Thus, a plaintiff’s electronic signature on the ESTTA filing form serves as its signature for the entire complaint being filed, including in the absence of a signature on any attachment to the filing form. [ Note 4.]

If an attorney signs the complaint, it need not be accompanied by a written power of attorney, but if a written power of attorney is filed, the plaintiff must sign it. If a plaintiff signing for itself is a partnership, the signature must be made by a partner. If a plaintiff signing for itself is a corporation or similar juristic entity, the signature must be made by an officer of the plaintiff who has authority to sign for the plaintiff and whose title is given. The signature should be accompanied by a description of the capacity in which the signing individual signs (i.e., as plaintiff, if plaintiff is an individual; as counsel for plaintiff; as a partner of plaintiff, if plaintiff is a partnership; as an officer of plaintiff identified by title, if plaintiff is a corporation; etc.).

Although a complaint must be signed, an unsigned or improperly signed complaint will not be refused consideration for that reason if a signed copy is submitted to the Board within the time limit set in the notification of this defect by the Board. [ Note 5.] See TBMP § 106.02.

However, Trademark Act § 14, 15 U.S.C. § 1064, limits, after a specified five-year period, the grounds on which certain Principal Register registrations may be cancelled. [ Note 6.] See TBMP § 307.02(a). If an unsigned petition to cancel such a registration is filed prior to the expiration of the five-year period, but a signed copy thereof is not filed until after the expiration of the period, the petition can be entertained by the Board only to the extent that it pleads a ground for cancellation permitted after the expiration of the five-year period. [ Note 7.] Cf. TBMP § 308.02(b). Although whenever it comes to the Board’s attention, the Board makes every effort to notify petitioners of unsigned complaints before the expiration of any applicable statutory deadline, so that the informality may be corrected prior to the deadline, the Board has no obligation to do so, and cannot assume the burden of discovering filing errors within any specified time. [ Note 8.]

NOTES:

 1.   See 37 C.F.R. § 2.101(b)  and 37 C.F.R. § 2.111(b). See also Media Online Inc. v. El Clasificado, Inc., 88 USPQ2d 1285, 1286 n.3 (TTAB 2008). Cf. Birlinn Ltd. v. Stewart, 111 USPQ2d 1905 (TTAB 2014) (signatory not authorized under Trademark Rules, Board applies opportunity to cure provision in § 2.119(e) to improperly signed papers).

 2.   See 37 C.F.R. § 2.101(b)  and 37 C.F.R. § 2.111(b).

 3.   PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1927 (TTAB 2005) ("Since ESTTA’s inception, the Board has viewed the ESTTA filing form and any attachments thereto as comprising a single document or paper being filed with the Board.").See also CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1961-62 (TTAB 2011); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011); Schott AG v. Scott, 88 USPQ2d 1862, 1863 n.3 (TTAB 2008) ("[T]he ESTTA generated filing form … is considered part of the plaintiff’s initial pleading."); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) (ESTTA cover sheet is considered part of the complete opposition pleading).

 4.   PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB 2005).

 5.   See 37 C.F.R. § 2.119(e); Birlinn Ltd. v. Stewart, 111 USPQ2d 1905 (TTAB 2014) (signatory not authorized under Trademark Rules, Board applies opportunity to cure provision in § 2.119(e) to improperly signed papers).

 6.   See Trademark Act § 14, 15 U.S.C. § 1064; 37 C.F.R. § 2.111(b).

 7.   Cf., e.g., cases involving former requirement for verification, Williamson-Dickie Manufacturing Co. v. Mann Overall Co., 359 F.2d 450, 149 USPQ 518, 520 (CCPA 1966) (the filing date of a petition to cancel is the date of receipt in the USPTO of the verified petition and filing fee); Texas Instruments Inc. v. Conklin Instrument Corp., 161 USPQ 740, 741 (TTAB 1969) (unverified petition timely filed but ineffective; verified substitute petition untimely). Cf. also In re L.R. Sport Inc., 25 USPQ2d 1533, 1534 (Comm’r 1992) (timely payment of filing fee for statement of use is statutory and cannot be waived).

 8.   Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (regarding rejection of renewal application); In re L.R. Sport Inc., 25 USPQ2d 1533, 1534 (Comm’r 1992) (regarding rejection of statement of use); and In re Application Papers Filed November 12, 1965, 152 USPQ 194, 195 (Comm’r 1966) (regarding insufficient filing fee for patent application).

TBMP 309.02(c)    Service of Complaint

A Board proceeding commences when an opposer or petitioner files its complaint with the Board, together with the required fee. [ Note 1.]

Service of the complaint is provided by the Board in conjunction with the notice of institution. [ Note 2.]

For information on service of the opposition on applicant, see TBMP § 309.02(c)(1). For information on service of the petition to cancel on respondent, see TBMP § 309.02(c)(2). For information on service of copies of an application for concurrent use registration, see TBMP § 1106.04.

NOTES:

 1.   See 37 C.F.R. § 2.101(a)  and 37 C.F.R. § 2.111(a).

 2.   See 37 C.F.R. § 2.105(a)  and 37 C.F.R. § 2.113(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) ("[T]he notice of institution constitutes service and will include a web link or web address to access the electronic proceeding Record.").

TBMP 309.02(c)(1)    Service of Opposition on Applicant

37 C.F.R. § 2.105 Notification to parties of opposition proceeding(s).

(a) When an opposition in proper form (see §§ 2.101 and 2.104) has been filed with the correct fee(s), and the opposition has been determined to be timely and complete, the Trademark Trial and Appeal Board shall prepare a notice of institution, which shall identify the proceeding as an opposition, number of the proceeding, and the application(s) involved; and the notice shall designate a time, not less than thirty days from the mailing date of the notice, within which an answer must be filed. The notice, which will include a web link or web address to access the electronic proceeding record, constitutes service of the notice of opposition to the applicant.

37 C.F.R. § 2.101(e) The filing date of an opposition is the date of electronic receipt in the Office of the notice of opposition, and required fee. In the rare instances that filing by paper is permitted under these rules, the filing date will be determined in accordance with §§ 2.195 through 2.198.

37 C.F.R. § 2.119  Service and signing.

(a) Except for the notice of opposition or the petition to cancel, every submission filed in the Office in inter partes cases, … must be served upon the other party or parties.

An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee. [ Note 1.]

When an opposer files its notice of opposition with the Board, the opposition, including any exhibits, need not be served by the opposer on the defendant. Rather, the Board effects service of the complaint on the defendant. The Board provides notice to the defendant of the opposition proceeding by providing, in the notice of institution, a web link or web address to access the electronic proceeding record, and this constitutes service of the notice of opposition. [ Note 2.] Applicants will receive notification of the Board proceeding by email if Applicant authorized email communication with the Office. [ Note 3.]

As a reminder, 37 C.F.R. § 2.18(b)(1)  requires applicants and parties to proceedings to promptly notify the Office of any change in physical address or email address. In addition, parties are reminded of the importance of maintaining correct and current email address information with the Office and taking steps to ensure that Office emails are not blocked by servers or spam filters, or diverted to junk mail folders.

The filing date of the notice of opposition is the date of electronic receipt in the Office of the notice and the required fee. [ Note 4.] However, in the rare circumstance that a notice of opposition is filed on paper, and the paper filing is permitted by the Director, on petition, if the notice of opposition is filed by the "Priority Mail Express® Post Office to Addressee" service of the United States Postal Service (USPS) in accordance with 37 C.F.R. § 2.198, then the filing date is the date the notice of opposition was deposited with the USPS [ Note 5.], unless the "date in" date cannot be determined, in which case the date the notice is received in the Office is considered the filing date of the opposition. [ Note 6.] The Certificate of Mailing procedure described in 37 C.F.R. § 2.197  and the "Priority Mail Express® procedure described in 37 C.F.R. § 2.198  are available for the filing of a notice of opposition on paper. [ Note 7.] Facsimile transmission of the notice of opposition is not permitted, and if submitted, will not be accorded a date of receipt. [ Note 8.]

For information on filing fees see TBMP § 308. For information on the service of other filings submitted to the Board, see TBMP § 110.03 and TBMP § 113.01.

NOTES:

 1.   37 C.F.R. § 2.101(a).

 2.   37 C.F.R. § 2.105(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) ("[T]he notice of institution constitutes service and will include a web link or web address to access the electronic proceeding Record.").

 3.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69953 (October 7, 2016).

 4.   See 37 C.F.R. § 2.101(e).

 5.   See 37 C.F.R. § 2.198(a)(1).

 6.   See 37 C.F.R. § 2.198(a)(2).

 7.   See 37 C.F.R. § 2.197(a)  and 37 C.F.R. § 2.198(a).

 8.   37 C.F.R. § 2.195(d)(3); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008) (untimely opposition dismissed as a nullity).

TBMP 309.02(c)(2)    Service of Petition on Respondent

37 C.F.R. § 2.111 Filing petition for cancellation.

(a) A cancellation proceeding is commenced by filing in the Office a timely petition for cancellation with the required fee.

37 C.F.R. § 2.113  Notification of cancellation proceeding.

(a) When a petition for cancellation in proper form (see §§ 2.111 and 2.112) has been filed and the correct fee has been submitted, the Trademark Trial and Appeal Board shall prepare a notice of institution which shall identify the proceeding as a cancellation, number of the proceeding and the registration(s) involved; and shall designate a time, not less than thirty days from the mailing date of the notice, within which an answer must be filed. The notice, which will include a web link or web address to access the electronic proceeding record, constitutes service to the registrant of the petition to cancel.

37 C.F.R. § 2.119 Service and signing.

(a) Except for the notice of opposition or the petition to cancel, every submission filed in the Office in inter partes cases, … must be served upon the other party or parties.

* * * *

A cancellation proceeding is commenced by filing in the Office a timely petition to cancel with the required fee. [ Note 1.]

When petitioner files its petition to cancel with the Board, the petitioner need not serve a copy of the petition on the owner of record for the registration at the owner’s address of record in the Office. Rather, the Board effects service of the complaint on defendant in a cancellation proceeding. The Board provides notice to the defendant of the cancellation proceeding by providing, in the notice of institution, a web address to access the electronic proceeding record, and this constitutes service of the petition to cancel. [ Note 2.] Presently, in cancellation proceedings, the Board will serve defendants by U.S. mail, pending system enhancements to facilitate email service at a later date. [ Note 3.]

Please Note: With respect to a registered extension of protection under Trademark Act § 66(a), 15 U.S.C. § 1141f, while the Board will effect service on the owner of the registration, see 37 C.F.R. § 2.113(b), the Board will endeavor to forward a courtesy copy of the notice to the international registration holder’s designated representative which will include a web link or web address to access the electronic proceeding record. [ Note 4.]

As a reminder, 37 C.F.R. § 2.18(b)(1)  requires registrants and parties to proceedings to promptly notify the Office of any change in physical address or email address. In addition, parties are reminded of the importance of maintaining correct and current email address information with the Office and taking steps to ensure that Office emails are not blocked by servers or spam filters, or diverted to junk mail folders.

The filing date of the petition is the date of electronic receipt in the Office of the petition and the required fee. [ Note 5.] However, in the rare circumstance that a petition to cancel is filed on paper and the paper filing is permitted by the Director on petition, if the petition is filed by the "Priority Mail Express® Post Office to Addressee" service of the United States Postal Service ("USPS") in accordance with 37 C.F.R. § 2.198, then the filing date is the date the petition to cancel was deposited with the USPS, [ Note 6.], unless the "date in" date cannot be determined, in which case the date the petition is received in the Office is considered the filing date of the petition to cancel. [ Note 7.] The Certificate of Mailing procedure described in 37 C.F.R. § 2.197  and the "Priority Mail Express®" procedure described in 37 C.F.R. § 2.198  are available for the filing of a petition to cancel. [ Note 8.]

For information on filing fees, see TBMP § 308. For information on the service of other filings submitted to the Board, see TBMP § 110.03 and TBMP § 113.01.

NOTES:

 1.   See 37 C.F.R. § 2.111(a).

 2.   See 37 C.F.R. § 2.113(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) ("[T]he notice of institution constitutes service and will include a web link or web address to access the electronic proceeding record.").

 3.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69954 (October 7, 2016).

 4.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69958 (October 7, 2016).

 5.   37 C.F.R. § 2.111 (e).

 6.   See 37 C.F.R. § 2.198(a)(1).

 7.   See 37 C.F.R. § 2.198(a)(2).

 8.   See 37 C.F.R. § 2.197(a)  and 37 C.F.R. § 2.198(a).