TMEP 1503.05: Opposition to §66(a) Applications

October 2017 Edition of the TMEP

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1503.05    Opposition to §66(a) Applications

Section 68(a)(2) of the Trademark Act, 15 U.S.C. §1141h(a)(2), provides that a request for extension of protection is subject to opposition under §13 of the Trademark Act, 15 U.S.C. §1063.  The USPTO must notify the International Bureau of the World Intellectual Property Organization ("IB") within 18 months of the date the IB sends the request for extension of protection to the USPTO of: (1) a notification of refusal based on the filing of an opposition; or (2) a notification of the possibility that an opposition may be filed after expiration of the 18-month period. 15 U.S.C. §1141h(c)(1)(B)-(C); see TMEP §§1904.03, 1904.04.

An opposition to a §66(a) application, or a request for extension of time to oppose a §66(a) application, must be filed through ESTTA and may not be filed in paper form under any circumstances. 37 C.F.R. §§2.101(b)(3), 2.102(a)(1); see In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005).

Once filed, an opposition to a §66(a) application may not be amended to add to the grounds for opposition, to add to the goods/services opposed, or to add a joint opposer. 37 C.F.R. §§2.104(c), 2.107(b). The opposition is limited to the goods, services, grounds, and named opposers set forth in the ESTTA-generated opposition form cover sheet. 37 C.F.R. §§2.104(c), 2.107(b) ("The grounds for opposition, the goods or services opposed, and the named opposers are limited to those identified in the ESTTA cover sheet regardless of what is contained in any attached statement.") CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1962 (TTAB 2011); Hunt Control Sys., Inc. v. Koninklijke Philips Elec. N.V., 98 USPQ2d 1558, 1561-62 (TTAB 2011); see TBMP §315.