TMEP 1503.04: Extension of Time to Oppose

October 2017 Edition of the TMEP

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1503.04    Extension of Time to Oppose

Requests for extensions of time to oppose are handled by the Board. See TBMP Chapter 200.

A request for an extension of time must be filed within thirty days after the date of publication in the Official Gazette, or within an extension period granted by the Board. 15 U.S.C. §1063(a); 37 C.F.R. §2.102(c); TBMP §202.01.  The time within which to file a request for extension of time to oppose is set by statute and may not be extended or waived. In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477 (Comm'r Pats. 1994 ); In re Cooper, 209 USPQ 670 (Comm’r Pats. 1980).

A request for extension of time to oppose an application based on §1 or §44 of the Trademark Act must be filed through ESTTA, at http://estta.uspto.gov/. 37 C.F.R. §2.102(a)(1).  If ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a request to extend the opposition period for an application based on §1 or §44 may be filed in paper form. Id. The paper extension request 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. 37 C.F.R. §2.102(a)(2).

A request for extension of time to oppose a §66(a) application always must be filed through ESTTA and may not be filed in paper form under any circumstances. 37 C.F.R §2.102(a)(1); see In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005).

For additional information regarding filing a request for an extension of time to oppose, see TBMP Chapters 200 and 300.

When a registration is issued, inadvertently, from an application that was the subject of an unexpired extension of time to oppose on the date of registration, the Board is without authority to cancel the registration and restore it to application status. See TBMP §216.   In this situation, a request to have the registration cancelled as inadvertently issued should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy.  See TMEP §1609.10(a) regarding correction of USPTO errors.