1503.06 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. The United States Patent and Trademark Office ("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. See TMEP §§1904.03 et seq. and 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. 37 C.F.R. §§2.101(b)(2) and §2.102(a)(2). See In re Bšrlind Gesellschaft fŸr 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 or to add to the goods or services opposed. 37 C.F.R. 2.107(b).