TMEP 1904.04: Opposition

This is the October 2015 Edition of the TMEP

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1904.04    Opposition

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. As noted above, the USPTO must notify the 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.

The notice must state the dates on which the opposition period begins and ends, if known. If the dates are unknown, the USPTO must communicate them to the IB “at the latest at the same time as any notification of a provisional refusal based on an opposition.” Common Reg. 16(1)(b).

Any notification of refusal on the basis of opposition must be received by the IB within 7 months after the beginning of the opposition period or within one month after the end of the opposition period, whichever is earlier. 15 U.S.C. §11411h(c)(2); Article 5(2)(c)(ii).

An opposition to a §66(a) application must be filed through the Electronic System for Trademark Trials and Appeals (“ESTTA”). 37 C.F.R. §2.101(b)(2); 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 change or add to the grounds for opposition, or to add to the goods or services opposed. 37 C.F.R. §2.107(b). The scope of the opposition is limited to those grounds designated, and those goods/services identified, on the ESTTA-generated opposition form. CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1962-63 (TTAB 2011); Hunt Control Sys., Inc. v. Koninklijke Philips Elec. N.V., 98 USPQ2d 1558, 1561-62 (TTAB 2011). The notice of opposition must also include all fees for each party opposer to oppose the registration in all classes specified in the opposition. 37 C.F.R. §2.101(d)(2).

Request for Extension of Time to Oppose. A request for extension of time to oppose a §66(a) application must be filed through ESTTA. 37 C.F.R. §2.102(a)(2).

No more than three requests to extend the time for filing an opposition may be filed. The time for filing an opposition may not be extended beyond 180 days from the date of publication. 37 C.F.R. §2.102(c).

See TMEP §§1503 et seq. for further information about oppositions.