TMEP 1503.01: Filing a Notice of Opposition

October 2017 Edition of the TMEP

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1503.01    Filing a Notice of Opposition

Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Board, and paying the required fee, within thirty days after the date of publication, or within an extension period granted by the Board for filing an opposition. See15 U.S.C. §1063; 37 C.F.R §§2.101 -2.107; TBMP §303.

The notice of opposition must include a concise statement of the reasons for the opposer’s belief that the opposer would be damaged by the registration of the opposed mark, and must state the grounds for opposition. 37 C.F.R. §2.104(a); TBMP §309.03(a)(2).

A notice of opposition to an application based on §1 or §44 of the Trademark Act must be filed through the Electronic System for Trademark Trials and Appeals ("ESTTA") at http://estta.uspto.gov/. 37 C.F.R. §2.101(b)(1). If ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an opposition to an application based on §1 or §44 may be filed in paper form. 37 C.F.R §2.101(b)(2). The paper opposition must be filed by the due date set forth in 37 C.F.R §2.101(c) and must be accompanied by a petition to the Director under 37 C.F.R. §2.146, with the required fees and a showing that ESTTA was unavailable because of technical problems or that extraordinary circumstances are present. Id.; see DFC Expo LLC, 121 USPQ2d 1903, 1906 (TTAB 2017).

A notice of opposition to an application based on §66(a) of the Act always mustbe filed through ESTTA and may not be filed in paper form under any circumstances. 37 C.F.R. §2.101(b)(3); see In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005); TBMP §309.01.

A notice of opposition does not have to be verified, and it may be signed by either the opposer or the opposer’s attorney. 37 C.F.R. §2.101(b); TBMP §309.02(b).