TRADEMARK TRIAL
AND
APPEAL BOARD
MANUAL OF
PROCEDURE
(TBMP)
Second Edition
June 2003
Revision 1
March 2004
United States Patent and Trademark Office
PREFACE TO THE SECOND EDITION
When we issued the first edition of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) in 1995, we expressed the hope that it would serve as a comprehensive and ready resource for practitioners. That has proved to be so, if we can judge by the enthusiastic reception the TBMP has received. With this second edition, we hope to make a good thing better.
This edition of the TBMP reflects changes in TTAB practice resulting from statutory changes and new rules promulgated since 1995 and, in particular, from the changes made in many of the TTAB rules in 1998. We have revised the format of the manual to add a comprehensive table of contents for each chapter. We have shifted case citations to footnotes to make the text easier to read and have enhanced case citations to include parenthetical explanations of the significance of the cited cases. We have added appendices with additional case law citations. We have reorganized some of the chapters to help users locate relevant information more quickly and have expanded some sections to explain TTAB practice more clearly or to reflect changes in practice.
This edition of the manual reflects also the Office’s commitment to electronic government. We will not publish this edition of the TBMP in paper form but will make it available only on line at the TTAB web page of the USPTO web site. By using electronic technology, we can update the manual more quickly and, we hope, enhance its ultimate value to practitioners.
Special thanks to TTAB Interlocutory Attorney Linda Skoro and Administrative Trademark Judge Terry Holtzman, whose countless hours of work and applied creativity have made this edition of the TBMP not a mere update of the first edition but, in many respects, a new and even more useful guide to TTAB practice.
J. David Sams
Chief Administrative Trademark Judge
Trademark Trial and Appeal Board
May 1, 2003
INTRODUCTION
The purpose of this manual is to provide practitioners with basic information generally useful for litigating cases before the Trademark Trial and Appeal Board. The manual does not modify, amend, or serve as a substitute for any existing statutes, rules, or decisional law and is not binding upon the Board, its reviewing tribunals, the Director, or the USPTO. Cf., In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989).
Rather, the manual describes current practice and procedure under the applicable authority, as of the date the manual is issued.
The manual is devoted primarily to opposition and cancellation proceedings, the two most common types of inter partes proceedings before the Board. Nonetheless, the manual includes a chapter of general information useful for all proceedings and chapters on interference proceedings, concurrent use proceedings, and ex parte appeals to the Board.
The manual will be updated periodically. In particular, after implementation of the Madrid Protocol, the Board will update the manual to reflect the resulting changes in Board practice.
The Board welcomes suggestions for improving the content of the manual. Suggestions and comments should be addressed as follows:
Commissioner for Trademarks
Attention: Chief Administrative Trademark Judge
2900 Crystal Drive
Arlington, Virginia 22202-3514
The title of the manual is abbreviated as "TBMP". A citation to a section of the manual may be written as "TBMP § _____" (e.g. "TBMP § 110.01," "TBMP § 113.06," etc.).
101.01 Statute and Rules of Practice
All proceedings before the Trademark Trial and Appeal Board ("TTAB" or "Board") are governed by the Lanham Trademark Act of 1946, as amended, ("Act of 1946" or "Act"), 15 U.S.C. § 1051 et seq.; the rules of practice in trademark cases (commonly known as the Trademark Rules of Practice), which may be found in Parts 2 and 7 of Title 37 of the Code of Federal Regulations ("CFR"); the rules pertaining to assignments in trademark cases, which may be found in Parts 3 and 7 of 37 CFR; and the rules relating to representation of others before the United States Patent and Trademark Office which may be found in Part 10 of 37 CFR. The United States Patent and Trademark Office (“USPTO” or “Office”) rules governing procedure in inter partes proceedings before the Board are adapted, in large part, from the Federal Rules of Civil Procedure, with modifications due primarily to the administrative nature of Board proceedings.1
A copy of Title 37 of the CFR may be obtained at a nominal cost from the U.S. Government Printing Office. Title 37 of the CFR may also be found on the Internet at the Government Printing Office web site at: www.access.gpo.gov/nara/cfr or at the USPTO web site at: www.uspto.gov .
Information regarding proposed and final rule changes to Title 37 is also posted on the Office web site at www.uspto.gov .
101.02 Federal Rules
Inter partes proceedings before the Board are also governed by the Federal Rules of Civil Procedure ("Fed. R. Civ. P."), except as otherwise provided in the Trademark Rules of Practice, and "wherever applicable and appropriate";2 and by the Federal Rules of Evidence ("Fed. R. Evid.").3
There is no provision in the Trademark Rules of Practice concerning the applicability of the Federal Rules of Evidence to ex parte appeals before the Board. However, certain of the principles embodied in the Federal Rules of Evidence are applied by the Board, in practice, in evaluating the probative value of evidence submitted in ex parte cases.4
101.03 Decisional Law
Proceedings before the Board are also governed, to a large extent, by precedential decisions in prior cases. These decisions include those of the Board itself, as well as the decisions of the Court of Appeals for the Federal Circuit (which determines appeals from decisions of the Board); the Court of Customs and Patent Appeals (predecessor of the Court of Appeals for the Federal Circuit); and the Director of The United States Patent and Trademark Office (formerly the Commissioner of Patents and Trademarks), who determines petitions seeking review of Board actions on procedural matters.
Decisions of the Board, the Director, and the Court of Appeals for the Federal Circuit appear in the United States Patent Quarterly ("USPQ"), a periodical publication of The Bureau of National Affairs, Inc., Washington, D.C., and may also be found in Reed Elsevier, Inc.'s "LEXIS" legal database, and in the Intellectual Property Library of West Publishing Company's WESTLAW database.
Decisions that are designated by the Board "citable as precedent" or "for publication in full" are citable as precedent. Decisions which are not so designated, or which are designated for publication only in digest form, are not citable authority.5 A nonprecedential or digest decision will, however, be considered in determining issues of claim preclusion, issue preclusion, judicial estoppel, law of the case, or the like, provided that (1) a party to the pending Board proceeding, or its privy, was also a party to the prior proceeding, and (2) a complete copy of the decision is submitted.6
101.04 Director’s Orders and Notices
Occasionally, the Director of the United States Patent and Trademark Office or another USPTO official acting under the Director’s authority, publishes in the Official Gazette an Order or Notice relating to a particular Office policy, practice, procedure, or other such matter of interest to the public. Some of these Orders and Notices affect practice and procedure before the Trademark Trial and Appeal Board. Such notices are also posted on the Office’s web site at www.uspto.gov.
102.01 Jurisdiction of Board
The Trademark Trial and Appeal Board is an administrative tribunal of the United States Patent and Trademark Office within the Office of General Counsel. The Board is empowered to determine only the right to register.7
The Board is not authorized to determine the right to use, nor may it decide broader questions of infringement or unfair competition.8
Similarly, the Board, being an administrative tribunal, has no authority to declare any portion of the Act of 1946, or any other act of Congress, unconstitutional.9
102.02 Types of Board Proceedings
The Board has jurisdiction over four types of inter partes proceedings, namely, oppositions, cancellations, interferences, and concurrent use proceedings.
An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a registration of a mark on the Principal Register. "Any person who believes that he would be damaged by the registration of a mark" may file an opposition thereto, but the opposition may be filed only as a timely response to the publication of the mark, under Section 12(a) of the Act, 15 U.S.C. § 1062(a), in the Official Gazette of the United States Patent and Trademark Office.10
A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration of a trademark. A petition for cancellation may only be filed after the issuance of the registration. A petition for cancellation may be filed by "any person who believes that he is or will be damaged by the registration" of the mark.11
An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more registrations which are in conflict), is entitled to registration.12 The proceeding is declared by the Office only upon petition to the Director showing extraordinary circumstances therefor, that is, that the party who filed the petition would be unduly prejudiced without an interference.13 Ordinarily, the availability of an opposition or cancellation proceeding is deemed to prevent any undue prejudice from the unavailability of an interference proceeding.14 An interference that has been declared by the Director is not instituted by the Board until after all of the marks that are to be involved in the proceeding have been published in the Official Gazette for opposition.15
A concurrent use proceeding is a proceeding in which the Board determines whether one or more applicants is entitled to a concurrent registration, that is, a registration with conditions and limitations, fixed by the Board, as to the mode or place of use of the applicant's mark or the goods and/or services on or in connection with which the mark is used (usually, a concurrent registration is restricted as to the territory which it covers).16 The proceeding may be generated only through the filing of an application for registration as a lawful concurrent user, and is instituted by the Board only after each of the one or more involved applications has been published for opposition in the Official Gazette, and all oppositions thereto (if any) have been withdrawn or dismissed.17
The Board also has jurisdiction over ex parte appeals, that is, appeals from an examining attorney's final refusal to register a mark in an application.18
102.03 General Description of Board Proceedings
An inter partes proceeding before the Board is similar to a civil action in a Federal district court. There are pleadings (at least in an opposition or cancellation proceeding); a wide range of possible motions; discovery; and briefs, followed by a decision on the case.19 However, because the Board is an administrative tribunal, its rules and procedures necessarily differ in some respects from those prevailing in the Federal district courts.20 The principal difference is that proceedings before the Board are conducted in writing, and the Board's actions in a particular case are based upon the written record therein. For example, the Board does not preside at the taking of testimony. Rather, all testimony is taken out of the presence of the Board during the assigned testimony periods, and the written transcripts thereof, together with any exhibits thereto, are then filed with the Board. Indeed, a party to a proceeding before the Board need never come to the offices of the Board at all, unless the Board requests that the parties meet with the Board at its offices for a pre-trial conference pursuant to 37 CFR § 2.120(i)(2), or unless the party wishes to argue its case at oral hearing (an oral hearing is held only if requested by a party to the proceeding).
An ex parte appeal, being appellate in nature, is a much simpler and shorter procedure, involving only the filing of briefs by the applicant and examining attorney, and, if requested by the applicant, an oral hearing.
The Board includes both interlocutory attorneys and administrative trademark judges (known also as Board members). Interlocutory motions, requests, and other matters not actually or potentially dispositive of a proceeding may be acted upon by a single Board judge or by a single interlocutory attorney to whom such authority has been delegated.21 Decisions on the case, and on complex or contested motions that are potentially dispositive of the case, are rendered by a panel of at least three Board judges.22 Stipulations or consented (or uncontested) motions to dispose of the proceeding in a certain manner may be decided per curiam by the Board.
The Board is located at 2900 Crystal Drive, Ninth Floor, Arlington, Virginia 22202-3514. The mailing address of the Board is Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3514.23
37 CFR § 2.191 All business with the Office should be transacted in writing. The personal appearance of applicants or their representatives at the Office is unnecessary. The action of the Office will be based exclusively on the written record. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.
All business with the Board should be transacted in writing. The personal attendance of parties or their attorneys or other authorized representatives at the offices of the Board is unnecessary, except in the case of a pre-trial conference as provided in 37 CFR § 2.120(i)(2), or upon oral argument at final hearing, if a party so desires, as provided in 37 CFR § 2.129. Decisions of the Board will be based exclusively on the written record before it.24
37 CFR § 10.93(b) In an adversary proceeding, including any inter partes proceeding before the Office, a practitioner shall not communicate, or cause another to communicate, as to the merits of the cause with a judge, official, or Office employee before whom the proceeding is pending, except:
(1) In the course of official proceedings in the cause.
(2) In writing if the practitioner promptly delivers a copy of the writing to opposing counsel or to the adverse party if the adverse party is not represented by a practitioner.
(3) Orally upon adequate notice to opposing counsel or to the adverse party if the adverse party is not represented by a practitioner.
(4) As otherwise authorized by law.
Parties or their attorneys or other authorized representatives may telephone the Board, or come to the offices of the Board, to inquire about the status of a case or to ask for procedural information, but not to discuss the merits of a case or of any particular issue. The telephone number of the Board is (703) 308-9300. If an inquiry involves a particular case, the person making the inquiry should be prepared to give the number of the proceeding or application in question.
106.01 Identification of Submissions
A document filed in a proceeding before the Board should bear at its top the heading "IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD," followed by the name and number of the inter partes proceeding (or, in the case of an ex parte appeal, the application) to which it relates.25 The document should also include a title describing its nature, e.g., "Notice of Opposition," "Answer," "Motion to Compel," "Brief in Opposition to Respondent's Motion for Summary Judgment," "Notice of Reliance."
Documents filed in an application which is the subject of an inter partes proceeding before the Board should be filed with the Board, and should bear at the top of its first page both the application serial number, and the inter partes proceeding number and title. Similarly, requests under Section 7 of the Act, 15 U.S.C. § 1057, to amend, correct, or surrender a registration which is the subject of a Board inter partes proceeding, and any new power of attorney, designation of domestic representative, or change of address submitted in connection with such a registration, should be filed with the Board, and should bear at the top of its first page both the registration number, and the inter partes proceeding number and title.26
106.02 Signature of Submissions
37 CFR § 2.119(e) Every paper filed in an inter partes proceeding, and every request for an extension of time to file an opposition, must be signed by the party filing it, or by the party's attorney or other authorized representative, but an unsigned paper will not be refused consideration if a signed copy is submitted to the Patent and Trademark Office within the time limit set in the notification of this defect by the Office.
37 CFR § 10.14(e) No individual other than those specified in paragraphs (a), (b), and (c) of this section will be permitted to practice before the Office in trademark cases. Any individual may appear in a trademark or other non-patent case in his or her own behalf. Any individual may appear in a trademark case for (1) a firm of which he or she is a member or (2) a corporation or association of which he or she is an officer and which he or she is authorized to represent, if such firm, corporation, or association is a party to a trademark proceeding pending before the Office.
37 CFR § 10.18(a) For all documents filed in the Office in patent, trademark, and other non-patent matters, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Patent and Trademark Office must bear a signature, personally signed by such practitioner, in compliance with § 1.4(d)(1) of this chapter.
(b) By presenting to the Office (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that-
(1) All statements made therein of the party's own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Patent and Trademark Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or makes any false, fictitious or fraudulent statements or representations, or makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001, and that violations of this paragraph may jeopardize the validity of the application or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom; and
(2) To the best of the party's knowledge, information and belief, formed after an inquiry reasonable under the circumstances, that-
(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of prosecution before the Office;
(ii) The claims and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
(c) Violations of paragraph (b)(1) of this section by a practitioner or non-practitioner may jeopardize the validity of the application or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom. Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions as deemed appropriate by the Director, or the Director's designee, which may include, but are not limited to, any combination of-
(1) Holding certain facts to have been established;
(2) Returning papers;
(3) Precluding a party from filing a paper, or presenting or contesting an issue;
(4) Imposing a monetary sanction;
(5) Requiring a terminal disclaimer for the period of the delay; or
(6) Terminating the proceedings in the Patent and Trademark Office.
(d) Any practitioner violating the provisions of this section may also be subject to disciplinary action. See § 10.23(c)(15).
37 CFR § 2.193(c)
(1) Each piece of correspondence that requires a person's signature, must:
(i) Be an original, that is, have an original signature personally signed in permanent ink by that person; or
(ii) Be a copy, such as a photocopy or facsimile transmission (§ 2.195(c)), of an original. In the event that a copy of the original is filed, the original should be retained as evidence of authenticity. If a question of authenticity arises, the Office may require submission of the original; or
(iii) Where an electronically transmitted trademark filing is permitted or required, the person who signs the filing must either:
(A) Place a symbol comprised of numbers and/or letters between two forward slash marks in the signature block on the electronic submission; or
(B) Sign the verified statement using some other form of electronic signature specified by the Director.
(2) The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any document by a party, whether a practitioner or non-practitioner, constitutes a certification under § 10.18(b) of this chapter. Violations of §10.18(b)(2) of this chapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 10.18(c) of this chapter. Any practitioner violating § 10.18(b) may also be subject to disciplinary action. See §§ 10.18(d) and 10.23(c)(15).
37 CFR § 2.193(d) When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.
Every document filed in an inter partes or ex parte proceeding before the Board, and every request for an extension of time to file an opposition, must be signed by the party filing it, or by the party's attorney or other authorized representative, as appropriate.27
Documents filed through the electronic filing systems available at the Board do not require a conventional signature. Electronic signatures pursuant to 37 CFR § 2.193(c)(1)(iii) are required for electronic filings.28 The party or its representative enters a “symbol” that has been adopted as a signature. The Board will accept any combination of letters, numbers, space and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols.29
A party may act in its own behalf in a proceeding before the Board, or an attorney or other authorized representative may represent the party.30 When an individual who is a party to a Board proceeding elects to act in his or her own behalf, the individual must sign any documents that he or she files with the Board. If a party which is a partnership elects to act in its own behalf, a partner should sign documents filed by the partnership. If a party which is a corporation or association elects to act in its own behalf, documents filed by the corporation or an officer thereof who is authorized to sign for the corporation or association should sign for that corporation or association.31
If a document is filed on behalf of a party by the party's attorney or other authorized representative, it must bear the signature of, and be signed by, that attorney or other representative, unless it is a document required to be signed by the party. An attorney or other authorized representative who signs a document, and then files it with the Board on behalf of a party, should remember that his or her signature to the document constitutes a certification of the elements specified in 37 CFR § 10.18(b), and that a knowing violation of the provisions of that rule by an attorney or other authorized representative will leave him or her open to disciplinary action.32
It is not appropriate for one person to sign a document for another person, as, for example, "John Smith, for John Doe" or "John Doe, by John Smith."33
A document filed in a proceeding before the Board should include the name, in typed or printed form, of the person who signed; a description of the capacity in which he or she signed (e.g., as the individual who is a party, if the filing party is an individual; as a corporate officer, if the filing party is a corporation; as the filing party's attorney); and his or her business address and telephone number. The inclusion of the signing person's address and phone number on the paper itself is vital because mail sent to the Office is opened in the Mail Room, and ordinarily the envelopes are discarded there before the mail is sent on to its ultimate destination within the Office. Thus, the Board rarely sees the return addresses on the mailing envelopes of papers filed in Board proceedings.
In accordance with 37 CFR § 2.193(c) either the original of the signed document, or a legible copy thereof, may be filed with the Board. If a paper copy is filed, the original should be retained as evidence of authenticity. If a question as to the authenticity of a filed copy arises, the Office may require submission of the original.34
Notwithstanding the requirement that a document filed before the Board be signed, an unsigned document will not be refused consideration if a signed copy is submitted to the Board within the time limit set in the notification of this defect by the Board.35
106.03 Form of Submissions
37 CFR § 2.126 Form of submissions to the Trademark Trial and Appeal Board.
(a) Submissions may be made to the Trademark Trial and Appeal Board on paper where Board practice or the rules in this part permit. A paper submission, including exhibits and depositions, must meet the following requirements:
(1) A paper submission must be printed in at least 11-point type and double-spaced, with the text on one side only of each sheet;
(2) A paper submission must be 8 to 8.5 inches (20.3 to 21.5 cm) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
(3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
(4) A paper submission must not be stapled or bound;
(5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
(6) Exhibits pertaining to a paper submission must be filed on paper or CD-ROM concurrently with the paper submission, and comply with the requirements for a paper or CD-ROM submission.
(b) Submissions may be made to the Trademark Trial and Appeal Board on CD-ROM where the rules in this part or Board practice permit. A CD-ROM submission must identify the parties and case number and contain a list that clearly identifies the documents and exhibits contained thereon. This information must appear in the data contained in the CD-ROM itself, on a label affixed to the CD-ROM, and on the packaging for the CD-ROM. Text in a CD-ROM submission must be in at least 11-point type and double-spaced. A brief filed on CD-ROM must be accompanied by a single paper copy of the brief. A CD-ROM submission must be accompanied by a transmittal letter on paper that identifies the parties, the case number and the contents of the CD-ROM.
(c) Submissions may be made to the Trademark Trial and Appeal Board electronically via the Internet where the rules in this part or Board practice permit, according to the parameters established by the Board and published on the Web site of the Office. Text in an electronic submission must be in at least 11-point type and double-spaced. Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission.
(d) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(e) must be submitted under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must be submitted.
Submissions may be made to the Board on paper, CD-ROM, or electronically over the Internet, as permitted by the rules or Board practice. For example, the rules provide that an opposition against a Section 1 or 44 application, or a request for extension of time to oppose a Section 1 or 44 application, may either be filed on paper or through ESTTA, but that an opposition against a 66(a) application, or a request for extension of time to oppose a 66(a) application, may only be filed through ESTTA.36 The rules do not permit the filing of any extension of time to oppose or any notice of opposition on CD-ROM. Similarly, Board practice does not permit the filing of any petition for cancellation on CD-ROM. A petition for cancellation must be filed either on paper or through ESTTA.
Trademark Rule 2.126 also specifies the requirements for each form of submission to the Board, including a confidential submission. The requirements for paper submissions are set out in part (a) of 37 CFR § 2.126. A paper submission must be 8 to 8.5 inches wide and 11 to 11.69 inches long, and printed in at least 11-point type and double-spaced, with the text on one side only of each sheet. If a paper submission contains dividers, the dividers may not contain tabs or any devices that extend beyond the edges of the paper, and must be on the same size and weight paper as the submission.
In addition, a paper submission must not be stapled or bound. This is important because all paper submissions are scanned electronically into the Board's electronic information system and removing staples or binding prior to scanning is difficult and time-consuming, especially where papers have been bound by machine. Moreover, disassembling stapled or bound papers can damage pages, resulting in misdeeds to the scanning equipment and increasing the likelihood that pages will become disordered during scanning.37
A paper filed with the Board may be either the original or a legible copy thereof, on good quality paper.38 Extra copies of a paper should not be submitted.39
CD-ROM submissions are governed by part (b) of 37 CFR § 2.126, and the requirements for electronic submissions over the Internet can be found in part (c) of 37 CFR § 2.126. Submissions over the Internet are made through the Board's electronic filing system, ESTTA (Electronic System for Trademark Trials and Appeals) which is available on the USPTO web site.40 Using ESTTA, a person can complete and submit forms, with attachments and/or exhibits, to the Board over the Internet, making an official filing online. ESTTA gives step-by-step instructions for properly completing a form.41 Available forms and instructions can be found at: http://estta.uspto.gov . The Board’s electronic filing system is also available to the public in the Trademark Library Search Room.
Exhibits to a submission are also subject to the requirements of 37 CFR § 2.126. Exhibits pertaining to a paper submission must be filed on paper or CD-ROM and must comply with the requirements for a paper or CD-ROM submission.42 Exhibits pertaining to an electronic submission must be filed electronically as an attachment to the submission and conform to the requirements for electronic submissions.43
As with any paper submission, paper exhibits may not contain tabs, dividers or any such devices that extend beyond the edges of the paper, and moreover, may not be stapled or bound. However, it is acceptable to use binder clips or rubber bands, or similar devices that would allow for easy separation of the papers for scanning.
Exhibits that are large, bulky, valuable, or breakable may be photographed or otherwise reproduced so that an appropriate paper or digitized image of the exhibits can be filed with the Board in lieu of the originals. Exhibits consisting of videotapes or audiotapes of commercials, demonstrations, etc., may be transferred to an appropriate electronic format for submission to the Board.
The requirements for confidential submissions are specified in part (d) of 37 CFR § 2.126. To be handled as confidential, and kept out of the public record, submissions to the Board that are confidential must be filed under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must also be submitted.44 Confidential materials filed in the absence of a protective order are not regarded as confidential and will not be kept confidential by the Board.45
The Board, in its discretion, may refuse to enter and consider submissions filed in violation of 37 CFR 2.126.
Format of submissions. Apart from the identification, signature, and form requirements referred to above, there is no particular format that submissions to the Board must follow. Nor does the Office have printed forms for any documents filed in Board proceedings.46 As an aid to litigants, however, suggested formats for certain types of documents filed in Board proceedings can be found in the Appendix of Forms to this manual as well as in the section where the particular type of document is discussed. These include a notice of appeal to the Board, designation of domestic representative, certificate of mailing or certificate of transmission under 37 CFR § 2.197, and a certificate of service.
37 CFR § 2.195 Receipt of trademark correspondence.
(a) Date of receipt and Express Mail date of deposit.
Trademark correspondence received in the Office is given a filing date as of the date of receipt except as follows:
(1) The Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted electronically under paragraph (a)(2) of this section or transmitted by facsimile under paragraph (a)(3) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
(2) Trademark-related correspondence transmitted electronically will be given a filing date as of the date on which the Office receives the transmission.
(3) Correspondence transmitted by facsimile will be given a filing date as of the date on which the complete transmission is received in the Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the filing date will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
(4) Correspondence filed in accordance with § 2.198 will be given a filing date as of the date of deposit as “Express Mail” with the United States Postal Service.
(b) Correspondence delivered by hand.
In addition to being mailed, correspondence may be delivered by hand during hours the Office is open to receive correspondence.
(c) Facsimile transmission.
Except in the cases enumerated in paragraph (d) of this section, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See § 2.196. To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application, registration or proceeding before the Office. The application serial number, registration number, or proceeding number should be entered as a part of the sender's identification on a facsimile cover sheet.
(d) Facsimile transmissions are not permitted and if submitted, will not be accorded a date of receipt, in the following situations:
(1) Applications for registration of marks;
(2) Drawings submitted under § 2.51, § 2.52, § 2.72 or § 2.173;
(3) Correspondence to be filed with the Trademark Trial and Appeal Board, except notices of ex parte appeal; and
(4) Requests for cancellation or amendment of a registration under Section 7(e) of the Trademark Act; and certificates of registration surrendered for cancellation or amendment under Section 7(e) of the Trademark Act.
(e) Interruptions in U.S. Postal Service.
If interruptions or emergencies in the United States Postal Service which have been so designated by the Director occur, the Office will consider as filed on a particular date in the Office any correspondence which is:
(1) Promptly filed after the ending of the designated interruption or emergency; and
(2) Accompanied by a statement indicating that such correspondence would have been filed on that particular date if it were not for the designated interruption or emergency in the United States Postal Service.
An increasing number of documents can be filed with the Office through its web site at www.uspto.gov . For those documents that are being delivered to the Office, the specific requirements are set out below.
Documents relating to proceedings before the Board, and not accompanied by a fee, may be filed during regular office hours by hand delivery or by courier service to the Board at 2900 Crystal Drive, South Tower Building, Ninth Floor, Arlington, Virginia 22202-3514; or at the Intake Processing Unit at 2900 Crystal Drive, South Tower Building, Arlington, Virginia 22202-3514; or at the Customers' Window at 2011 S. Clark Place, Crystal Plaza Building 2, First Floor, Arlington, Virginia 22202; or (by courier delivery only) to the Patent and Trademark Office Mail Room (Correspondence and Mail Division) at 2011 S. Clark Place, Crystal Plaza Building 2, First Floor, Arlington, Virginia 22202 (delivery of documents intended for the Board to one of the Crystal Plaza Building 2 locations is NOT recommended, because documents delivered to these locations, rather than to one of the South Tower Building locations, may take considerably longer to reach the Board). Such papers may also be filed by depositing them in the mail addressed to the Board's mailing address (Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3514).
Documents relating to proceedings before the Board, and accompanied by fees may be filed by mailing them to the Board's mailing address, i.e., Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3514. Papers with fees may also be filed during regular business hours by hand delivery to the Finance Window at 2900 Crystal Drive, South Tower Building, Arlington, Virginia 22202-3514 (where the fee will be "received" or "posted" immediately and the paper then forwarded to the Intake Processing Unit on the same floor); or to the Customers' Window on the first floor at 2011 S. Clark Place, Crystal Plaza Building 2, Arlington, Virginia 22202; (delivery of papers intended for the Board to the Crystal Plaza Building is NOT recommended, because papers delivered to this location, rather than to one of the South Tower Building locations, may take considerably longer to reach the Board).
Fee papers filed in person must be filed at one of the locations identified above because the Board does not have the mechanism to process financial transactions.
With the exception of the notice of ex parte appeal to the Board, or in the absence of a specific request by the Board, documents to be filed with the Board may not be filed by facsimile transmission ("fax").47 If documents other than the notice of appeal in an ex parte appeal are filed with the Board by fax transmission, they will not receive a filing date.
However, the Board will accept, and give filing dates to, documents that had been faxed to, for example, local counsel, when the fax copies are, in turn, hand delivered to the Board, or are sent to the Board by mail or courier service. In addition, the Board may request that a party send by fax transmission a copy of a document that has already been filed in the Office by one of the acceptable methods described above, such as by mail, but which document has not yet been received by the Board and/or entered in the proceeding file for which it is intended. The Board may make such a request when, for example, (1) a Board attorney needs a copy of the document in order to make an immediate ruling, by telephone conference, on a motion, or (2) the Board needs to see a copy of a document that was assuredly filed in the Office, but which the Board does not have or cannot locate. When the Board requests that a copy of a document be sent to the Board by fax transmission, the name of the Board employee making the request must appear on the cover sheet of the transmission, so that the Board staff member receiving the transmission will know that the transmission is authorized, and can immediately give the paper to the employee who requested it. If the name of the requesting Board employee does not appear on the cover sheet, the staff member receiving the transmission will presume that the transmission is unauthorized, and the paper will be disregarded.
When a fax transmission is authorized, the requirements of 37 CFR § 2.195(c) should be met. In addition, it is recommended that the fax cover sheet specify the number of pages being transmitted, and the name, address, fax number, and telephone number of the transmitting party, as well as the proceeding number to which the document pertains.
A document transmitted by fax must be legible. The document that is used as the original for the fax transmission should be retained by the sender as evidence of the content of the transmission.48
Correspondence filed by fax transmission should be transmitted to the fax number of the USPTO location for which it is intended. Transmission of correspondence to the fax number of the wrong USPTO location will cause delay in matching the correspondence with the file to which it pertains. The Board itself has several different fax numbers. The Board fax number to be used for a notice of ex parte appeal to the Board is (703) 308-9333. In those cases where the Board requests that a party send a copy of some other paper by fax transmission, the party will be provided with the appropriate fax number.
The Board's fax machines are attended between the business hours of 8:30 a.m. and 5:00 p.m., Eastern Standard Time, Monday through Friday, excluding holidays. Normally, the machines may be accessed 24 hours a day. However, there may be times when reception is not possible because of equipment failure or maintenance requirements. Accordingly, persons transmitting correspondence to the Board by fax should be cautious about relying on the availability of this service near time deadlines, such as the end of the six-month period for filing a notice of appeal in an ex parte appeal to the Board.49
For information on how to pay fees, see TBMP § 118.
When a document (with or without a fee) intended for the Board is filed in the Office, it is possible to obtain a receipt evidencing the date of such filing. In the case of a document sent by mail, a receipt may be obtained by submitting with the document a stamped, self-addressed postcard with sufficient information to identify clearly the document , the party in whose behalf the paper is being filed, and the proceeding or application in connection with which the document is being filed. When the Office receives the document and the postcard, it will date-stamp both of them and mail the postcard back.
Correspondence transmitted electronically through ESTTA is stamped with the date and time the Office receives the transmission or, if a fee is required, the date and time the payment process is completed.50 Eastern time controls the filing date. Once a request is transmitted electronically, the system immediately provides the sender with an e-mail acknowledgement of receipt.
If a document intended for the Board is delivered by hand or by courier service to the offices of the Board, or to the Intake Processing Unit at 2900 Crystal Drive, South Tower Building, Third Floor, Arlington, Virginia 22202-3514, or to the Finance Window on the same floor of that building, the receipt may take the form of a postcard bearing appropriate identifying information, or a duplicate copy of the document, or a duplicate copy of the transmittal letter with appropriate identifying information. The receipt and the document will be date-stamped and the receipt will be handed back to the person who delivered the paper. If a paper is delivered by hand or by courier service to the Customers' Window at 2011 S. Clark Place, Crystal Plaza Building 2, Room 1B03, Arlington, Virginia 22202, the receipt may be in the form of a postcard, or, alternatively, a handwritten receipt will be furnished. If a document is delivered by courier service to the U.S. Patent and Trademark Office Mail Room (Correspondence and Mail Division) at 2011 S. Clark Place, Crystal Plaza Building 2, Room 1A-01, Arlington, Virginia 22202, the postcard receipt must be used.
When a document is submitted to the Board by fax transmission, the Board will not formally acknowledge receipt of the document. However, the Board fax machine usually will confirm to the sending unit that the transmission is complete. Parties are reminded that, with the exception of the notice of ex parte appeal to the Board. or unless otherwise specifically authorized by the Board, documents intended for the Board may not be filed by fax transmission.51
37 CFR § 2.195 Receipt of trademark correspondence.
(a) Date of receipt and Express Mail date of deposit. Trademark correspondence received in the Office is given a filing date as of the date of receipt except as follows:
(1) The Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted electronically under paragraph (a)(2) of this section or transmitted by facsimile under paragraph (a)(3) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
(2) Trademark-related correspondence transmitted electronically will be given a filing date as of the date on which the Office receives the transmission.
(3) Correspondence transmitted by facsimile will be given a filing date as of the date on which the complete transmission is received in the Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the filing date will be the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
(4) Correspondence filed in accordance with § 2.198 will be given a filing date as of the date of deposit as "Express Mail" with the United States Postal Service.
(b) Correspondence delivered by hand. In addition to being mailed, correspondence may be delivered by hand during hours the Office is open to receive correspondence.
(c) Facsimile transmission. Except in the cases enumerated in paragraph (d) of this section, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See §2.196. To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application, registration or proceeding before the Office. The application serial number, registration number, proceeding number should be entered as a part of the sender's identification on a facsimile cover sheet.
(d) Facsimile transmissions are not permitted and if submitted, will not be accorded a date of receipt, in the following situations:
(1) Applications for registration of marks;
(2) Drawings submitted under § 2.51, § 2.52, § 2.72 or § 2.173;
(3) Correspondence to be filed with the Trademark Trial and Appeal Board, except notices of ex parte appeal; and
(4) Requests for cancellation or amendment of a registration under section 7(e) of the Trademark Act, and certificates of registration surrendered for cancellation or amendment under section 7(e) of the Trademark Act.
(e) Interruptions in U.S. Postal Service. If interruptions or emergencies in the United States Postal Service which have been so designated by the Director occur, the Office will consider as filed on a particular date in the Office any correspondence which is:
(1) Promptly filed after the ending of the designated interruption or emergency; and
(2) Accompanied by a statement indicating that such correspondence would have been filed on that particular date if it were not for the designated interruption or emergency in the United States Postal Service.
Correspondence transmitted electronically through ESTTA is stamped with the date and time the Office receives the transmission or, if a fee is required, the date and time the payment process is completed.52 Eastern time controls the filing date. Once a request is transmitted electronically, the system immediately provides the sender with an e-mail acknowledgement of receipt.
Mailed or hand-delivered correspondence is stamped with the date of receipt in the Office (i.e., the "filing" date) unless the correspondence is filed by the "Express Mail" procedure provided in 37 CFR § 2.198.53 The "date of receipt" of correspondence mailed to the Office is the date stamped by the Post Office on the mailbags in which the correspondence is delivered to the Office.54
When correspondence intended for the Board is filed by the "Express Mail Post Office to Addressee" service of the United States Postal Service the document will be stamped with the "date in" as the date of receipt (unless the "date in" is a Saturday, Sunday, or Federal holiday within the District of Columbia). If the deposit date cannot be determined, the correspondence will be stamped with the date of actual receipt.55
If correspondence which is permitted to be filed by fax transmission to the Board is filed by that method with a certificate of transmission in accordance with 37 CFR § 2.197(a), the transmission date specified in the certificate of transmission is used for purposes of determining the timeliness of the correspondence.56 The date of receipt of the transmission, as described in 37 CFR § 2.195(a)(3), is used for all other purposes.57
When correspondence intended for the Board is filed by first-class mail with a certificate of mailing, in accordance with the procedure described in 37 CFR § 2.197(a), it is stamped with the date of receipt of the correspondence in the Office, i.e., the date on the mail bags in which the correspondence is delivered to the Office. The mailing date specified in the certificate of mailing is used for purposes of determining the timeliness of the correspondence. The date of receipt is used for all other purposes.58
110.01 In General
37 CFR § 2.197 Certificate of mailing or transmission.
(a) Except in the cases enumerated in paragraph (a)(2) of this section, correspondence required to be filed in the Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed. The actual date of receipt will be used for all other purposes.
(1) Correspondence will be considered as being timely filed if:
(i) The correspondence is mailed or transmitted prior to expiration of the set period of time by being:
(A) Addressed as set out in § 2.190 and deposited with the U.S. Postal Service with sufficient postage as first class mail; or
(B) Transmitted by facsimile to the Office in accordance with § 2.195(c); and
(ii) The correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission. The person signing the certificate should have reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
(2) The procedure described in paragraph (a)(1) of this section does not apply to the filing of a trademark application.
(b) In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the Office, and an application is abandoned, a registration is cancelled or expired, or a proceeding is dismissed, terminated, or decided with prejudice, the correspondence will be considered timely if the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of the correspondence within two months after becoming aware that the Office has no evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
(3) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing or transmission. If the correspondence was sent by facsimile transmission, a copy of the sending unit's report confirming transmission may be used to support this statement.
(c) The Office may require additional evidence to determine whether the correspondence was timely filed.
Except in certain instances, specified in 37 CFR § 2.197(a), as amplified by 37 CFR § 2.195(c), correspondence required to be filed within a set period of time will be considered as being timely filed, even though the correspondence is not received by the Office until after the expiration of the set period, if, prior to the expiration of the set period, (1) the correspondence is mailed to the Office by first-class mail, with the proper address, or (for correspondence which is permitted to be filed by fax) is transmitted to the Office by fax, in accordance with 37 CFR § 2.195(c), and (2) includes a certificate of mailing or transmission which meets the requirements specified in 37 CFR § 2.197(a).59
In effect, the certificate of mailing or transmission procedure permits certain types of correspondence, as specified in 37 CFR §§ 2.197(a) and 2.195(c), to be sent to the Office by first-class mail, or by fax transmission, even on the due date for the correspondence and still be considered timely, notwithstanding the fact that the mailed correspondence will not be received in the Office until after the due date, or that the fax transmission may not, because of equipment failure or maintenance requirements, be completed until the next day.60
However, the Office, in its discretion, may require additional evidence to determine if correspondence which bears a certificate of mailing or a certificate of transmission was timely filed, i.e., was mailed or transmitted on the date stated in the certificate.61
The certificate of mailing procedure applies to the filing of all types of correspondence in Board proceedings.
The certificate of transmission procedure is available in Board proceedings only for the filing of a notice of ex parte appeal to the Board.62
110.02 Requirements for Certificate
37 CFR § 2.190 Addresses for trademark correspondence with the United States Patent and Trademark Office.
(a) Trademark correspondence -- in general
All trademark-related documents filed on paper, except documents sent to the Assignment Services Division for recordation and requests for copies of trademark documents, should be addressed to:
Commissioner for Trademarks
2900 Crystal Drive
Arlington, Virginia 22202-3514
(b) Electronic trademark documents. An applicant may transmit a trademark document through TEAS, at http://www.uspto.gov .
(c) Trademark Assignments. Requests to record documents in the Assignment Services Division may be filed through the Office’s web site, at http://www.uspto.gov . Paper documents and cover sheets to be recorded in the Assignment Services Division should be addressed to:
Mail Stop Assignment Recordation Services
Director of the United States Patent and Trademark Office
P.O. Box 1450
Alexandria, Virginia 22313-1450
See § 3.27 of this chapter.
(d) Requests for copies of trademark documents. Copies of trademark documents can be ordered through the Office’s web site at www.uspto.gov. Paper requests for certified or uncertified copies of trademark documents should be addressed to:
Mail Stop Document Services
Director of the United States Patent and Trademark Office
P.O. Box 1450
Alexandria, Virginia 22313-1450
The requirements for filing trademark-related documents (except for trademark-related documents sent to the Assignment Services Division for recordation and requests for certified copies of trademark application and registration documents) by the certificate of mailing or transmission procedure are as follows:63
1. Prior to the expiration of the set period, the correspondence must be either (i) deposited with the U.S. Postal Service, with sufficient postage as first-class mail, addressed to the Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3514, or (ii) (for correspondence which is permitted to be filed by fax) transmitted to the Office by fax, in the manner described in 37 CFR § 2.195(c); and
2. Each piece of correspondence must include a certificate which states the date of deposit or transmission, and is signed (separate and apart from any signature for the piece of correspondence itself) by a person who has a reasonable basis to expect that the correspondence will be mailed or transmitted on or before the date indicated.
Trademark-related documents sent to the Assignment Services Division for recordation should be addressed to: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450. If a certificate of mailing is used on such correspondence, it should specify that address.
Requests for copies (certified or uncertified) of trademark documents pertaining to applications and registrations are handled by the Certification Division, Office of Public Records. The address for all such requests mailed to the Office is: Mail Stop Document Services, Director of the United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450.64
The Assignment Services Division of the Office of Public Records also has an electronic trademark assignment recording form on the Office web site. The system is called ETAS (Electronic Trademark Assignment System) and allows customers to create and submit a Trademark Assignment Recordation Coversheet by completing on-line web forms and attaching the supporting legal documentation. The form and additional information can be accessed by going to www.uspto.gov , going to “Trademarks” and then “File Assignment Documents On-line.”
The certificate of mailing procedure may not be used for mail sent to the United States Patent and Trademark Office from a foreign country, because U.S. Postal Service first-class mail services are not available in foreign countries.
A certificate of mailing or a certificate of transmission should be clearly labeled as such and should include a reference to the proceeding number to which it pertains, the date of transmission, and the signature of the person attesting that the document is being transmitted on a certain date. When possible, the certificate should appear on the paper being transmitted, rather than on a separate sheet of paper.
110.03 Suggested Format
Shown below is a suggested format for a certificate of mailing, under 37 CFR § 2.197, for trademark-related mail (except for trademark-related documents sent to the Assignment Services Division for recordation and requests for certified copies of trademark application and registration documents)
Certificate of Mailing
I hereby certify that this correspondence
is being deposited with the United States
Postal Service with sufficient postage as
First-class mail in an envelope addressed to:
Commissioner for Trademarks
2900 Crystal Drive
Arlington, Virginia 22202-3514
on ___________ _________________
Date Signature
_________________________________
Typed or printed name of
person signing certificate
Shown below is a suggested format for a certificate of transmission under 37 CFR § 2.197:
Certificate of Transmission
I hereby certify that this correspondence
is being facsimile transmitted to the United States Patent and Trademark Office
on ___________ _________________
Date Signature
_________________________________
Typed or printed name of
person signing certificate
110.04 Location of Certificate
If one of the simple certificate of mailing or certificate of transmission formats shown in TBMP § 110.03 is used, it may be applied by rubber stamp to the first page of the correspondence, if feasible. Otherwise, it should be stamped or typed in its entirety on the last page of the correspondence to which it pertains. If the certificate is typed, and there is not enough room on the last page to type the certificate in its entirety, it should at least be started on the last page, so that only part of it continues over to another page. The simple certificate of mailing or certificate of transmission format should never be used by itself on a separate page at the end of the correspondence. If it is, and the page becomes detached from the rest of the submission, there will be no way of determining the identity of the correspondence to which it relates, and the benefit of the certificate will be lost.
In some cases, there may not be room for a certificate of mailing or a certificate of transmission on a piece of correspondence. In such a case, the certificate may be typed on a separate sheet of paper securely attached to the correspondence.
However, the simple certificate formats shown in TBMP § 110.03 are not appropriate for use on a separate sheet of paper. Rather, a certificate placed on a separate sheet of paper must include additional information, namely, a description of the nature of the correspondence to which it pertains, as well as the identity of the application, registration, or Office proceeding in connection with which the correspondence is being filed. If there is any doubt concerning the identity of the correspondence to which a certificate of mailing or certificate of transmission on a separate sheet pertains, the certificate will not be accepted.
110.05 Loss of Certificate of Mailing
If a certificate of mailing is typed on a separate sheet of paper attached to a piece of correspondence, and the certificate becomes detached, after the correspondence is filed in the Office, and does not contain identifying information sufficient to enable the Office to associate the certificate with the appropriate piece of correspondence, the Office will accept, as evidence that the certificate was filed with the specified correspondence, a postcard receipt (see TBMP § 108) which identifies the separate certificate of mailing sheet and the correspondence to which it was attached; accompanied by a copy of the certificate of mailing sheet as originally mailed.
110.06 Nonreceipt of Correspondence Bearing Certificate
In the event that correspondence intended for the USPTO is timely filed with an appropriate certificate of mailing or certificate of transmission, pursuant to 37 CFR § 2.197, but is not received in the Office, and there is a resulting Office action, in a proceeding or an application, which is adverse to the submitting party, the correspondence will be considered timely if the party which submitted it (1) informs the Office of the previous mailing or facsimile transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence, (2) supplies an additional copy of the previously mailed or transmitted correspondence and certificate, and (3) includes a statement attesting, on a personal knowledge basis or to the satisfaction of the Director, to the previous timely mailing or transmission. The statement must be verified if it is made by a person other than a practitioner, as defined in 37 CFR § 10.1(r). If the correspondence was appropriate for filing by fax transmission, a copy of the sending fax machine's report confirming transmission may be used to support the statement.65 If the document is not one authorized to be filed by facsimile transmission, the document will not be accepted.
For lost or misplaced correspondence intended for the Board, the evidence required by 37 CFR § 2.197(b) should be submitted to the Board for consideration. If the requirements of 37 CFR § 2.197(b) cannot be met, the only alternative is a petition to the Director.
110.07 Excluded Filings
The certificate of mailing procedure is not applicable to the filing of a trademark application. The certificate of mailing procedure is applicable to all types of filings in Board proceedings, including a notice of opposition; a petition to cancel; a request for an extension of time to oppose; a notice of appeal to the Board from a final refusal of registration; a notice of appeal to the Court of Appeals for the Federal Circuit from a decision of the Board; and a notice of election (in an inter partes proceeding) to proceed by civil action under Section 21(a)(1) of the Act of 1946, 15 U.S.C. § 1071(a)(1), in response to another party's appeal to the Court of Appeals for the Federal Circuit.
At present, the certificate of transmission procedure is not applicable to any correspondence intended for the Board, except for the notice of appeal in an ex parte appeal to the Board.66
110.08 A Certificate of Mailing or Transmission is Not ...
As is evident from the requirements for a certificate of mailing, specified in 37 CFR § 2.197(a), the certificate of mailing procedure is not the same as mailing by certified mail. Correspondence sent to the Board by certified mail, and not in compliance with the 37 CFR § 2.197(a) requirements for a certificate of mailing, will be stamped with the date of receipt of the correspondence in the Office, and that date will be used for all purposes, including the timeliness of the filing of the correspondence.67
Further, a certificate of mailing or certificate of transmission is not the equivalent of a certificate of service. A certificate of mailing or certificate of transmission indicates when correspondence was sent to the Office pursuant to the provisions of 37 CFR § 2.197(a). The mailing date recited in a certificate of mailing, or the transmission date recited in a certificate of transmission, is used for purposes of determining the timeliness of the filing of the correspondence bearing the certificate. A certificate of service, on the other hand, indicates the date when a copy of the correspondence was served (by hand delivery, first-class mail, "Express Mail," or overnight courier) upon another party. A certificate of service cannot be used to prove the timeliness of the filing of the correspondence.68
111.01 In General
37 CFR § 2.198 Filing of correspondence by "Express Mail."
(a)(1) Except for documents listed in paragraphs (a)(1)(i) and (ii) of this section, any correspondence received by the Office that was delivered by the "Express Mail Post Office to Addressee" service of the United States Postal Service (USPS) will be considered filed with the Office on the date of deposit with the USPS. The Express Mail procedure does not apply to:
(2) The date of deposit with the USPS is shown by the "date-in" on the "Express Mail" label or other official USPS notation. If the USPS deposit date cannot be determined, the
correspondence will be accorded the date of receipt in the Office as the filing date.
(b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the "Express Mail" mailing label with the "date-in" clearly marked. Persons dealing indirectly with the employees of the USPS (such as by deposit in an "Express Mail" drop box) do so at the risk of not receiving a copy of the "Express Mail" mailing label with the desired "date-in" clearly marked. The paper(s) or fee(s) that constitute the correspondence should also include the "Express Mail" mailing label number thereon. See paragraphs (c), (d) and (e) of this section.
(c) Any person filing correspondence under this section that was received by the Office and delivered by the "Express Mail Post Office to Addressee" service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the "date-in" on the "Express Mail" mailing label or other official USPS notation, may petition the Director to accord the correspondence a filing date as of the "date-in" on the "Express Mail" mailing label or other official USPS notation, provided that:
(1) The petition is filed within two months after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
(2) The number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing; and
(3) The petition includes a true copy of the "Express Mail" mailing label showing the "date-in," and of any other official notation by the USPS relied upon to show the date of deposit.
(d) Any person filing correspondence under this section that was received by the Office and delivered by the "Express Mail Post Office to Addressee" service of the USPS, who can show that the "date-in" on the "Express Mail" mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:
(1) The petition is filed within two months after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
(2) The number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing; and
(3) The petition includes a showing that establishes, to the satisfaction of the Director, that the correspondence was deposited in the "Express Mail Post Office to Addressee" service prior to the last scheduled pickup on the requested filing date. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or evidence that came into being within one business day of the deposit after the correspondence in the "Express Mail Post Office to Addressee" service of the USPS.
(e) If correspondence is properly addressed to the Office pursuant to § 2.1990 and deposited with sufficient postage utilizing the "Express Mail Post Office to Addressee" service of the USPS, but not received by the Office, the party who mailed the correspondence may petition the Director to consider such correspondence filed in the Office on the USPS deposit date, provided that:
(1) The petition is filed within two months after the person becomes aware that the Office has no evidence of receipt of the correspondence;
(2) The number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) prior to the original mailing;
(3) The petition includes a copy of the originally deposited paper(s) or fee(s) showing the number of the "Express Mail" mailing label thereon, a copy of any returned postcard receipt, a copy of the "Express Mail" mailing label showing the "date-in," a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the "date-in" on the "Express Mail" mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the correspondence was deposited in the "Express Mail Post Office to addressee" service prior to the last scheduled pickup on the requested filing date; and
(4) The petition includes a statement that establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the copies of the correspondence, the copy of the "Express Mail" mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original "Express Mail" mailing label, returned postcard receipt, and official notation entered by the USPS.
(f) The Office may require additional evidence to determine whether the correspondence was deposited as "Express Mail" with the USPS on the date in question.
Certain papers or fees to be filed in the Office, including any paper or fee intended for the Board, can be filed utilizing the "Express Mail Post Office to Addressee" service (not the "Express Mail Post Office to Post Office" service) of the United States Postal Service, and be considered as having been filed in the Office on the date of deposit with the USPS.69
In effect, the "Express Mail" procedure permits all types of correspondence intended for the Board to be sent by the "Express Mail Post Office to Addressee" service even on the due date for the correspondence and still be considered timely, notwithstanding the fact that the mailed correspondence may not be received by the Board until after the due date. This filing procedure applies only to the “Express Mail” of the United States Postal Service, not any third-party carrier that offers overnight delivery.70
111.02 Requirements for “Express Mail”
Trademark Rule 12.198(b) provides that prior to the original mailing, the “Express Mail” mailing label number should be placed on correspondence filed under Rule 2.198. The number of the mailing label should be placed on each separate submission and each fee transmitted, either directly on the document or on a separate paper firmly and securely attached to the document.
A party that wishes to send mail to the Board by the "Express Mail" service of the U.S. Postal Service should be careful to use the "Express Mail Post Office to Addressee" service, rather than the "Express Mail Post Office to Post Office" service.
111.03 Questionable Date of Mailing
If the “date-in” appearing on the “Express Mail” label is illegible, the filing date will be the actual receipt date by the Office. If there is a discrepancy between the filing date assigned by the Office and the date of deposit, the person who filed the correspondence may petition the Director to accord the “date-in” date by providing the evidence set forth in 37 CFR §§ 2.198(c), (d) and (e).71
37 CFR § 2.196 Expiration on Saturday, Sunday or Federal holiday
Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or regulation by or under this part for taking any action or paying any fee in the Office falls on a Saturday, Sunday or Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding day that is not a Saturday, Sunday or a Federal holiday.
For example, if, as set by the Board, an answer to a complaint falls due on a Saturday, Sunday, or Federal holiday within the District of Columbia, an answer filed on the next business day will be considered timely. If, as set by the Board, the close of discovery falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, written requests for discovery (i.e., interrogatories, requests for production of documents, and requests for admission) may be served, and discovery depositions may be taken, on the next business day. Similarly, if, as set by the Board, the close of a testimony period falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, testimony depositions may be taken, and other evidence may be offered, on the next business day.72
If, because of some unscheduled event, such as adverse weather conditions, the Office is officially closed by Executive Order of the President or by the Office of Personnel Management for an entire day, that day will be regarded by the Office as a federal holiday within the District of Columbia. Any action due to be taken, or fee due to be paid, on that day, will be considered timely if the action is taken, or the fee paid, on the next succeeding business day on which the Office is open. If, because of an unscheduled event, the Office is closed for part of a business day, but is open for business for some part of the day between 8:30 a.m. and 5:00 p.m., any action due to be taken, or fee due to be paid, on that day remains due on that day.73 Notification of any change in this policy, given the particular circumstances of an unscheduled event, will be posted on the Office web site at www.uspto.gov.74
37 CFR § 2.119 Service and signing of papers.
(a) Every paper filed in the Patent and Trademark Office in inter partes cases, including notice of appeal, must be served upon the other parties except the notice of interference (§ 2.93), the notification of opposition (§ 2.105), the petition for cancellation (§ 2.113), and the notice of a concurrent use proceeding (§ 2.99), which are mailed by the Patent and Trademark Office. Proof of such service must be made before the paper will be considered by the Office. A statement signed by the attorney or other authorized representative, attached to or appearing on the original paper when filed, clearly stating the date and manner in which service was made will be accepted as prima facie proof of service.
(b) Service of papers must be on the attorney or other authorized representative of the party if there be such or on the party if there is no attorney or other authorized representative, and may be made in any of the following ways:
(1) By delivering a copy of the paper to the person served;
(2) By leaving a copy at the usual place of business of the person served, with someone in the person's employment;
(3) When the person served has no usual place of business, by leaving a copy at the person's residence, with a member of the person's family over 14 years of age and of discretion;
(4) Transmission by the "Express Mail Post Office to Addressee" service of the United States Postal Service or by first-class mail, which may also be certified or registered;
(5) Transmission by overnight courier.
Whenever it shall be satisfactorily shown to the Director that none of the above modes of obtaining service or serving the paper is practicable, service may be by notice published in the Official Gazette.
(c) When service is made by first-class mail, "Express Mail," or overnight courier, the date of mailing or of delivery to the overnight courier will be considered the date of service. Whenever a party is required to take some action within a prescribed period after the service of a paper upon the party by another party and the paper is served by first-class mail, "Express Mail," or overnight courier, 5 days shall be added to the prescribed period.
* * * *
113.01 Requirement for Service of Papers
Every document filed in an inter partes proceeding before the Board, including a notice of appeal from a decision of the Board, must be served by the filing party upon every other party to the proceeding. The only exceptions to this rule are the notice of opposition and petition for cancellation, which are sent by the Board to the defendant or defendants.75
The requirement for service applies not only to documents filed in an inter partes proceeding before the Board, but also to documents filed in an application or registration which is the subject of such a proceeding, if the documents could have an effect on the inter partes proceeding. For example, a request to amend or correct an application or registration which is the subject of an inter partes proceeding; an abandonment of the application; or a voluntary surrender of the registration, must all be served by the defendant upon every other party to the proceeding.
113.02 Requirement for Proof of Service
When a party to an inter partes proceeding before the Board files a document required by 37 CFR § 2.119(a), to be served upon every other party to the proceeding, proof that the required service has been made ordinarily must be submitted before the filing will be considered by the Board. Occasionally, in order to expedite matters, and when the interests of the other party or parties would be served thereby, the Board itself will serve, along with an action of the Board relating thereto, a copy of a document that does not include the required proof of service. For example, if an applicant in an opposition files an abandonment of its involved application without the written consent thereto of the opposer, and the abandonment does not include proof of service upon the opposer, the Board does not send out an action stating that the abandonment will not be considered until proof of service has been submitted. Rather, the Board itself mails a copy of the abandonment to the opposer, along with a copy of an action by the Board entering judgment in popover's favor pursuant to 37 CFR § 2.135 (which provides, in part, that after the commencement of an opposition, if the applicant files a written abandonment of its application or mark without the written consent of every adverse party to the proceeding, judgment shall be entered against the applicant).76
113.03 Elements of Certificate of Service
The Board will accept, as prima facie proof that a party filing a document in a Board inter partes proceeding has served a copy of the document upon every other party to the proceeding, a statement signed by the filing party, or by its attorney or other authorized representative, clearly stating the date and manner in which service was made. The statement should also specify the name of each party or person upon whom service was made, and the address. The statement must appear on, or be securely attached to, the document being filed. If the statement is on a separate sheet attached to the filing, it should clearly identify the submission and proceeding to which it relates.77
Suggested Format
Shown below is a suggested format for a certificate of service:
I hereby certify that a true and complete copy of the foregoing (insert title of submission) has been served on (insert name of opposing counsel or party) by mailing said copy on (insert date of mailing), via First Class Mail, postage prepaid (or insert other appropriate method of delivery) to: (set out name and address of opposing counsel or party).
113.04 Manner of Service
When a party to an inter partes proceeding before the Board files a document required by 37 CFR § 2.119(a), to be served upon every other party to the proceeding, service may be made in any of the ways specified in 37 CFR § 2.119(b). They are: (1) by hand delivering a copy of the submission to the person being served; (2) by leaving a copy of the submission at the usual place of business of the person being served, with someone in the person's employment; (3) when the person being served has no usual place of business, by leaving a copy of the submission at the person's address, with a member of the person's family over 14 years of age and of discretion; (4) transmission by the "Express Mail Post Office to Addressee" service of the United States Postal Service or by first-class mail, which may also be certified or registered; and (5) transmission by overnight courier. In addition, whenever it is satisfactorily shown to the Director that none of the specified modes of service is practicable, service may be made by notice published in the Official Gazette of the USPTO.
When service is made by mail, pursuant to 37 CFR § 2.119(b)(4), the Board considers the mailing date of the paper to be the date when the paper is deposited with the United States Postal Service, i.e., the date when custody of the paper passes to the Postal Service. As provided in 37 CFR § 2.119(a), the Board ordinarily accepts, as prima facie proof of the date of mailing, the statement signed by the filing party, or by its attorney or other authorized representative, as to the date and manner of service. However, where the prima facie proof of the certificate of service is rebutted by other evidence, and the paper would be timely served if mailed on the date specified in the certificate of service, but untimely served if not mailed until the date indicated by the rebutting evidence, the Board may request that the person who signed the certificate of service submit an affidavit specifying the date when the paper was actually deposited with the United States Postal Service.
A party filing a document in a Board inter partes proceeding may always, as a courtesy, send a copy to an adverse party by telephonic facsimile transmission ("fax"). However, transmission of the document by fax does not constitute "service" thereof under the provisions of 37 CFR § 2.119.
Notwithstanding the fax transmission, the paper must still be served upon the adverse party by one of the methods specified in 37 CFR § 2.119(b), and the date of service of the paper upon the adverse party is the date when service is made by one of those specified methods.
113.05 Additional Time for Taking Action After Service by Mail
Whenever a party to an inter partes proceeding before the Board is required to take some action within a prescribed period of time after the service of a paper upon that party by another party to the proceeding, and the paper is served by first-class mail, "Express Mail," or overnight courier, the time for taking action is enlarged by 5 days.78
For example, if one party to a proceeding serves, upon another party to the proceeding, a motion to compel discovery, and service of the motion is made by first-class mail, "Express Mail," or overnight courier, the served party's time for filing a response to the motion will be 20 days from the date of service of the motion, that is, from the date of mailing or of delivery to the overnight courier. Because the service was made by first-class mail, "Express Mail," or overnight courier, 5 days are added to the 15-day period prescribed in 37 CFR § 2.127(a) for filing a response to a motion.
Trademark Rule 2.119(c), 37 CFR § 2.119(c), applies only when a party has to take some action within a prescribed period after the service of a paper upon it by another party, and service of the paper was made in one of three specified ways. It does not apply to an action that must be taken by a party within a time set in a communication from the Board. Thus, for example, when a Board action notifying a defendant of the filing of an opposition or petition to cancel allows the defendant 40 days from the date of the notification in which to file an answer to the complaint, the answer is due on or before the 40th day, not on the 45th day.
113.06 A Certificate of Service is Not...
A certificate of service is not the equivalent of a certificate of mailing or transmission for any purpose.79
37 CFR § 10.14 Individuals who may practice before the Office in trademark and other non-patent cases.
(a) Attorneys. Any individual who is an attorney may represent others before the Office in trademark and other non-patent cases. An attorney is not required to apply for registration or recognition to practice before the Office in trademark and other non-patent cases.
(b) Non-lawyers. Individuals who are not attorneys are not recognized to practice before the Office in trademark and other non-patent cases, except that individuals not attorneys who were recognized to practice before the Office in trademark cases under this chapter prior to Jan. 1, 1957, will be recognized as agents to continue practice before the Office in trademark cases.
(c) Foreigners. Any foreign attorney or agent not a resident of the United States who shall prove to the satisfaction of the Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark cases, provided: the patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark cases before the United States Patent and Trademark Office. Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.
(d) Recognition of any individual under this section shall not be construed as sanctioning or authorizing the performance of any act regarded in the jurisdiction where performed as the unauthorized practice of law.
(e) No individual other than those specified in paragraphs (a), (b), and (c) of this section will be permitted to practice before the Office in trademark cases. Any individual may appear in a trademark or other non-patent case in his or her own behalf. Any individual may appear in a trademark case for (1) a firm of which he or she is a member or (2) a corporation or association of which he or she is an officer and which he or she is authorized to represent, if such firm, corporation, or association is a party to a trademark proceeding pending before the Office.
114.01 Party May Represent Itself
A party may represent itself in an ex parte or inter partes proceeding before the Board, or the party may be represented by an attorney or other authorized representative.80
If a partnership which is a party to a Board proceeding elects to represent itself, the partnership may act through an individual who is a partner. If a party electing to represent itself is a corporation or an association, the party may act through any individual who is an officer of the party and who is authorized to represent it.81
However, because the governing practices and procedures in proceedings before the Board are quite technical and highly specialized, it is strongly recommended that an attorney familiar with trademark law represent a party.
114.02 Selection of Attorney
The Board cannot aid a party in the selection of an attorney, nor does the Office maintain a register or list of trademark attorneys.82
114.03 Representation by Attorney
Any attorney, as that term is defined in 37 CFR § 10.1(c) [i.e., "an individual who is a member in good standing of the bar of any United States court or the highest court of any state"], is eligible to represent others before the Office in trademark cases, including proceedings before the Board, and in other non-patent cases. Such an attorney is not required to apply to the Office for registration or recognition to practice before the Office in trademark and other non-patent cases.83
An attorney, as defined in 37 CFR § 10.1(c), will be accepted as a representative of a party in a proceeding before the Board if the attorney (1) signs a document that is filed with the Office on behalf of the party and satisfactorily identifies himself or herself as an attorney,84 (2) appears in person, or (3) files a written power of attorney signed by the party the attorney represents.85
When representation has been established by the filing of a paper, a new notice of appearance is sufficient to change the attorney of record. However, if representation has been established by the filing of a power of attorney, and thereafter another attorney or other authorized representative appears on behalf of the party, a new power of attorney is required to change the attorney of record.86
When an attorney, as defined in 37 CFR § 10.1(c), acting in a representative capacity signs a paper or appears in person in a proceeding before the Board, his or her personal signature or appearance constitutes, inter alia, a representation to the Office that, under the provisions of 37 CFR § 10.14 (which specifies the types of individuals who may practice before the Office in trademark and other non-patent cases) and the laws of the jurisdiction where the attorney is licensed to practice that he or she is authorized to represent the particular party in whose behalf he or she acts. If there is some question as to whether an individual who makes such an appearance is authorized to act in a representative capacity, further proof of his or her authority may be required.87
If a formal power of attorney is filed in a proceeding before the Board, it should state the name and address of the individual or individuals to whom the power is granted, identify the party granting the power, indicate the power being granted (e.g., "to represent Opposer in this proceeding, with full power of substitution and revocation, and to transact all business in the United States Patent and Trademark Office in connection therewith”), and be signed by the party granting the power. The Office requires that a power of attorney specify the names of one or more individuals. A power that specifies both the names of one or more individuals and the name of a firm will be regarded as a power to the individual(s).88 A power that specifies only the name of a firm will be regarded not as a power to the firm but rather simply as a designation of an address to which correspondence is to be sent.89
114.04 Representation by Non-lawyer (i.e., "Other Authorized Representative")
The only non-lawyers permitted to represent others in trademark cases before the Office, including proceedings before the Board, are those who were recognized to practice before the Office in trademark cases under Chapter 1 of 37 CFR prior to January 1, 1957.90 Before such a representative may take any action of any kind in a proceeding before the Board, however, the representative must file in the proceeding a written authorization from the party that he or she represents, or from another person entitled to prosecute the case (e.g., the party's appointed attorney of record).91
114.05 Representation by Foreign Attorney or Agent
37 CFR § 10.14(c) Foreigners. Any foreign attorney or agent not a resident of the United States who shall prove to the satisfaction of the Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark cases, provided: the patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark cases before the United States Patent and Trademark Office. Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.
Under certain conditions, specified in 37 CFR § 10.14(c), a foreign attorney or agent who is not a resident of the United States may be recognized for the limited purpose of representing, in trademark cases before the Office, parties located in the country in which the attorney or agent resides or practices. For information on how to meet the specified conditions, contact the USPTO's Office of Enrollment and Discipline. When a foreign attorney is recognized to practice before the Office, the parties are reminded that the certificate of mailing procedure is not available for use on mail that originates in a foreign country.
Currently, Canada provides substantial reciprocal privileges to attorneys in the United States to practice before its trademark office. Therefore, the USPTO’s Office of Enrollment and Discipline recognizes Canada as qualifying for the limited exception provided in § 10.14(c) permitting the Canadian attorney to represent a Canadian party before the Office. The Office of Enrollment and Discipline maintains a list of attorneys who are registered or in good standing with the Canadian Intellectual Property Office.
However, the certificate of mailing procedure is not available for use on mail that originates in Canada, as it is not deposited in the United States mail as required by the certification.
114.06 Individual Not Entitled to Represent Others
An individual who is not entitled, under 37 CFR § 10.14(a), (b), or (c), to practice before the Office in trademark cases, will not be permitted to represent a party in a proceeding before the Board.92
If it comes to the attention of the Board that an individual who is not entitled, under 37 CFR § 10.14(a), (b), or (c), to practice before the Office in trademark cases, is attempting to represent a party in a Board proceeding, the Board will notify the individual that he or she is not entitled to do so. If the individual signs and files a paper on behalf of a party to a Board proceeding, the paper will not be considered unless a new copy thereof, signed by the party or by an authorized representative who is entitled to practice before the Office in trademark cases, is filed.
Moreover, no Board correspondence intended for the party will be sent to that individual. Rather, the Board will send such correspondence to the party itself, or to the party's attorney or other authorized representative entitled to practice before the Office in trademark cases.93
114.07 Designation of Domestic Representative
37 CFR § 2.24 Designation of representative by foreign applicant.
If an applicant is not domiciled in the United States, the applicant may designate by a document filed in the United States Patent and Trademark Office the name and address of some person resident in the United States on whom may be served notices or process in proceedings affecting the mark. If the applicant does not file a document designating the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, or if the last person designated cannot be found at the address given in the designation, then notices or process in proceedings affecting the mark may be served on the Director. The mere designation of a domestic representative does not authorize the person designated to prosecute the application unless qualified under paragraph (a), (b) or (c) of § 10.14 of this subchapter and authorized under § 2.17(b).
37 CFR § 2.119(d) If a party to an inter partes proceeding is not domiciled in the United States and is not represented by an attorney or other authorized representative located in the United States, the party may designate by document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in the proceeding. If the party has appointed a domestic representative, official communications of the United States Patent and Trademark Office will be addressed to the domestic representative unless the proceeding is being prosecuted by an attorney at law or other qualified person duly authorized under § 10.14(c) of this subchapter. If the party has not appointed a domestic representative and the proceeding is not being prosecuted by an attorney at law or other qualified person, the Office will send correspondence directly to the party, unless the party designates in writing another address to which correspondence is to be sent. The mere designation of a domestic representative does not authorize the person designated to prosecute the proceeding unless qualified under § 10.14(a), or qualified under § 10.14(b) and authorized under § 2.17(b).
Shown below is a suggested format for the designation of a domestic representative (the suggested format should appear below information identifying the proceeding in connection with which it is filed):
Designation of Domestic Representative
(Name of Domestic Representative), whose postal
address is ______________________________
______________________________________,
is hereby designated (Name of Designating Party)'s
representative upon whom notice or process in this
proceeding may be served.
__________________________
(Signature of Designating Party)
__________________________
(Identification of Person Signing)
__________________________
(Date of Signature)
Once a party has appointed a domestic representative, all correspondence in the case will be sent to the domestic representative, unless the party is represented by an attorney or other authorized representative located in the United States, or by a foreign attorney or agent duly qualified under 37 CFR § 10.14(c).94
If the party has not appointed a domestic representative and the proceeding is not being prosecuted by an attorney at law or other qualified person, the Office will send correspondence directly to the party, unless the party designates in writing another address to which correspondence is to be sent.95
114.08 Adverse Parties Represented by Same Practitioner
37 CFR § 10.66 Refusing to accept or continue employment if the interests of another client may impair the independent professional judgment of the practitioner.
(a) A practitioner shall decline proffered employment if the exercise of the practitioner's independent professional judgment in behalf of a client will be or is likely to be adversely affected by the acceptance of the proffered employment, or if it would be likely to involve the practitioner in representing differing interests, except to the extent permitted under paragraph (c) of this section.
(b) A practitioner shall not continue multiple employment if the exercise of the practitioner's independent professional judgment in behalf of a client will be or is likely to be adversely affected by the practitioner's representation of another client, or if it would be likely to involve the practitioner in representing differing interests, except to the extent permitted under paragraph (c) of this section. 45
(c) In the situations covered by paragraphs (a) and (b) of this section a practitioner may represent multiple clients if it is obvious that the practitioner can adequately represent the interest of each and if each consents to the representation after full disclosure of the possible effect of such representation on the exercise of the practitioner's independent professional judgment on behalf of each. 404.03(a)(2) Person Residing in United States – Nonparty
(d) If a practitioner is required to decline employment or to withdraw from employment under a Disciplinary Rule, no partner, or associate, or any other practitioner affiliated with the practitioner or the practitioner's firm, may accept or continue such employment unless otherwise ordered by the Director or Commissioner. 37 CFR § 2.120(b) Discovery deposition within the United States.
As a general rule, a practitioner (i.e., attorney or other authorized representative) may not represent parties with conflicting interests in proceedings before the Office. That is, a practitioner normally may not accept proffered employment, or continue multiple employment, if the exercise of the practitioner's independent professional judgment on behalf of one client is likely to be adversely affected by the practitioner's representation of another client, or if the employment would be likely to involve the practitioner in representing differing interests.96If a proposed deponent residing in the United States is not a party, or a person who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(3) to testify on behalf of a party, the responsibility rests wholly with the deposing party to secure the attendance of the proposed deponent. If the proposed deponent is not willing to appear voluntarily, the deposing party must secure the deponent's attendance by subpoena, pursuant to 35 U.S.C. § 24 and Fed. R. Civ. P. 45.47 The subpoena must be issued from the United States district court in the Federal judicial district where the deponent resides or is regularly employed.
However, a practitioner may represent multiple clients under the particular circumstances specified in 37 CFR § 10.66(c). 46
If it comes to the attention of the Board that two or more parties whose interests are in conflict appear to be represented by the same practitioner, or by different practitioners within the same firm, each of the parties and their practitioner(s) will be notified by the Board, in writing, of the possible conflict of interest. 48
It is the responsibility of a practitioner to ensure that there is no violation of the rules cited above. If an impermissible conflict exists, a practitioner should take appropriate action immediately. A practitioner who fails to do so may be subjected to disciplinary action.9749 If a person named in a subpoena compelling attendance at a discovery deposition fails to attend the deposition, or refuses to answer a question propounded at the deposition, the deposing party must seek enforcement from the United States District Court that issued the subpoena; the Board has no jurisdiction over such depositions.
115.01 Applicable Rules
The conduct of an attorney or other authorized representative in proceedings before the Board is governed by Part 10 of 37 CFR. Part 10 contains both Canons (set out in Rules 10.21, 10.30, 10.46, 10.56, 10.61, 10.76, 10.83, 10.100, and 10.110) and Disciplinary Rules (set out in Rules 10.22-10.24, 10.31-10.40, 10.47-10.57, 10.62-10.68, 10.77, 10.78, 10.84, 10.85, 10.87-10.89, 10.92, 10.93, 10.101-10.103, 10.111, and 10.112). Canons are "statements of axiomatic norms, expressing in general terms the standards of professional conduct expected of practitioners in their relationships with the public, with the legal system, and with the legal profession," while Disciplinary Rules are "mandatory in character and state the minimum level of conduct below which no practitioner can fall without being subjected to disciplinary action."98
115.02 Disciplinary Proceedings
37 CFR § 2.193 Trademark correspondence and signature requirements.
(c) * * * *
(2) The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any document by a party, whether a practitioner or non-practitioner, constitutes a certification under § 10.18(b) of this chapter. Violations of § 10.18(b)(2) of this chapter by a party, whether a practitioner or non-practitioner, may result in the
(b) By presenting to the Office (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that-
(1) All statements made therein of the party's own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Patent and Trademark Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or makes any false, fictitious or fraudulent statements or representations, or makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001, and that violations of this paragraph may jeopardize the validity of the application or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom; and
(2) To the best of the party's knowledge, information and belief, formed after an inquiry reasonable under the circumstances, that-
(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of prosecution before the Office;
(ii) The claims and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
37 CFR § 10.130 Reprimand, suspension or exclusion.
(a) The Commissioner may, after notice and opportunity for a hearing, (1) reprimand or (2) suspend or exclude, either generally or in any particular case, any individual, attorney, or agent shown to be incompetent or disreputable, who is guilty of gross misconduct, or who violates a Disciplinary Rule.
(b) Petitions to disqualify a practitioner in ex parte or inter partes cases in the Office are not governed by §§ 10.130 through 10.170 and will be handled on a case-by-case basis under such conditions as the Commissioner deems appropriate.
By rule change effective December 1, 1997, 37 CFR § 2.193(c)(2) was amended to provide that by presenting a paper to the Office, the signer makes the certifications set forth in 37 CFR
§ 10.18(b), and is subject to sanctions under 37 CFR § 10.18(c) for violation of 37 CFR § 10.18(b)(2), regardless of whether the party is a practitioner or non-practitioner.99
The rules governing disciplinary proceedings are set out in 37 CFR §§ 10.130-10.170. Such a proceeding is instituted only under the circumstances specified in 37 CFR §§ 10.131-10.132.
115.03 Petitions to Disqualify
37 CFR § 10.130(b) Petitions to disqualify a practitioner in ex parte or inter partes cases in the Office are not governed by §§ 10.130 through 10.170 and will be handled on a case-by-case basis under such conditions as the Commissioner deems appropriate.
Petitions to disqualify practitioners representing parties in ex parte or inter partes cases before the Board are not disciplinary proceedings and hence are not governed by 37 CFR §§ 10.130-10.170. Rather, petitions to disqualify are governed by 37 CFR § 10.130(b).100
When a petition to disqualify is filed in connection with a proceeding pending before the Board, the Board immediately issues an action suspending proceedings in the case and advising the parties that no additional papers should be filed by the parties until further notice, pending consideration of the petition.
For further information concerning petitions to disqualify, see TBMP § 513.02.
116.01 Revocation of Authority
37 CFR § 2.19 Revocation of power of attorney; withdrawal.
(a) Authority to represent an applicant, registrant or a party to a proceeding may be revoked at any stage in the proceedings of a case upon notification to the Director; and when it is so revoked, the Office will communicate directly with the applicant, registrant or party to the proceeding, or with the new attorney or domestic representative if one has been appointed. The Office will notify the person affected of the revocation of his or her authorization.
Authority to represent a party in a proceeding before the Board may be revoked, at any stage of the proceeding, by filing a written revocation with the Board. Thereafter, the Board will not recognize that person as a representative in the case, or give any consideration to any papers which he or she may file therein, unless a new written authorization of that person, signed by the party, is filed in the proceeding.
116.02 Withdrawal as Representative--In General
37 CFR § 2.19(b) If the requirements of § 10.40 of this chapter are met, an attorney authorized to represent an applicant, registrant or party in a trademark case may withdraw upon application to and approval by the Director.
37 CFR § 10.40 Withdrawal from employment.
(a) A practitioner shall not withdraw from employment in a proceeding before the Office without permission from the Office (see §§ 1.36 and 2.19 of this subchapter). In any event, a practitioner shall not withdraw from employment until the practitioner has taken reasonable steps to avoid foreseeable prejudice to the rights of the client, including giving due notice to his or her client, allowing time for employment of another practitioner, delivering to the client all papers and property to which the client is entitled, and complying with applicable laws and rules. A practitioner who withdraws from employment shall refund promptly any part of a fee paid in advance that has not been earned.
(b) Mandatory withdrawal. A practitioner representing a client before the Office shall withdraw from employment if:
(1) The practitioner knows or it is obvious that the client is bringing a legal action, commencing a proceeding before the Office, conducting a defense, or asserting a position in litigation or any proceeding pending before the Office, or is otherwise having steps taken for the client, merely for the purpose of harassing or maliciously injuring any person;
(2) The practitioner knows or it is obvious that the practitioner's continued employment will result in violation of a Disciplinary Rule;
(3) The practitioner's mental or physical condition renders it unreasonably difficult for the practitioner to carry out the employment effectively; or
(4) The practitioner is discharged by the client.
(c) Permissive withdrawal. If paragraph (b) of this section is not applicable, a practitioner may not request permission to withdraw in matters pending before the Office unless such request or such withdrawal is because:
(1) The petitioner's client:
(i) Insists upon presenting a claim or defense that is not warranted under existing law and cannot be supported by good faith argument for an extension, modification, or reversal of existing law;
(ii) Personally seeks to pursue an illegal course of conduct;
(iii) Insists that the practitioner pursue a course of conduct that is illegal or that is prohibited under a Disciplinary Rule;
(iv) By other conduct renders it unreasonably difficult for the practitioner to carry out the employment effectively;
(v) Insists, in a matter not pending before a tribunal, that the practitioner engage in conduct that is contrary to the judgment and advice of the practitioner but not prohibited under the Disciplinary Rule; or
(vi) Has failed to pay one or more bills rendered by the practitioner for an unreasonable period of time or has failed to honor an agreement to pay a retainer in advance of the performance of legal services.
(2) The practitioner's continued employment is likely to result in a violation of a Disciplinary Rule;
(3) The practitioner's inability to work with co-counsel indicates that the best interests of the client likely will be served by withdrawal;
(4) The practitioner's mental or physical condition renders it difficult for the practitioner to carry out the employment effectively;
(5) The practitioner's client knowingly and freely assents to termination of the employment; or
(6) The practitioner believes in good faith, in a proceeding pending before the Office, that the Office will find the existence of other good cause for withdrawal.
Under certain circumstances, a practitioner may withdraw from employment as the attorney or other authorized representative of a party to a proceeding before the Board. A practitioner who wishes to withdraw must file a written request with the Board for permission to do so. The practitioner may not withdraw until he or she has complied with the conditions specified in 37 CFR § 10.40(a).
116.03 When Withdrawal is Mandatory
Withdrawal from employment as the attorney or other representative of a party to a Board proceeding is mandatory under the circumstances specified in 37 CFR § 10.40(b).
116.04 When Withdrawal is Permissive
Withdrawal from employment as the attorney or other authorized representative of a party to a Board proceeding is permissive under the circumstances specified in 37 CFR § 10.40(c).
116.05 Request to Withdraw
A practitioner who wishes to withdraw from employment as the attorney or other authorized representative of a party to a proceeding before the Board must file a written request with the Board for permission to do so. The request to withdraw must be based upon one of the grounds for mandatory or permissive withdrawal listed in 37 CFR §§ 10.40(b) and (c). Moreover, the practitioner must comply with the requirements of 37 CFR § 10.40(a). See 37 CFR §§ 2.19(b) and 10.40.101
The propriety of a request for permission to withdraw as counsel in an application that is the subject of a potential opposition is determined by the Board, and not the examining operation.102
For further information concerning the requirements for a request to withdraw as representative, and the action taken by the Board when such a request is granted, see TBMP § 513.01.
37 CFR § 2.18 Correspondence, with whom held.
(a) If documents are transmitted by an attorney, or a written power of attorney is filed, the Office will send correspondence to the attorney transmitting the documents, or to the attorney designated in the power of attorney, provided that the attorney is an attorney as defined in §10.1(c) of this chapter.
(b) The Office will not undertake double correspondence. If two or more attorneys appear or sign a document, the Office’s reply will be sent to the address already established in the record until the applicant, registrant or party, or its duly appointed attorney, requests in writing that correspondence be sent to another address.
(c) If an application, registration or proceeding is not being prosecuted by an attorney but a domestic representative has been appointed, the Office will send correspondence to the domestic representative, unless the applicant, registrant or party designates in writing another correspondence address.
(d) If the application, registration or proceeding is not being prosecuted by an attorney and no domestic representative has been appointed, the Office will send correspondence directly to the applicant, registrant or party, unless the applicant, registrant or party designates in
writing another correspondence address.
37 CFR § 2.24 Designation of representative by foreign applicant.
If an applicant is not domiciled in the United States, the applicant may designate by a document filed in the United States Patent and Trademark Office the name and address of some person resident in the United States on whom may be served notices or process in proceedings affecting the mark. If the applicant does not file a document designating the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, or if the last person designated cannot be found at the address given in the designation, then notices or process in proceedings affecting the mark may be served on the Director. The mere designation of a domestic representative does not authorize the person designated to prosecute the application unless qualified under paragraph (a), (b) or (c) of §10.14 of this subchapter and authorized under §2.17(b).
37 CFR § 2.119(d) If a party to an inter partes proceeding is not domiciled in the United States and is not represented by an attorney or other authorized representative located in the United States, the party may designate by document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in the proceeding. If the party has appointed a domestic representative, official communications of the United States Patent and Trademark Office will be addressed to the domestic representative unless the proceeding is being prosecuted by an attorney at law or other qualified person duly authorized under § 10.14(c) of this subchapter. If the party has not appointed a domestic representative and the proceeding is not being prosecuted by an attorney at law or other qualified person, the Office will send correspondence directly to the party, unless the party designates in writing another address to which correspondence is to be sent. The mere designation of a domestic representative does not authorize the person designated to prosecute the proceeding unless qualified under § 10.14(a), or qualified under § 10.14(b) and authorized under § 2.17(b).
117.01 In General
Whenever the Board takes an action in a proceeding before it, the Board sends a copy of the action to each party or to the party's attorney or other authorized representative. Such correspondence will be sent to the party at the party's address of record in the proceeding, unless an appearance is made on behalf of the party by an attorney (as defined in 37 CFR § 10.1(c)), or a written power of attorney is filed, or written authorization of some other person entitled to be recognized is filed, or the party designates in writing another address to which correspondence is to be sent. If one of these events occurs, correspondence will be sent not to the party's address of record, but rather to the attorney who makes the appearance, or to the attorney designated in the power of attorney, or to the other person designated in the written authorization, or to the address designated by the party for correspondence.103 If there is no attorney of record, but a domestic representative has been appointed, correspondence will be sent to the domestic representative, unless the party designates in writing another correspondence address. If there is no attorney of record and no domestic representative has been appointed, correspondence will be sent directly to the party. Correspondence will continue to be sent to such address until the party, or the party's attorney or other representative, indicates in writing that correspondence is to be sent to another address.104
The mailing of correspondence in accordance with standard Office mailing procedures creates a presumption of receipt of correspondence.105
117.02 When There is More Than One Attorney or Other Authorized
Representative
If a power of attorney names more than one individual, and does not specify which of them is to have primary responsibility for the case and receive correspondence, the name(s) of the individual attorney(s) in the signature block of the covering transmittal letter will be used by the Board on the proceeding file, on correspondence for the party, and on the final decision of the Board, to identify counsel for the party, unless the party or one of the named attorneys requests otherwise in writing. If there is no transmittal letter, and no other indication as to which of the named attorneys is to have primary responsibility for the case and receive correspondence, the name of the first listed attorney will be used by the Board on the proceeding file, on correspondence for the party, and on the Board's final decision, unless the party or one of the named attorneys requests otherwise in writing.
The Board ordinarily will not undertake double correspondence, that is, the sending of correspondence to two addresses on behalf of a single party. If more than one attorney or other authorized representative makes an appearance on behalf of a party, the papers filed by the additional attorney(s) or other authorized representative(s) will be accepted, but the Board will send correspondence to only one of them, to be determined according to the circumstances in the case.106
For example, if one attorney or other authorized representative ("A") makes an appearance on behalf of a party, and his or her address is thus established in the proceeding file as the correspondence address, following which a second attorney or other authorized representative ("B") makes an appearance on behalf of the party, and files a written request that correspondence be sent to him or her, the correspondence address in the proceeding file will be changed, and future correspondence will be sent to B, rather than A. No requirement will be made that B submit authorization, from the party or from A, for the change of correspondence address, nor will B be required to serve a copy of the request upon A. If B does not file a written request that correspondence be sent to him or her, correspondence will continue to be sent to A.
If a power of attorney from a party to one attorney ("A") has been filed, and thereafter another attorney or other authorized representative ("B") makes an appearance on behalf of the party and files a written request that correspondence be sent to him or her, B ordinarily will be required to submit authorization, from the party or from A, for the requested change in the correspondence address. However, if B's request for change of correspondence address bears proof of service of a copy thereof upon both the party and A, and neither files an objection to the request, the correspondence address will be changed, and future correspondence will be sent to B, rather than to A.
If a power of attorney from a party to one attorney ("A") has been filed, and thereafter a power of attorney from the party to another attorney ("B") is filed, the second power of attorney will be construed, even if there is no revocation of the first power, as a written request to change the correspondence address from A to B, unless the party or A directs otherwise. Cf. TMEP § 603. Likewise, if an attorney makes an appearance on behalf of a party, and thereafter the party files a written power of attorney to another attorney, the Board will send subsequent correspondence to the appointed attorney.
If a power of attorney from a party to one attorney ("A") has been filed, and thereafter A files an "associate power of attorney" to another attorney ("B"), the correspondence address will remain unchanged, and the Board will continue to send correspondence to A, unless A or the party directs otherwise.107
If a power of attorney from a party to several attorneys ("A," "B," and "C") in the same firm ("XYZ") has been filed, and thereafter A leaves the firm but does not file a request that all future correspondence be sent to him or her, rather than to B and/or C, the Board will continue to send correspondence to B and/or C. If A, after leaving firm XYZ, does file a request that all future correspondence be sent to him or her, rather than to B and/or C, the correspondence address will be changed as requested. If, however, B and C object, and maintain that it is they, rather than A, who continue to represent the party and are entitled to receive correspondence, proceedings in the case will be suspended until a designation of correspondence address by the party has been submitted.
If oppositions or petitions for cancellation filed by different opposers or petitioners against the same application or registration are consolidated, or if an opposition or petition for cancellation is filed by joint opposers or petitioners, and the different plaintiffs are represented by different attorneys or other authorized representatives, rather than by the same one(s), the Board, in its discretion, may request that the plaintiffs appoint one lead counsel, to whom the Board may send correspondence intended for the plaintiffs.108 After the lead counsel has been appointed, the Board will send one copy of any forthcoming Board order, decision, or other communication to the applicant or its attorney or other authorized representative, and one copy to plaintiffs' lead counsel. Lead counsel in turn will be responsible for making and distributing copies of such Board correspondence to each plaintiff or its attorney or other authorized representative. In these cases, the lead counsel is not substituted for the separate counsel of each plaintiff, but rather is responsible for coordinating the conduct of the plaintiffs' cases. A Board action requesting the appointment of lead counsel normally includes a detailed explanation of the anticipated duties and responsibilities of lead counsel.
In special circumstances, the Board, in its discretion, may send a particular item of correspondence to more than one address on behalf of a single party. However, the Board will not send correspondence to more than one address on behalf of a single party on a continuing basis.
117.03 Continuation of Correspondence With Representative in Application or
Registration When Inter Partes Proceeding Commences
In the case of a party whose application is the subject of a Board proceeding, any appearance or power of attorney (or designation of other authorized representative) of record in the application file at the time of the commencement of the Board proceeding is considered to be effective for purposes of the proceeding, and correspondence will be sent initially to that address.109 Thereafter, the correspondence address may be changed in appropriate circumstances.
However, in the case of a party whose registration is the subject of a proceeding before the Board, any representation which may be of record in the registration file at the time of the commencement of the Board proceeding is not considered to be effective for purposes of the Board proceeding. Rather, correspondence is sent to the registrant itself or its domestic representative unless and until an attorney makes an appearance in the Board proceeding in the registrant's behalf, or a written power of attorney is filed in the proceeding by the registrant, or written authorization of some other person entitled to be recognized is filed in the proceeding by the registrant, or the registrant designates in writing another address to which correspondence is to be sent.110
Changes of attorney addresses or powers of attorney in registration files are accepted by the Office when submitted with post-registration filings, such as those under Sections 7, 8, 9 or 15 of the Act, 15 U.S.C. §§ 1057, 1058, 1059 or 1065; as well as in a cancellation or concurrent use proceeding before the Board. The attorney representing the registrant is responsible for insuring that registrant’s correspondence address is updated. The Office accepts separate written address changes for registrants and domestic representatives, but global changes of address (when one paper is filed listing all involved registrations) will not be effective in changing the address in each file. A single TEAS111 form for recording a change of address, found at www.uspto.gov/teas/index.html, can be used to notice a change of address for more than one application or registration. The TEAS form can be used to change the correspondence address only on applications or registrations that are currently active.112
117.04 Continuation of Correspondence with Representative of Potential Opposer
After Opposition is Filed
When an attorney is appointed in a power of attorney accompanying an opposition, or makes an appearance by filing an opposition on behalf of the opposer, the Board will send correspondence to that attorney, notwithstanding the fact that another attorney or attorneys may have obtained one or more extensions of time to oppose on behalf of the opposer. If, however, a power of attorney filed with an opposition names several attorneys, and there is no transmittal letter and no other indication as to which of them is to have primary responsibility for the case and receive correspondence, but one of the named attorneys obtained an extension of time to oppose, correspondence will be sent to that attorney; if none of the named attorneys obtained an extension of time to oppose, correspondence will be sent to the first named attorney. Thereafter, the correspondence address may be changed in appropriate circumstances.
117.05 Correspondence After Revocation or Withdrawal
If the authority of a practitioner (i.e., attorney or other authorized representative) to represent a party in a proceeding before the Board is revoked, or the practitioner is granted permission to withdraw upon request therefor to the Board, and the party is not represented by any other practitioner, correspondence will be sent to the party at its address of record unless another practitioner puts in an appearance, or a written appointment of another practitioner is filed, or the party designates in writing another address to which correspondence is to be sent.
117.06 Correspondence With Foreign Party
If a party to a Board proceeding is not domiciled in the United States and is not represented by an attorney or other authorized representative located in the United States, or by a foreign attorney or agent duly qualified under 37 CFR § 10.14(c), correspondence will be sent to the party's domestic representative, if one has been appointed. If the party has not appointed a domestic representative and the proceeding is not being prosecuted by an attorney or other qualified person, the Office will send correspondence directly to the party, unless the party designates in writing another address to which correspondence is to be sent.113
117.07 Change of Address
If a party to a Board proceeding or its attorney or other authorized representative moves, a separate written notice of the change of address should be filed with the Board and should reference the proceeding number. It is the responsibility of a party to a proceeding before the Board to ensure that the Board has the party's current correspondence address. If a party fails to notify the Board of a change of address, with the result that the Board is unable to serve correspondence on the party, default judgment may be entered against the party.
A party or its attorney or other authorized representative should not assume that the inclusion of a new address on a document directed to another matter, or on the envelope in which a paper is filed, is sufficient to notify the Board of a change of address. Mail sent to the Office is opened in the USPTO Mail Room, and ordinarily the envelopes are discarded there before the mail is sent on to its ultimate destination within the Office. Thus, the Board rarely sees the return addresses on the mailing envelopes of papers filed in Board proceedings. Moreover, while it is the normal practice of the Board to check the address on newly filed papers and to change its records to reflect any noted change of address, the Board has no obligation to do so. The responsibility for any failure to receive correspondence due to a change of address of which the Board has not been given separate written notice lies with the party or its attorney or other authorized representative.
117.08 Individual Not Entitled to Represent Others
An individual who is not entitled, under 37 CFR § 10.14(a), (b), or (c), to practice before the Office in trademark cases, will not be permitted to represent a party in a proceeding before the Board, and may not file papers on behalf of the party.114 If it comes to the attention of a Board attorney that such an individual is attempting to represent a party in a Board proceeding, the Board attorney will bring the matter to the attention of the Chief Administrative Trademark Judge, who will coordinate appropriate action with the Office of Enrollment and Discipline. Moreover, no Board correspondence intended for the party will be sent to the individual. Rather, the Board will send such correspondence to the party itself, or to the party's attorney or other authorized representative entitled to practice before the USPTO in trademark cases.115
118.01 Lists of Fees and Charges
A list of the fees and charges established by the USPTO for trademark cases may be found in 37 CFR § 2.6, and are usually posted on the USPTO web site at www.uspto.gov.
A list of fees and charges established by the USPTO for miscellaneous services may be found in 37 CFR §§ 1.21, as well as on the USPTO web site.
A list of fees and charges for processing correspondence relating to international applications and registrations under the Madrid Protocol may be found in 37 CFR § 7.6 as well as on the USPTO web site. International fees that may be paid to the International Bureau through the Office in connection with international applications and registrations may be found in 37 CFR § 7.7 as well as on the WIPO web site.
118.02 Fees Payable in Advance
37 CFR § 2.206 Trademark Fees payable in advance.
(a) Trademark fees and charges payable to the Office are required to be paid in advance; that is, at the time of requesting any action by the Office for which a fee or charge is payable.
(b) All fees paid to the Office must be itemized in each individual trademark application, or registration file, or trademark proceeding, so the purpose for which the fees are paid is clear. The Office may return fees that are not itemized as required by this paragraph.
118.03 Method of Payment--In General
37 CFR § 2.207 Method of payment.
(a) All payments of money required in Trademark cases, including fees for the processing of international trademark applications and registrations that are paid through the Office, shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank note, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. (Checks made payable to the Commissioner of Patents and Trademarks will continue to be accepted.) Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent to the Office by mail will be at the risk of the sender, and letters containing money should be registered with the United States Postal Service.
(b) Payments of money required for trademark fees may also be made by credit card. Payment of a fee by credit card must specify the amount to be charged to the credit card and such other information as is necessary to process the charge, and is subject to collection of the fee. The Office will not accept a general authorization to charge fees to a credit card. If credit card information is provided on a form or document other than a form provided by the Office for the payment of fees by credit card, the Office will not be liable if the credit card number becomes public knowledge.
It is the practice of the Office to routinely accept, as "conditional" payment of a fee, a signed uncertified check. If such a check is returned for insufficient funds, the fee remains unpaid, and the filing date of the fee will be the filing date of any resubmitted adequate payment.116 An unsigned check will be returned to its sender, but the Director has the discretion to accept such a check, as "conditional" payment, upon petition showing sufficient cause therefor.117
The Office cannot accept U.S. Treasury checks that have been issued to the applicant or to another party as payment of Office fees. This is true for all refund checks whether issued from the Office or any other government agency. Office rules require that money orders and checks be made payable to the Director of Patents and Trademarks and do not permit the acceptance of U.S. Treasury checks endorsed by the applicant in payment of fees.
Papers accompanied by fees may be filed by delivery to the finance window at 2900 Crystal Drive, South Tower Building, Third Floor, Arlington, VA.118
118.04 Method of Payment--Deposit Accounts
For the convenience of attorneys and the general public in paying fees and charges to the Office, deposit accounts may be established in the Office.119 The Office has an automated financial system, the Revenue Accounting and Management (RAM) system, that allows transactions to occur over the Internet through the Office web site at www.uspto.gov. Deposit accounts can be maintained through the Internet and funds replenished using a credit card.
The fees for filing an ex parte appeal to the Board, an opposition, and a petition for cancellation, may all be charged to a deposit account, provided that the requirements of 37 CFR § 2.208 are met. However, the charging of a fee against an account that does not contain sufficient funds to cover it cannot be regarded as payment of the fee.120 Thus, the overdrawing of a deposit account may result in the loss of a vital date.121
The Office will not accept ex parte appeals if the notice of appeal is not accompanied by at least a $100 fee or specific authorization to charge the deposit account for that fee, as opposed to a general authorization which may have been provided when the application was filed. A general authorization to charge a deposit account will only be effective upon petition to the Director.122 Because the general authorization can only be invoked on petition, the Board itself cannot accept the general authorization as a basis for treating the appeal fee as timely submitted.
119.01 Fee Refunds--General Rule
37 CFR § 2.209 Refunds.
(a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a trademark application, appeal or other trademark filing for which the fee was paid, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
(b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph. If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 2.208(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
* * * *
119.02 Papers and Fees--Ex Parte Cases
After an application has received a filing date, papers filed in connection therewith, including ex parte appeal papers, will not be returned.123
If a notice of appeal to the Board from an examining attorney's final refusal is late filed, the appeal will not be entertained, the application will be abandoned, the notice of appeal will be retained in the application file, and any appeal fee submitted therewith will be refunded. If a notice of appeal is filed prematurely, the appeal will not be entertained, the notice of appeal will be retained in the application file, the application will be returned to the examining attorney for further appropriate action, and applicant will be advised that if a timely appeal is subsequently filed in the case, any fee submitted with the premature appeal will be applied thereto, or, if no timely appeal is filed, applicant may request a refund of any such fee.
If a final refusal to register is withdrawn by the examining attorney, and the application is approved for publication, following which the applicant, not knowing that the application has been approved for publication, files a notice of appeal, the appeal will not be instituted, the notice of appeal will be retained in the application file, and any appeal fee submitted therewith will be refunded. In such a case, the notice of appeal, and appeal fee, are considered to have been filed in excess, rather than by change of purpose, since at the time of its filing, the appeal was unnecessary. If, however, the examining attorney withdraws the refusal to register, and approves the application for publication, after an appeal to the Board has been filed, the appeal will be dismissed as moot, and the appeal fee will not be refunded (the appeal having been necessary at the time of its filing).
119.03 Papers and Fees--Inter Partes Cases
After an inter partes proceeding before the Board has been filed, papers and other materials filed in connection therewith, normally will not be returned. Exhibits to testimony and confidential materials filed under a protective order ordinarily are returned after the conclusion of a proceeding, including any appeal period, to the party that filed them.124
If because of a defect in an opposition or a petition for cancellation filed with the Board, a proceeding is not instituted, any submitted fee will be refunded.
No proceeding will be instituted, and any submitted filing fee will be refunded in the following circumstances:
(1) If an opposition filed during an extension of time to oppose is in the name of someone other than the person who obtained the extension, and the opposer is unable to show, pursuant to 37 CFR § 2.102(b), that it is in privity with the person who obtained the extension, or that the person in whose name the extension was requested was misidentified by mistake.
(2) If an opposition or a petition for cancellation is filed prematurely (i.e., prior to publication of the subject mark in the Official Gazette for purposes of opposition, or prior to issuance of a registration of the subject mark, respectively, even if the registration has issued by the time of the Board's action).
(3) If an opposition is filed after the time for opposing has expired; or, is filed unsigned, and a signed copy is not submitted within the time limit set in the notification of this defect by the Board; or is filed without the required fee; or if the opposed application was abandoned before the opposition was filed.125
Electronic fillings will not be accepted if any of the above-identified conditions exist.
Proceedings will be instituted, and the filing fee charged in the following circumstances:
(1) If a petition to cancel a Principal Register registration that is more than five years old does not allege any ground upon which such a registration can be cancelled (see Section 14 of the Act of 1946, 15 U.S.C. § 1064), the cancellation will be instituted and the Board will issue an order to show cause why the petition should not be dismissed for failure to state a claim.
(2) If a petition for cancellation is filed with respect to a registration which, at the time of the filing of the petition, was not a "live" registration (e.g., the time for filing an affidavit of use under Section 8 of the Act of 1946, 15 U.S.C. § 1058, had expired, and no acceptable affidavit had been filed; the registration had already been cancelled as the result of a previous cancellation proceeding), the proceeding will be instituted, and then dismissed as moot.
(3) If a party files an opposition or a petition for cancellation, and immediately thereafter changes its mind, and requests that the opposition or petition for cancellation not be instituted and that the papers be returned, the request ordinarily will be denied, and the proceeding will be instituted, unless there is a defect in the opposition or petition for cancellation which precludes institution, in which case no proceeding will be instituted, and any submitted fee will be refunded.
When a proceeding is erroneously instituted, the proceeding will be dismissed as a nullity, rather than vacated, so as to maintain the integrity of the proceeding numbers. All documents will be retained by the Board.
37 CFR § 2.27(d) Except as provided in paragraph (e) of this section, after a mark has been registered, or published for opposition, the file of the application and all proceedings relating thereto are available for public inspection and copies of the papers may be furnished upon paying the fee therefor.
37 CFR § 2.27(e) Anything ordered to be filed under seal pursuant to a protective order issued or made by any court or by the Trademark Trial and Appeal Board in any proceeding involving an application or a registration shall be kept confidential and shall not be made available for public inspection or copying unless otherwise ordered by the court or the Board, or unless the party protected by the order voluntarily discloses the matter subject thereto. When possible, only confidential portions of filings with the Board shall be filed under seal.
120.01 Nonconfidential Files
Except for materials filed under seal pursuant to a protective agreement, the files of applications and registrations which are the subject matter of pending proceedings before the Board, all pending proceeding files and exhibits thereto, and the files of applications which are the subject matter of "potential oppositions," are available for public inspection and copying at the offices of the Board.126 The electronic files of the Board are accessible via the Internet at http://ttabvue.uspto.gov .
An individual who wishes to inspect and/or copy one of the paper files may come to the Board's reception desk, where the Board maintains an electronic log of file requests, and ask for the file. The individual must identify the file by its number, so that the Board may locate it. If the request is logged in before noon, the file is generally available that afternoon. When the individual returns, the file will be given to him or her for inspection and/or copying on the premises of the Board. Files or portions thereof may not be taken away from the offices of the Board, and a person who removes papers from a file for copying at the offices of the Board should always return the papers to the file in their proper order.
To save time, an individual who wishes to inspect a file that is in the possession of the Board may call and ask that the file be located. When the file has been located, the Board will call the individual back to tell him or her that the file is available.
Electronic images of Board proceeding files can be viewed using TTABVUE at http://ttabvue.uspto.gov . The electronic image files are also available to the public in the Trademark Library Search Room.
For information concerning access to the files of cases that are on appeal from a decision of the Board, see TBMP § 904.
120.02 Confidential Materials
Materials filed with the Board under seal pursuant to a protective order entered by any court or by the Board and filed in compliance with TBMP § 412.06, will be kept confidential and will not be made available for public inspection or copying unless otherwise ordered by the court or the Board, or unless the party protected by the order voluntarily discloses the matter subject thereto. These materials may be inspected only by those individuals who are entitled, under the terms of the protective order, to have access to the protected information.127
To be handled as confidential, and kept out of the public record, submissions to the Board that are confidential must be filed under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must also be submitted. 128
Except for materials filed under seal pursuant to a protective order, the files of applications and registrations which are the subject matter of pending proceedings before the Board and all pending proceeding files and exhibits thereto are available for public inspection and copying. Therefore, only the particular discovery responses, exhibits, deposition transcript pages, or those portions of a brief, pleading or motion that disclose confidential information should be filed under seal pursuant to a protective order. If a party submits any brief, pleading, motion or other such filing containing confidential information under seal, the party must also submit for the
public record a redacted version of said papers.129 A good practice would be to stamp each page as “confidential” of a submission that contains such matter. Confidential materials filed in the absence of a protective order will not be kept confidential by the Board.130
120.03 Files of Terminated Proceedings
When an inter partes proceeding has been finally determined, i.e., when the proceeding is over, the Office takes certain further steps based on the final decision, including those steps necessary to give effect to the decision. This process is referred to as the "termination" of the proceeding.131 The electronic files of terminated proceedings continue to remain available through the electronic databases.
Pursuant to the National Archives retention schedule, terminated paper inter partes proceeding files that result in a final decision by the Board, e.g., motion for summary judgment, motion to dismiss, or final decision on the merits, are transferred to a warehouse for 3 years, then to the Federal Records Center for 27 years and then to the National Archives for permanent retention. All other terminated paper proceedings are transferred to a warehouse for 3 years and then transferred to the National Records Center where they remain for 27 years before destruction. The paper files of existing registrations are also stored at the warehouse. The paper files of cancelled and expired registrations are destroyed two years after the date of cancellation or expiration; the paper files of abandoned applications are destroyed two years after the date of abandonment. In addition, the paper files of terminated opposition proceedings numbered from 30,000 through 53,999, and of terminated cancellation proceedings numbered from 1 through 9399, have been destroyed.
An individual who wishes to inspect and/or copy a paper file stored by the Office in a warehouse may go to the Trademark Search Library and place an order for the file. Within a few days, the USPTO will obtain the ordered file from the warehouse, and make it available to the individual for inspection and/or copying at the Trademark Search Library. The file may not be removed from the premises of the Trademark Search Library.132
The Board has, on its office premises, a photocopier that is intended for use by members of the public who wish to photocopy files, exhibits, or other materials in the possession of the Board. Payment for use of the machine is made by way of a magnetic card, known as a "copy card," which may be purchased at, inter alia, the USPTO Finance Window located on the third floor of the South Tower Building, 2900 Crystal Drive, Arlington, Virginia, or from a machine located in the Trademark Search Library on the second floor of the South Tower Building. The photocopier will not operate until such a card has been inserted in it.
Electronic files can be accessed by the public through the Internet and copies of the documents in the electronic files can be downloaded and printed out by the user through TTABVUE.
Paper files or portions thereof may not be taken away from the offices of the Board, and a person who removes papers from a file for copying at the offices of the Board should always return the papers to the file in their proper order.
Alternatively, the USPTO Office of Public Records will furnish photocopies (either certified or uncertified) of trademark application and registration files, or of one or more papers therefrom, or of papers from the files of Board proceedings, upon written request and payment of the fee prescribed in 37 CFR § 2.6. The Office will also furnish, upon written request and payment of the fee prescribed in 37 CFR § 2.6, printed copies of trademark registrations, certified copies of registrations with information as to the current status and title of the registration, and abstracts of title to trademark applications and registrations.
All requests for certified and uncertified copies of trademark documents relating to applications or registrations, including copies of papers from the files of Board proceedings, and abstracts of title, are handled by the USPTO's Document Services, Office of Public Records. A written request (with the required fee) for copies should be addressed to Mail Stop Document Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. The written request, with fee, may also be hand delivered to the Public Service Window at 2900 Crystal Drive, South Tower Building, Second Floor, Arlington, Virginia 22202-3514; or to the Office of Public Records, Crystal Gateway 4, Third Floor, 1213 Jefferson Davie Highway, Arlington, Virginia 22202-3513; or to the Attorneys' Window at 2201 S. Clark Place, Crystal Plaza Building 4, First Floor, Arlington, Virginia 22202. Finally, if the written request includes an authorization to charge the required fee to a deposit account, the request may be sent by facsimile transmission to (703) 305-8759.133 Orders may also be placed over the Internet through the Office homepage at www.uspto.gov.
122.01 Court Requirements
If a copy of a Board proceeding file, or a portion thereof, is needed for use before a district court, the court may require a certified copy (which bears a seal). This may be obtained from the USPTO Document Services of the Office of Public Records.
A paper cannot be certified by the Office as being a true copy of a paper filed in a Board proceeding unless and until it has, in fact, been filed therein. The paper may be filed at the same time that the request for certification is made.
122.02 Certified Copies
Certified copies, bearing a seal, of Office proceeding files, including Board proceeding files, or portions thereof, may be ordered from the USPTO's Document Services, Office of Public Records, upon written request and payment of the required fee.134
The Office maintains a Trademark Status Line which provides access, by push-button telephone, to current status, status date (i.e., the date that a record entered its current status), and status location information for all active Federal trademark application and registration records maintained in the automated Trademark Reporting and Monitoring (TRAM) System.135 The line is available on (703) 305-8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday (except for Federal holidays). The Trademark Assistance Center provides general information about the registration process and can also answer status questions. The Center can be reached at 703-308-9000. Trademark application and registration information can also be obtained through the Office web site at www.uspto.gov and through the Trademark Applications and Registrations Retrieval (TARR) database at http://tarr.uspto.gov . The status of Board proceedings and of requests for extensions of time to oppose can be obtained through the Board Information Systems Index (BISX) at www.uspto.gov . Electronic images of Board proceeding files can be viewed using TTABVUE at http://ttabvue.uspto.gov . The electronic image files are also available to the public in the Trademark Library Search Room.
For further information concerning the Trademark Status Line, see TMEP § 1707.05, and TMEP §§ 108 et seq.
When a mark which is the subject of a Federal application or registration has been assigned, together with the application or registration, in accordance with Section 10 of the Act, 15 U.S.C. § 1060, any action with respect to the application or registration which may or must be taken by the applicant or registrant may be taken by the assignee (acting itself, or through its attorney or other authorized representative), provided that the assignment has been recorded or that proof of the assignment has been submitted.136 Similarly, when a mark which is not the subject of a Federal application or registration, but which is owned and pleaded by a plaintiff in a Board inter partes proceeding, has been assigned, the assignee may act in the proceeding (either itself, or through its attorney or other authorized representative) in place of the assignor, provided that proof of the assignment has been submitted in the proceeding.137
NOTE: Section 10 of the Act, 15 U.S.C. § 1060, and part 3 of 37 CFR are not applicable to 66(a) applications and registrations.138 Except in limited circumstances, requests to record assignments of 66(a) applications and registrations must be filed directly with the International Bureau.139 The International Bureau will notify the USPTO of any changes in ownership recorded in the International Register. The USPTO will record only those assignments, or other documents of title, that have been recorded in the International Register.140
15 U.S.C. § 1063(a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including as a result of dilution under section 43(c), may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 12 of this Act of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time for filing opposition. An opposition may be amended under such conditions as may be prescribed by the Director.
37 CFR § 2.101 Filing an opposition.
(a) An opposition proceeding is commenced by the filing of an opposition together with the required fee, in the Office.
(b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file an opposition, addressed to the Trademark Trial and Appeal Board. The opposition need not be verified, but must be signed by the opposer or the opposer's attorney, as specified in § 10.1(c) of this chapter, or other authorized representative, as specified in § 10.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii) are required for oppositions submitted electronically under paragraphs (b)(1) or (2) of this section.
(1) An opposition to an application based on section 1 or 44 of the Act must be filed either on paper or through ESTTA.
(2) An opposition to an application based on section 55(a) of the Act must be filed through ESTTA.
(c) The opposition must be filed within thirty days after publication (§ 2.80) of the application being opposed or within an extension of time (§ 2.102) for filing an opposition.
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37 CFR § 2.102 Extension of time for filing an opposition.
(a) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file in the Office a written request addressed to the Trademark Trial and Appeal Board to extend the time for filing an opposition. The written request need not be verified, but must be signed by the potential opposer or by the potential opposer’s attorney as specified in § 10.1(c) of this chapter, or authorized representative, as specified in § 10.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii) are required for electronically filed extension requests.
(1) A written request to extend the time for filing an opposition to an application filed under section 1 or 44 of the Act must be filed either on paper or through ESTTA.
(2) A written request to extend the time for filing an opposition to an application filed under section 66(a) of the Act must be filed through ESTTA.
(b) The written request to extend the time for filing an opposition must identify the potential opposer with reasonable certainty. Any opposition filed during an extension of time should be in the name of the person to whom the extension was granted. An opposition may be accepted if the person in whose name the extension was requested was misidentified through mistake or if the opposition is filed in the name of a person in privity with the person who requested and was granted the extension of time.
(c) The time for filing an opposition shall not be extended beyond 180 days from the date of publication. Any request to extend the time for filing an opposition must be filed before thirty days have expired from the date of publication or before the expiration of a previously granted extension of time, as appropriate.
(c) The time for filing an opposition shall not be extended beyond 180 days from the date of publication. Any request to extend the time for filing an opposition must be filed before thirty days have expired from the date of publication or before the expiration of a previously granted extension of time, as appropriate. Requests to extend the time for filing an opposition must be filed as follows:
(1) A person may file a first request for either a thirty-day extension of time, which will be granted upon request, or a ninety-day extension of time, which will be granted only for good cause shown.
(2) If a person was granted a thirty-day extension of time, that person may file a request for an additional sixty-day extension of time, which will be granted only for good cause shown.
(3) After receiving one or two extensions of time totaling ninety days, a person may file one final request for an extension of time for an additional sixty days. The Board will grant this request only upon written consent or stipulation signed by the applicant or its authorized representative, or a written request by the potential opposer or its authorized representative stating that the applicant or its authorized representative has consented to the request, or a showing of extraordinary circumstances. No further extensions of time to file an opposition will be granted under any circumstances.
Any person (whether natural or juristic--see TBMP § 303.02) who believes that he, she, or it would be damaged by the registration of a mark upon the Principal Register may, upon payment of the prescribed fee, file an opposition in the Office, stating the grounds therefor, within 30 days after the publication of the mark in the Official Gazette for purposes of opposition.1
Similarly, any person who believes that he, she, or it would be damaged by the registration of a mark upon the Principal Register may file a written request to extend the time for filing an opposition.2 Requests for extensions of time to oppose are determined by the Board.3
The time for filing a request for an extension of time to oppose is governed by Section 13(a) of the Act, 15 U.S.C. § 1063(a), and 37 CFR § 2.102(c). Other requirements for a request for extension of time to oppose are set forth in 37 CFR § 2.102(a) and (b). Moreover, an extension of time to oppose must also meet the general requirements for submissions to the Board specified in 37 CFR § 2.126. Each of these requirements is discussed in the sections that follow.
202.01 In General
U.S.C. § 1063(a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including as a result of dilution under section 43(c), may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 12 of this Act of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time for filing opposition. An opposition may be amended under such conditions as may be prescribed by the Director.
37 CFR § 2.102(c) The time for filing an opposition shall not be extended beyond 180 days from the date of publication. Any request to extend the time for filing an opposition must be filed before thirty days have expired from the date of publication or before the expiration of a previously granted extension of time, as appropriate. Requests to extend the time for filing an opposition must be filed as follows:
(1) A person may file a first request for either a thirty-day extension of time, which will be granted upon request, or a ninety-day extension of time, which will be granted only for good cause shown.
(2) If a person was granted a thirty-day extension of time, that person may file a request for an additional sixty-day extension of time, which will be granted only for good cause shown.
(3) After receiving one or two extensions of time totaling ninety days, a person may file one final request for an extension of time for an additional sixty days. The Board will grant this request only upon written consent or stipulation signed by the applicant or its authorized representative, or a written request by the potential opposer or its authorized representative stating that the applicant or its authorized representative has consented to the request, or a showing of extraordinary circumstances. No further extensions of time to file an opposition will be granted under any circumstances.
A first request for an extension of time to oppose an application for registration of a mark must be filed prior to the expiration of the thirty-day period after publication of the mark in the Official Gazette, pursuant to Section 12(a) of the Act, 15 U.S.C. § 1062(a), for purposes of opposition. Any request for a further extension of time to oppose must be filed prior to the expiration of an extension granted to the requesting party or its privy.4
The timely filing of documents in the Office requires that the documents actually be received in the Office within the set time period unless such documents are filed in accordance with 37 CFR §§ 2.197 and 2.198 that provide for filing of papers by certificate of mailing and Express Mail, respectively. Documents filed in accordance with these rules are considered as having been filed on the date of deposit as first class mail or Express Mail even though the mailed correspondence will not be received in the Office until after the due date.5 The Express Mail filing procedure applies only to the “Express Mail” of the United States Postal Service, not any third-party carrier that offers overnight delivery.6 For extension requests filed electronically through ESTTA, all time periods are calculated electronically and the filer is immediately informed of the timeliness of the filing.7
In the event that a particular extension request submitted on paper is timely filed with an appropriate certificate of mailing, pursuant to 37 CFR § 2.197, but is not received in the Office, the correspondence will be considered timely if the party that submitted it supplies an additional copy of the previously mailed extension request and certificate, and includes a statement attesting to the previous timely mailing. The statement must be verified if it is made by a person other than a practitioner, as defined in § 37 CFR 10.1(r).8 The only evidence accepted by the Office to prove deposit of the missing extension request is an exact copy of the disputed document including a copy of the executed original certificate of mailing.9 A reconstructed request and certificate of mailing will not suffice.
A potential opposer that has filed an extension request on paper should not wait until it has received notification from the Board of the grant or denial of the request before filing an opposition or a request for a further extension of time to oppose. If a request for an extension of time to oppose is granted, the length of the granted extension may be less than that sought in the extension request. The extension will run from the expiration of the thirty-day opposition period after publication. In the case of a subsequent extension, it will run from the date of expiration of the previously granted extension.10 While the Board attempts to notify a potential opposer of the grant of an extension request filed on paper before a granted extension expires, particularly when the length of the granted extension is less than that requested, the Board is under no obligation to do so, and in many cases cannot.11
No more than three requests to extend the time for filing an opposition, totaling 180 days from the date of publication, may be filed.12 A potential opposer may file a request for a thirty-day extension without a showing of cause, followed by a request for a sixty-day extension for good cause.13 Alternatively, the potential opposer may file a single request for a ninety-day extension of time for good cause. After one or two granted requests totaling 120 days from the date of publication, the potential opposer may request one final extension of time for an additional sixty days, but only with the written consent of the applicant or a showing of extraordinary circumstances.14
202.02 Date of Publication of Mark
The date of publication of a mark is the issue date of the Official Gazette in which the mark appears, pursuant to Section 12(a) of the Act, 15 U.S.C. § 1062(a), for purposes of opposition.
202.03 Premature Request
Section 13(a) of the Act, 15 U.S.C. § 1063(a), provides that an opposition to the registration of a mark upon the Principal Register may be filed "within thirty days after" the publication of the mark in the Official Gazette, pursuant to Section 12(a) of the Act, 15 U.S.C. § 1062(a), for opposition. Section 13(a) also provides for extensions of this time for filing an opposition under certain conditions. Thus, any opposition, and any request for an extension of time to oppose, filed before the publication of the mark sought to be opposed, is premature, and the Board will reject the opposition even if the mark has been published by the time of the Board's action.15
202.04 Late Request
A request for an extension of time to oppose must be filed prior to the expiration of the thirty-day period after publication (for opposition) of the mark which is the subject of the request, in the case of a first request, or prior to the expiration of an extension granted to the requesting party or its privy, in the case of a request for a further extension.16 Because these timeliness requirements are statutory, they cannot be waived by stipulation of the parties, nor can the Director upon petition waive them.17 Accordingly, a first request filed after the expiration of the thirty-day period following publication of the subject mark, or a request for a further extension filed after the expiration of the previous extension granted to the requesting party or its privy, must be denied by the Board as late, even if the applicant has consented to the granting of the late filed request.
Moreover, once the time for opposing the registration of a mark has expired, the Office will not withhold issuance of the registration while applicant negotiates for settlement with a party that failed to timely oppose. This is so even if the applicant itself requests that issuance be withheld.
203.01 In General
37 CFR § 2.102(a) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file in the Office a written request addressed to the Trademark Trial and Appeal Board to extend the time for filing an opposition. The written request need not be verified, but must be signed by the potential opposer or by the potential opposer’s attorney as specified in § 10.1(c) of this chapter, or authorized representative, as specified in § 10.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii) are required for electronically filed extension requests.
(1) A written request to extend the time for filing an opposition to an application filed under section 1 or 44 of the Act must be filed either on paper or through ESTTA.
(2) A written request to extend the time for filing an opposition to an application filed under section 66(a) of the Act must be filed through ESTTA.
(b) The written request to extend the time for filing an opposition must identify the potential opposer with reasonable certainty. Any opposition filed during an extension of time should be in the name of the person to whom the extension was granted. An opposition may be accepted if the person in whose name the extension was requested was misidentified through mistake or if the opposition is filed in the name of a person in privity with the person who requested and was granted the extension of time.
(c) The time for filing an opposition shall not be extended beyond 180 days from the date of publication. Any request to extend the time for filing an opposition must be filed before thirty days have expired from the date of publication or before the expiration of a previously granted extension of time, as appropriate. Requests to extend the time for filing an opposition must be filed as follows:
(1) A person may file a first request for either a thirty-day extension of time, which will be granted upon request, or a ninety-day extension of time, which will be granted only for good cause shown.
(2) If a person was granted a thirty-day extension of time, that person may file a request for an additional sixty-day extension of time, which will be granted only for good cause shown.
(3) After receiving one or two extensions of time totaling ninety days, a person may file one final request for an extension of time for an additional sixty days. The Board will grant this request only upon written consent or stipulation signed by the applicant or its authorized representative, or a written request by the potential opposer or its authorized representative stating that the applicant or its authorized representative has consented to the request, or a showing of extraordinary circumstances. No further extensions of time to file an opposition will be granted under any circumstances.
37 CFR § 2.126 Form of submissions to the Trademark Trial and Appeal Board.
(a) Submissions may be made to the Trademark Trial and Appeal Board on paper where Board practice or the rules in this part permit. A paper submission, including exhibits and depositions, must meet the following requirements:
(1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
(2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
(3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
(4) A paper submission must not be stapled or bound;
(5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in §2.123(g)(2);
(6) Exhibits pertaining to a paper submission must be filed on paper or CD-ROM concurrently with the paper submission, and comply with the requirements for a paper or CD-ROM submission.
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(c) Submissions may be made to the Trademark Trial and Appeal Board electronically via the Internet where the rules in this part or Board practice permit, according to the parameters established by the Board and published on the web site of the Office. Text in an electronic submission must be in at least 11-point type and double-spaced. Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission.
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A request for an extension of time to oppose must be made in writing and must specify the period of extension desired.18
A request for extension of time to oppose a Section 1 or 44 application may either be filed on paper or through ESTTA.19 However, a request for extension of time to oppose a 66(a) application must be filed through ESTTA.20 The requirements for paper and electronic submissions to the Board are specified in 37 CFR § 2.126(a) and (c), respectively. Available forms and instructions for electronic filing can be found at www.uspto.gov .
No more than three requests to extend the time for filing an opposition, totaling 180 days from the date of publication, may be filed.21 A potential opposer may file a request for a thirty-day extension without a showing of cause, followed by a request for a sixty-day extension for good cause, if the first request was granted.22 Alternatively, the potential opposer may file a single request for a ninety-day extension of time for good cause.23 After one or two granted requests totaling 120 days from the date of publication, the potential opposer may request one final extension of time for an additional sixty days only with the written consent of the applicant or a showing of extraordinary circumstances.24
203.02 Identifying Information
203.02(a) In General
An extension request filed on paper should bear at its top the heading "IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD," followed by information identifying the application to which the request pertains, namely, the name of the applicant, and the application serial number, filing date, mark, and date of publication in the Official Gazette.25 The request should also bear an appropriate title describing its nature, such as "Request for Extension of Time to Oppose" or "Request for Further Extension of Time to Oppose."
203.02(b) Requirement for Identification of Potential Opposer
A request for an extension of time to oppose must identify the potential opposer with reasonable certainty.26 If a request for extension of time to oppose fails to identify the potential opposer with reasonable certainty, the Board can allow the defect to be corrected only if the correction is made prior to the expiration of the time for filing the request, that is, before the expiration of the thirty-day opposition period following publication of the subject mark in the case of a first request, or of the previous extension in the case of a request for a further extension.27
If a request for a further extension of time to oppose does not specifically name the potential opposer, but it is clear from the circumstances that the request is being submitted on behalf of the same potential opposer which obtained an earlier extension, the request may be construed by the Board as identifying the potential opposer with reasonable certainty. However, the better, and safer, practice is to specifically name the potential opposer in each request for an extension of time to oppose.
203.03 Signature
37 CFR § 2.102(a) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file in the Office a written request addressed to the Trademark Trial and Appeal Board to extend the time for filing an opposition. The written request need not be verified, but must be signed by the potential opposer or by the potential opposer’s attorney as specified in § 10.1(c) of this chapter, or authorized representative, as specified in § 10.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii) are required for electronically filed extension requests.
* * * *
A request for an extension of time to oppose must be signed either by the potential opposer or by its attorney, as specified in 37 CFR § 10.1(c) or other authorized representative, as specified in 37 CFR § 10.14(b).28 A paper request should bear, under the written signature, the name, in typed or printed form, of the person signing; a description of the capacity in which he or she signs (e.g., as the individual who is the potential opposer, if the potential opposer is an individual; as a corporate officer, specifying the particular office held, if the potential opposer is a corporation; as potential opposer's attorney; etc.); and his or her business address (to which correspondence relating to the request will be sent) and telephone number. This information is required on the electronic form as well.
An extension request filed electronically through ESTTA, does not require a conventional signature. Instead the party or its representative enters a “symbol” that has been adopted as a signature. The Board will accept any combination of letters, numbers, space and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols.29
While a request for an extension of time to oppose must be signed, an unsigned paper request will not be refused consideration if a signed copy is submitted to the Office within the time limit set in the written notification of this defect by the Board.30 A extension request filed through ESTTA cannot be electronically transmitted to the Office unless all required fields, including the signature field, are completed.
A potential opposer that has submitted an unsigned paper request should not wait until it has submitted a signed copy of the request (in response to the Board's written notification of the defect), and the Board has acted on the request, before filing an opposition or a request for a further extension of time to oppose. If the extension request is ultimately granted, the length of the granted extension may be less than that sought in the extension request, and it will run from the expiration of the thirty-day opposition period after publication, in the case of a first request, or from the date of expiration of the previously granted extension, in the case of a subsequent request. If no opposition or request for further extension of time to oppose is filed prior to the expiration of any extension ultimately granted (after submission of a signed copy of the request) to the potential opposer, the time for opposing will be deemed to have expired, and the application that was the subject of the request will be sent to issue.31
203.04 Service
Trademark Rule 2.119(a), 37 CFR § 2.119(a), requires, in part, that with certain stated exceptions, every paper filed in the USPTO in inter partes cases must be served upon the other parties, and that proof of such service must be made before the Board will consider the paper. Trademark Rule 2.101(a), 37 CFR § 2.101(a), provides that the filing of an opposition in the Office commences an opposition proceeding. Inasmuch as a request for an extension of time to oppose is a paper filed prior to the commencement of the opposition, it is ex parte, rather than inter partes, in nature. Accordingly, the request need not include proof of service upon the applicant.32 Once the Board has acted upon a request for an extension of time to oppose, the Board will send the applicant a copy of the extension request together with the Board's action thereon.33
203.05 Duplicate Requests
It sometimes happens that duplicate requests for an extension of time to oppose are filed on behalf of the same party by two attorneys from the same firm, or from differing firms, or by an attorney from a firm and in-house counsel. Attorneys should make every effort to avoid the filing of such duplicate requests, which waste the time and resources, both of the Board and the attorneys.
When duplicate requests have been filed and the first request has been granted, the second request is given no consideration, and the attorneys are notified in writing of the duplicate filings and are requested to take appropriate action to avoid filing duplicate requests in the future. If requests filed by different attorneys on behalf of the same party are duplicates but for the fact that the second request seeks a longer extension than the first, the second request will be granted, if otherwise appropriate, but the attorneys will be requested in writing to avoid the filing of further duplicate requests.
There is no fee for filing a request for an extension of time to oppose.34
Although the mark in an application for registration on the Principal Register is published for, and subject to, opposition, the mark in an application for registration on the Supplemental Register is not.35 If it appears after examination of an application to register a mark on the Supplemental Register, that applicant is entitled to the registration; a certificate of registration is issued without any publication for opposition.36 Upon issuance of the registration, the mark appears in the Official Gazette, not for opposition, but rather to give notice of the registration's issuance.37
Accordingly, the Board must deny any request for an extension of time to oppose the mark in an application for registration on the Supplemental Register. The remedy of the would-be opposer lies in the filing of a petition to cancel the registration of the mark, once the registration has issued.38
37 CFR § 2.102 Extension of time for filing an opposition.
(a) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file in the Office a written request addressed to the Trademark Trial and Appeal Board to extend the time for filing an opposition.
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(b) The written request to extend the time for filing an opposition must identify the potential opposer with reasonable certainty. Any opposition filed during an extension of time should be in the name of the person to whom the extension was granted. An opposition may be accepted if the person in whose name the extension was requested was misidentified through mistake or if the opposition is filed in the name of a person in privity with the person who requested and was granted the extension of time.
206.01 General Rule
Any person (whether natural or juristic--see TBMP § 303.02) who believes that he, she, or it would will be damaged by the registration of a mark upon the Principal Register may, upon payment of the prescribed fee, file an opposition in the Office, stating the grounds therefor, within 30 days after the publication of the mark in the Official Gazette for purposes of opposition.39
Similarly, any person who believes that he, she, or it would be damaged by the registration of a mark upon the Principal Register may file a written request to extend the time for filing an opposition.40 Moreover, a request for an extension of time to oppose must identify the potential opposer with reasonable certainty.41
An extension of time to oppose is a personal privilege which inures only to the benefit of the party to which it was granted and those in privity with that party.42 For this reason, a request for a further extension of time to oppose, or an opposition filed during an extension of time, ordinarily must be filed in the name of the party to which the extension was granted.43 A request for a further extension, or an opposition, filed in a different name will be accepted if a person in privity with the person granted the previous extension files it, or if the person that requested the extension was misidentified through mistake.44
206.02 Request for Further Extension Filed by Privy
A request for a further extension, or an opposition, filed by a different party will not be rejected on that ground if it is shown to the satisfaction of the Board that the different party is in privity with the party granted the previous extension.45 The "showing" should be in the form of a recitation of the facts upon which the claim of privity is based, and must be submitted either with the request or opposition, or during the time allowed by the Board in its action requesting an explanation of the discrepancy. If the request for a further extension, or the opposition, is filed both in the name of the party granted the previous extension and in the name of one or more different parties, an explanation will be requested as to each different party, and the request will not be granted, or the opposition accepted, as to any different party which fails to make a satisfactory showing of privity.
In the field of trademarks, the concept of privity generally includes, inter alia, the relationship of successive ownership of a mark (e.g., assignor, assignee) and the relationship of "related companies" within the meaning of Sections 5 and 45 of the Act, 15 U.S.C. §§ 1055 and 1127.46 It does not, however, include the attorney/client relationship.47
If, at the time when a first request for an extension of time to oppose is being prepared, it is not clear which of two or more entities will ultimately be the opposer(s), the better practice is to name each of them, in that and any subsequent extension request, as a potential opposer, thereby avoiding any need for a showing of privity when an opposition or subsequent extension request is later filed by one or more of them.
206.03 Misidentification of Potential Opposer
A request for a further extension, or an opposition, filed in a different name will not be rejected on that ground if it is shown to the satisfaction of the Board that the party in whose name the extension was requested was misidentified through mistake.48 The phrase "misidentification by mistake," as used in 37 CFR § 2.102(b), means a mistake in the form of the potential opposer's name or its entity type, not the naming of a different existing legal entity that is not in privity with the party that should have been named.49
The "showing" submitted in support of a claim of misidentification by mistake should be in the form of a recitation of the facts upon which the claim of misidentification by mistake is based, and must be submitted either with the request or opposition, or during the time allowed by the Board in its letter requesting an explanation of the discrepancy.
37 CFR § 2.102(c) The time for filing an opposition shall not be extended beyond 180 days from the date of publication. Any request to extend the time for filing an opposition must be filed before thirty days have expired from the date of publication or before the expiration of a previously granted extension of time, as appropriate. Requests to extend the time for filing an opposition must be filed as follows:
(1) A person may file a first request for either a thirty-day extension of time, which will be granted upon request, or a ninety-day extension of time, which will be granted only for good cause shown.
(2) If a person was granted a thirty-day extension of time, that person may file a request for an additional sixty-day extension of time, which will be granted only for good cause shown.
(3) After receiving one or two extensions of time totaling ninety days, a person may file one final request for an extension of time for an additional sixty days. The Board will grant this request only upon written consent or stipulation signed by the applicant or its authorized representative, or a written request by the potential opposer or its authorized representative stating that the applicant or its authorized representative has consented to the request, or a showing of extraordinary circumstances. No further extensions of time to file an opposition will be granted under any circumstances.
207.01 In General
The time for filing an opposition will not be extended beyond 180 days from the date of publication.50 No more than three requests to extend the time to oppose may be filed. A potential opposer may file a first request for a thirty-day extension without a showing of cause,51 followed by a request for a sixty-day extension for good cause.52 Alternatively, the potential opposer may file a single request for a ninety-day extension of time for good cause.53 After one or two granted requests totaling120 days from the date of publication,54 the potential opposer may request one final extension of time for an additional sixty days with the consent of applicant or a showing of extraordinary circumstances.55 No further extensions of time to oppose will be permitted.
207.02 Extensions Up to 120 Days From the Date of Publication
A first extension of time to oppose for not more than thirty days will be granted upon written request, if the request is otherwise appropriate (e.g., is timely filed, identifies the potential opposer with reasonable certainty).56 No showing of cause is required for the first thirty-day extension.57
Following the first thirty-day extension of time to oppose, the Board may grant a further extension of time for sixty days provided good cause is shown for the further extension and the request is otherwise appropriate (e.g., is timely filed before the first thirty-day extension expires, includes a showing of privity, if necessary).58
Alternatively, a potential opposer may request a ninety-day extension of time in the first request, provided good cause for the extension is shown. If an otherwise proper first extension request seeks an extension of ninety days, but does not include a showing of good cause for the time in excess of thirty days, the potential opposer will be granted an extension of only thirty days.59
A showing of good cause for an extension of time to oppose over thirty days must set forth the reasons why additional time is needed for filing an opposition. Circumstances that may constitute good cause include, applicant's consent to the extension, settlement negotiations between the parties, the filing of a letter of protest by the potential opposer,60 an amendment of the subject application,61 the filing of a petition to the Director from the grant or denial of a previous extension,62 and civil litigation between the parties. The merits of the potential opposition are not relevant to the issue of whether good cause exists for the requested extension.
207.03 Extensions Beyond 120 Days From the Date of Publication
The time for filing an opposition will not be extended beyond 180 days from the date of publication. After one or two granted requests totaling 120 days from the date of publication,63 and prior to the expiration of the previous request, the potential opposer may request one final extension of time for an additional sixty days.64 No further extensions of time to file an opposition will be granted under any circumstances.65
The Board will grant this request if the potential opposer submits one of the following: (1) a written consent or stipulation signed by the applicant or its authorized representative, or (2) a written request by the potential opposer or its authorized representative stating that the applicant or its authorized representative has consented to the request,66 or (3) a showing of extraordinary circumstances.67 Consent must be express, though it may be provided orally, and the extension request must state that such consent has been provided. It is not sufficient to indicate in the request that the parties are discussing settlement; the request must expressly state that applicant has consented to the extension.68 In addition, the statement of consent should appear in the body of the request, not merely in the title (e.g. "Consented Request to Extend") of the filing.
If one of these elements (i.e., the showing of extraordinary circumstances, or applicant's written consent, or the statement that applicant has consented) is omitted from an extension request based in whole or in part upon the omitted element, the Board can allow the defect to be corrected only if the correction is made prior to the expiration of the time for filing the request, that is, prior to the expiration of the previous extension.69
NOTE: The remaining portion of this section applies only to cases where a first request for extension of time was filed before November 2, 2003. The rules and Board practice governing extensions of time to oppose that were in effect at that time (that is, prior to the November 2, 2003 rule amendments) will continue to apply to all extension requests filed in that case.
In cases where the first extension request was filed prior to November 2, 2003, the time for filing an opposition may be extended beyond 180 days. However, the time to oppose generally will not be extended beyond 360 days from the date of publication pending, for example, the final determination of another proceeding between the potential opposer and the applicant, or the conclusion of unduly prolonged settlement negotiations, or the filing of a new application, and its prosecution to publication or registration by the potential opposer or applicant.
Moreover, in addition to the requirement for consent or a showing of extraordinary circumstances, the Board will not grant an extension of time over 120 days from the date of publication unless the potential opposer submits a showing of good cause required for extensions of time beyond the first thirty-day extension period.
If an acceptable showing of extraordinary circumstances is submitted in support of a request for an extension running beyond 120 days from the date of publication, the requirement for a showing of good cause is satisfied. If a request for an extension running beyond 120 days from publication is based upon applicant's consent, but includes no recitation of other facts relating to good cause, applicant's consent will be construed as good cause for that request, but the potential opposer will be advised by the Board, in writing, that any further extension request based upon applicant's consent must include also a recitation of circumstances showing good cause for the request.
When a potential opposer files repeated extension requests based upon applicant's consent coupled with an assertion that the parties are negotiating for settlement, the Board ordinarily will require, for extensions aggregating more than 180 days from the date of publication of applicant's mark, that the extension request include also a report on the status of their settlement negotiations. In such a case, the Board, in writing, will advise potential opposer that any further extension requests made on the basis of consent and settlement negotiations should include a summary of the progress of the negotiations. If the subsequent request fails to include this summary, the request may be denied.
As a general rule, the Board will not grant extensions of time to oppose beyond 360 days from the date of publication, unless settlement has been reached and only needs to be executed. The general rule, however, will be applied flexibly and reasonably, depending upon the circumstances in a given case. For example, if a foreign party is involved, or if parties are trying to settle several cases at once, or if numerous parties are involved, more time may be allowed.
If any element (e.g., identification of potential opposer, showing of good cause, showing of extraordinary circumstances, applicant's written consent, statement that applicant has consented) essential to a particular request for extension of time to oppose is omitted from the request, the Board can allow the defect to be corrected only if the correction is made prior to the expiration of the time for filing the request, that is, prior to the expiration of the thirty-day opposition period following publication of the subject mark, in the case of a first request, or prior to the expiration of the previous extension, in the case of a request for a further extension.70
While a request for an extension of time to oppose must be signed, an unsigned paper request will not be refused consideration if a signed copy is submitted to the Office within the time limit set in the written notification of this defect by the Board.71 Extension requests filed through ESTTA cannot be electronically transmitted to the Office unless all required fields, including the signature field, are completed.
209.01 Suspension Policy
The Board will not suspend the running of an extension of time to oppose for any reason. A potential opposer must either continue to file timely requests for extensions of time, if it wishes to preserve its right to oppose, or file the notice of opposition. Once the notice of opposition is filed, however, the Board will suspend the opposition under appropriate circumstances.72
209.02 Determination of Extension Expiration Date
The extension expiration date stated in an action granting an extension, is the date upon which the extension actually expires, even if that date is a Saturday, Sunday, or a Federal holiday within the District of Columbia. If the expiration date falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, an opposition, or a request for a further extension, filed by the potential opposer on the next succeeding day which is not a Saturday, Sunday, or a Federal holiday will be considered timely.73 However, the beginning date for calculating the further extension is the actual expiration date of the previous extension, regardless of whether the expiration date fell on a weekend or Federal holiday.74
A potential opposer may file a first request for a thirty-day extension without a showing of cause,75 followed by a request for a sixty-day extension for good cause that is filed prior to the expiration of the first thirty-day period.76 Alternatively, the potential opposer may file a single request for a ninety-day extension of time for good cause.77 After one or two granted requests totaling 120 days from the date of publication,78 and prior to the expiration of the previous extension, the potential opposer may file one final extension request for an additional sixty days with the consent of applicant or a showing of extraordinary circumstances.79
If a first request for an extension of time to oppose asks for a time which is longer than thirty days (or seeks an extension of "thirty days," but specifies an extension expiration date which is later than the expiration date of the requested "thirty days"), and good cause is shown, the extension, if granted, will be set to expire in ninety days.80 If good cause for the time beyond thirty days has not been shown, the time will be set to expire on the thirtieth day.81
If a further request for extension of time to oppose (that is, beyond the first thirty-day request) asks for a time which is longer or shorter than sixty days (or asks for certain number of days, but specifies an extension expiration date which is longer or shorter than the expiration date of the requested number of days), and shows good cause, the extension, if granted, will be set to expire in sixty days.
If a further request seeks an extension of time to oppose beyond 120 days from the date of publication, but specifies a date which is longer or shorter than the prescribed additional sixty day period, the extension, if granted, will be set to expire in sixty days .
Since a request for an extension of time to oppose is ex parte in nature, there is no requirement that a copy has to be served upon the applicant.82 For the same reason, an applicant is not notified of the filing of an extension request before the Board has acted on it. Not until after the Board has acted on an extension request does the Board send the applicant a copy of the request (if there is no proof of service by potential opposer), together with notification of the Board's action.
An applicant may learn of the filing of an extension request, and file objections thereto, before applicant receives anything from the Board about the request. This may happen, for example, when potential opposer serves a courtesy copy of the request upon applicant. If the Board receives objections before it acts upon the request, the Board will consider them. If the objections are received after action on the request, and the request has been granted, the objections will be treated as a request for reconsideration.
An applicant that receives notification from the Board that an extension request has been filed and granted may submit objections in the form of a request for reconsideration.83
Further, an applicant who receives notification from the Board that a request for extension of time to oppose has been granted may submit objections to the granting of any further extensions of time to the potential opposer. In such a case, the objections will be considered by the Board in determining any subsequent request, filed by the potential opposer, for an extension of time to oppose. If the Board does not receive objections until after it has granted a subsequent extension request, they will be treated as a request for reconsideration of the Board's action.
Any document objecting to a request for an extension of time to oppose, or to the granting of any further extensions of time to oppose, should state clearly the reasons for objection. There is no requirement that the document be served upon the potential opposer. If there is no indication that service has been made, the Board will send potential opposer a copy of the document together with the Board's action on the extension request, or, if the document is treated by the Board as a request for reconsideration, with the Board's action on the request for reconsideration.
211.01 Request for Reconsideration
If an applicant or potential opposer is dissatisfied with an action of the Board on a request for an extension of time to oppose, it may file a request for reconsideration of the action, stating the reasons. The request should be filed promptly after the filing party receives the Board’s action.
A request for reconsideration of a Board action relating to a request for an extension of time to oppose is examined by one of the Board's administrative staff members, who will prepare an action granting or denying the request. One copy of the action is entered in the file of the subject application, one copy is sent to the applicant, and one copy is sent to the potential opposer.
There is no requirement that a request for reconsideration be served upon the nonfiling party. If there is no indication that service has been made, the Board will send the nonfiling party a copy of the request together with that party's copy of the Board's action granting or denying the request.
The filing of a request for reconsideration of the denial, or the granting, of a request for an extension of time to oppose does not relieve the potential opposer of the responsibility of filing an opposition, or a request for a further extension of time to oppose, before the expiration of the relevant extension.84
211.02 Relief after Institution of Opposition
If an applicant is dissatisfied with an action of the Board on a request for an extension of time to oppose and the opposition has been filed and instituted, the applicant may raise the issue by means of a motion to dismiss the opposition for lack of jurisdiction.85
211.03 Petition to the Director
If an applicant or potential opposer is dissatisfied with an action of the Board on a request for an extension of time to oppose, it may file a petition to the Director, pursuant to 37 CFR § 2.146, for review of the action in question.86
The petition to the Director must include a statement of the facts relevant to the petition; the points to be reviewed; the action or relief requested; and the requisite fee, as specified in 37 CFR § 2.6. Any brief in support of the petition must be embodied in or accompany the petition. If facts are to be proved, the proof must be in the form of affidavits or declarations in accordance with 37 CFR § 2.20, and these affidavits or declarations, with any exhibits thereto, must accompany the petition.87
A petition from the grant or denial of a request for an extension of time to oppose must be filed within 15 days from the mailing date of the grant or denial of the request.88 A petition from the denial of a request must be served on the attorney or other authorized representative of the applicant, if any, or on the applicant.89 A petition from the grant of a request must be served on the attorney or other authorized representative of the opposer, if any, or on the opposer.90 Proof of service of the petition must be made as provided in 37 CFR § 2.119(a).91 The potential opposer or the applicant, as the case may be, may file a response within 15 days from the date of service of the petition.92 A copy of the response must be served upon the petitioner, with proof of service as provided by 37 CFR § 2.119(a). No further document relating to the petition may be filed.93
The filing of a petition by the potential opposer from the denial, or by the applicant from the granting, of a request for an extension of time to oppose, does not relieve the potential opposer of the responsibility of filing an opposition, or a request for a further extension of time to oppose, prior to the expiration of the extension which is the subject of the petition.94 The filing of a petition will constitute good cause for extensions of time to oppose aggregating up to 120 days from the date of publication of the mark, but will not constitute extraordinary circumstances justifying an extension of time beyond 120 days from publication.
If the petition is resolved unfavorably to opposer during the running of an extension of time, any opposition or request for further extension of time to oppose filed during or after the extension period in question will be rejected as untimely.
If opposer files a timely opposition during the pendency of its petition to the Director, the Board will institute the opposition. At the same time, the Board will normally suspend the opposition pending resolution of the petition. If, along with the notice of opposition, the opposer files a motion to suspend the opposition, citing the pending petition as the reason for suspension, the Board will institute the opposition, grant the motion to suspend, and state that the opposition is suspended pending resolution of the petition to the Director. A copy of the Board's action will be sent to both parties and a copy of the notice, along with a copy of the motion to suspend, will be sent to the applicant.
If the decision on the petition is unfavorable to opposer, the opposition will be dismissed as a nullity, and the fee will be refunded.
212.01 Jurisdiction to Consider Amendment
The Board has no jurisdiction over an application unless and until the application becomes involved in a Board inter partes proceeding.95 In the absence of an inter partes proceeding, the Board has jurisdiction only over matters relating to any requested extension(s) of time to oppose.
Thus, if, in an application which is the subject of a request for an extension of time to oppose, an amendment or other paper (such as a request for republication, a request for reconsideration of a refusal to approve an amendment) relating to the application is filed by the applicant, and the application is not involved in any Board inter partes proceeding, it is the examining attorney who must determine the propriety of the amendment or other paper.96
However, the Board does determine the propriety of a request filed by an attorney or other authorized representative to withdraw as applicant's representative, in an application which is the subject of a request for an extension of time to oppose. The Board has jurisdiction to consider the request to withdraw as representative in such a case, because applicant's representative of record acts in applicant's behalf in matters relating to the requested extension(s) of time to oppose.
Any amendment proposed by an applicant, whether of its own volition or to accommodate a concern of a potential opposer must be sent to the Board’s attention, not to the examining attorney who approved the mark for publication. The Board will note the amendment and transfer the file to the examining attorney. Because the examining attorney eventually will consider the amendment, any phone inquiry for discussion of the content of the amendment should be directed to the examining attorney.
212.02 Conditions for Examining Attorney Approval of Amendment
During the time between the publication of a mark in the Official Gazette for opposition, and the printing of a certificate of registration or notice of allowance, an application not involved in an inter partes proceeding before the Board may be amended upon request by the applicant, provided that the amendment does not necessitate issuance of a refusal or requirement by the Examining Attorney. If a refusal or requirement by the Examining Attorney would be needed, the amendment cannot be made unless applicant (1) successfully petitions the Director to restore jurisdiction over the application to the Examining Attorney for consideration of the amendment and further examination, and (2) is able to satisfy any requirement or overcome any refusal asserted in any Office action issued after the restoration of jurisdiction.97
Examples of the types of amendments which may be made under the conditions described above include acceptable amendments to the identification of goods, to the drawing, to add a disclaimer, and (in the case of an application under Section 1(a) of the Act, or an application under Section 1(b) of the Act in which an acceptable amendment to allege use has been filed, or an application under Section 44 or 66(a) of the Act in which an appropriate allegation of use has been made), to convert an application for an unrestricted registration to one for concurrent use registration.98
An applicant who files an amendment to its application during an extension of time to oppose need not have potential opposer's consent thereto.
212.03 Form of Amendment
An amendment or other paper relating to an application which is the subject of a request for an extension of time to oppose should be in the normal form for an amendment or other document relating to an application, except that it should be directed to the attention of the Trademark Trial and Appeal Board (i.e., Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3514).
212.04 Action by Board -- Upon Receipt of Amendment
When an amendment relating to an application which is the subject of a request for an extension of time to oppose is received by the Board, a Board administrative staff member will issue an action acknowledging receipt of the amendment, transferring the application file to the examining attorney for consideration of the amendment, and explaining the effect the filing of the amendment has on the extension of time to oppose.99
If an amendment is filed during the running of a well taken request for an extension of time, the action will acknowledge receipt of the amendment; note that the amendment requires consideration by the examining attorney; approve the extension (or if already approved, note that potential opposer has been granted an extension of time to oppose until a specified date); indicate the application is transferred to the examining attorney for consideration of the amendment; instruct the examining attorney to act on the amendment (either by approving it for entry or by telephoning the applicant, explaining why the amendment cannot be approved, and placing a record of the telephone call in the file), and then return the application to the Board; and indicate that after the application has been returned to the Board, further appropriate action will be taken with respect to the potential opposition. The action will also advise potential opposer that the filing of the amendment does not relieve the potential opposer of the responsibility of filing an opposition, or, if appropriate, a further request for extension of time to oppose, prior to the expiration of the previous request.
If an amendment is filed after the expiration of potential opposer's extension of time to oppose, and no opposition or request for a further extension of time to oppose has been timely filed, the Board's action will acknowledge receipt of the amendment; note that the amendment requires consideration by the examining attorney; indicate that potential opposer's extension of time to oppose has expired, and that no opposition or request for a further extension of time to oppose has been timely filed; forward the application to the examining attorney for consideration of the amendment; and state that the examining attorney may treat the amendment in the same manner as any amendment after publication100 and need not return the application to the Board after consideration of the amendment.
If an amendment is filed prior to action by the Board on a request for an extension of time to oppose, and the request is not granted, the action will acknowledge receipt of the request and the amendment; note that the amendment requires consideration by the examining attorney; deny the request; forward the application to the examining attorney for consideration of the amendment; and state that the examining attorney may treat the amendment in the same manner as any amendment after publication101 and need not return the application to the Board after consideration of the amendment.
If an amendment is filed after a request for an extension of time to oppose has been denied by the Board, but before the Board has forwarded the application to issue, the action will acknowledge receipt of the amendment; note that the amendment requires consideration by the examining attorney; indicate that potential opposer's request for an extension of time to oppose has been denied; forward the application to the examining attorney for consideration of the amendment; and state that the examining attorney may treat the amendment in the same manner as any amendment after publication102 and need not return the application to the Board after consideration of the amendment.
When the Board's action is complete, one copy is entered in the file of the subject application, one copy is sent to the applicant, and one copy each of the amendment and letter is sent to the potential opposer. The application is then forwarded to the examining attorney for consideration of the amendment.
If an amendment is filed prior to the Board's institution of a timely opposition, the Board will institute the opposition, and at the same time suspend the opposition pending consideration of the amendment by the examining attorney.
212.05 Action by Board -- During Consideration of Amendment by Examining
Attorney
The filing of the amendment will be considered good cause for extensions of time to oppose aggregating up to 120 days from the date of publication of the mark, but it will not constitute extraordinary circumstances justifying an extension of time beyond 120 days from publication.
If a timely opposition is filed while the amendment is still pending before the examining attorney, the Board will institute the opposition, and at the same time the Board will normally suspend the opposition pending consideration of the amendment by the examining attorney. If, along with the notice of opposition, the opposer files a motion to suspend the opposition, citing the pending amendment as the reason for suspension, the Board will institute the opposition, grant the motion to suspend, and state that the opposition is suspended pending consideration of the amendment by the examining attorney. A copy of the institution order will be sent to both parties, and a copy of the notice of opposition and any motion to suspend will be sent to the applicant.
212.06 Action by Board -- After Consideration of Amendment by Examining
Attorney
When an amendment in an application which is the subject of an extension of time to oppose is forwarded to the examining attorney for consideration, the examining attorney acts on the amendment, either by approving it for entry or by telephoning the applicant, explaining why the amendment cannot be approved and placing a record of the telephone call in the file.103 The examining attorney then returns the application to the Board (unless the time for opposing expired prior to the filing of the amendment).
If the application is returned to the Board during the running of a well taken request for an extension of time, a Board administrative staff member will issue an action approving the extension (or, if already approved, noting that potential opposer has been granted an extension of time to oppose until a specified date); indicating whether or not the amendment was approved; and taking further appropriate action relating thereto.
For example, sometimes a potential opposer, in a request for an extension of time to oppose or in a separate document, states that it has agreed not to oppose if applicant's application is amended in a certain manner. If the amendment submitted by applicant conforms to the agreement and the examining attorney approves it, the Board's action will indicate that the amendment has been approved; that potential opposer has agreed not to oppose if the amendment is approved; and that the application is accordingly being forwarded to issue. If the amendment was not approved, the action will so state, and potential opposer will be advised that it will need to continue to file timely requests for extensions of time or file its notice of opposition.
If there is no statement by potential opposer that it will not oppose if the amendment submitted by applicant is approved, the Board's action will state whether the amendment was approved, and will advise the potential opposer that it will need to continue to file timely requests for extensions of time, or file its notice of opposition.
Sometimes an examining attorney considering an amendment to an application that is the subject of an extension of time to oppose, does not approve the amendment submitted by the applicant, but instead makes a different amendment by Examiner's Amendment.104 In such a case, the Board, in its action, will so state; specify the amendment made by Examiner's Amendment; and advise potential opposer that it will need to continue to file timely requests for extensions of time, or file its notice of opposition.
When the Board's action is complete, one copy is entered in the file of the subject application, one copy is sent to the applicant, and one copy is sent to the potential opposer.
If an opposition was instituted prior to the examining attorney's action on the amendment, and the amendment is subsequently approved, the Board will prepare an action notifying the parties that the amendment was approved; advising the parties that the opposition will go forward on the basis of the application as amended; allowing opposer time to indicate whether it wishes to proceed with the opposition on that basis, or to have the opposition dismissed as a nullity and the fee refunded; and suspending the opposition (or continuing suspension) pending opposer's response to the Board's action. If opposer chooses to go forward, proceedings in the opposition will be resumed and appropriate dates will be set. If the amendment is not approved, the parties will be so advised, and proceedings will be resumed with appropriate dates set.
212.07 Amendment During Opposition
If an amendment is filed in an application that is the subject of an opposition, the Board has jurisdiction over the application and will determine the propriety of the amendment. Once an opposition has commenced, the application that is the subject of the opposition may not be amended in substance, except with the consent of the other party or parties and the approval of the Board, or except upon motion granted by the Board.105
If the Examining Attorney wishes to refuse registration or make a requirement in an application that is the subject of a request for an extension of time to oppose, the examining attorney must request the Director to restore jurisdiction over the application to the examining attorney for that purpose.106 If the application is also the subject of an opposition, the examining attorney's request for jurisdiction must be directed to the Board.107 It should be noted that because an application under Section 66(a) of the Act, 15 U.S.C. § 1141f, is time-sensitive, the granting of a request to return a 66(a) application to the examination process is unlikely.108
A request for jurisdiction that is granted during an unexpired extension of time to oppose, does not relieve the potential opposer of the responsibility of filing an opposition, or a request for a further extension of time to oppose, before the expiration of the previous request. After the Board learns that the examining attorney’s jurisdiction has been restored, a Board administrative staff member will prepare an action advising potential opposer and applicant thereof and taking further appropriate action. Examples are described below.
If the restoration of jurisdiction occurs during the running of an extension of time to oppose, the action will inform the potential opposer and applicant that jurisdiction over the application has been restored to the examining attorney; approve the extension of time, if appropriate (or, if already approved, note that potential opposer has been granted an extension of time to oppose until a specified date); instruct the examining attorney that if the application is subsequently approved, and the mark is not republished, the application must be returned to the Board; and advise potential opposer that the restoration of jurisdiction does not relieve the potential opposer of the responsibility of filing an opposition, or a further request for extension of time to oppose, prior to the expiration of the previous request.
The restoration of jurisdiction (or the filing of a request for jurisdiction) will constitute good cause for extensions of time to oppose aggregating up to 120 days from the date of publication of the mark, but will not constitute extraordinary circumstances justifying an extension of time beyond 120 days from publication.
One copy of the Board's action will be entered in the file of the subject application, one copy will be sent to the applicant, and one copy each of the Board's action and of the examining attorney's office action will be mailed to the potential opposer.
If, during the running of an extension of time, the examining attorney approves the application, and the mark is not republished, the Board administrative staff member will issue an action so advising the potential opposer and applicant. The action will also approve the extension of time, if appropriate (or, if already approved, note that potential opposer has been granted an extension of time to oppose until a specified date). If the mark is republished, or if registration is ultimately denied, the extension request, if not yet approved, will be moot. No further extension of the original opposition period will be granted. Rather, a potential opposer's time for opposing will recommence on the date of republication.
If a timely opposition is filed while the question of registrability is still before the examining attorney, the Board will institute the opposition. At the same time, the Board will normally suspend proceedings until the registrability of the mark has been finally determined. If, along with the notice of opposition, the opposer files a motion to suspend the opposition, citing the restoration of jurisdiction as the reason for suspension, the Board will institute the opposition, grant the motion to suspend, and indicate that the opposition is suspended pending final determination of the registrability of the mark. A copy of the Board's action will be sent to both parties and a copy of the notice of opposition, along with a copy of any motion to suspend, will be sent to the applicant.
If the examining attorney subsequently approves the application, and the mark is republished, and if the change reflected in the republication is one that might have an effect upon the opposition, the Board will issue an action notifying opposer and applicant of the republication, and of the reason therefor; explain that the opposition will be determined on the basis of applicant's correct (or amended) mark, goods or services, disclaimer status, etc.; and allow opposer time to indicate whether it wishes to proceed with the opposition on that basis, or to have its opposition fee refunded, and the opposition dismissed as a nullity. If opposer chooses to go forward, proceedings in the opposition will be resumed and appropriate dates will be set.
If registration is ultimately denied, the opposition will not be instituted, or if already instituted, will be dismissed as a nullity and the fee refunded.
The examining attorney may determine that an application filed under Section 1 or 44 of the Act, 15 U.S.C. §§ 1051 or 1126, that is the subject of a request for an extension of time to oppose must be republished. This may happen, for example, when the mark was originally published in the wrong class; when the goods or services, although properly identified in the application itself, were published incorrectly; when a disclaimer was mistakenly included in the original publication; or when the application has been amended after publication (but before the filing of an opposition), and the amendment is of such nature as to require republication.109 Republication may not be available to applications filed under Section 66(a) of the Act, 15 U.S.C. § 1141f, due to the time requirements of the Madrid Protocol.110
If a mark is republished by order of the examining attorney, any opposition filed during the original thirty-day opposition period, or within a granted extension thereof, is considered by the Board to be timely. If the change reflected in the republication is one that might have an effect upon the opposition, the Board will issue an action notifying opposer and applicant of the republication, and of the reason therefor; explain that the opposition will be determined on the basis of applicant's correct (or amended) mark, goods or services, disclaimer status, etc.; and allow opposer time to indicate whether it wishes to proceed with the opposition on that basis, or to have its opposition fee refunded, and the opposition not instituted.
However, once the Board learns that a mark that is the subject of a request for an extension of time to oppose has been or will be republished by order of the examining attorney, no further extension of the original opposition period will be granted. Rather, a potential opposer's time for opposing will recommence with the republication of applicant's mark. Thus, if there is a pending request for an extension of time to oppose, a Board administrative staff member will issue an action notifying potential opposer and applicant of the republication and taking appropriate action with respect to the extension request. Normally, the extension request will be deemed moot. However, if the extension request was filed within thirty days after the date of republication, it may be treated as a request for an extension of the new opposition period.
If there has been an error in the first publication, or the application has been amended thereafter, republication is often necessary in order to give potential opposers fair notice of the registration sought by applicant. Sometimes, however, a mark that has been published correctly, and has not been amended thereafter, is republished not because there is any need for republication, but by inadvertence. When there is no need for republication, and a mark is republished solely by mistake (as, for example, when an application has survived an opposition, and is ready to go to issue, but is inadvertently sent to publication rather than to issue), the application may not properly be subjected to another opposition period.
Accordingly, when it comes to the attention of the Board that an application has been republished by mistake, the Board will not entertain any opposition or request for an extension of time to oppose filed in response to the republication. An opposition filed in response to the inadvertent republication will be returned to the opposer, and the opposition fee will be refunded. The remedy of a would-be opposer or potential opposer in such a case lies in the filing of a petition for cancellation, under Section 14 of the Act, 15 U.S.C. § 1064, after applicant's registration has been issued.
A third party that has knowledge of facts bearing upon the registrability of a mark in a pending application may bring such information to the attention of the Office by filing, with the Office of the Commissioner for Trademarks, a "letter of protest," that is, a letter that recites the facts and is accompanied by supporting evidence.111 The Administrator for Trademark Identifications, Classifications and Practice (Administrator) will determine whether the letter of protest should be "granted," that is, whether the information should be given to the examining attorney for consideration.112
A letter of protest may be filed either before or after publication of the subject mark for opposition. However, a letter of protest filed after publication ordinarily must be filed within thirty days after publication in order to be considered timely.113 Moreover, even if the Director decides to grant a post-publication letter of protest, the examining attorney cannot consider the submitted information unless the Commissioner for Trademarks, upon written request by the Administrator, concurs in the decision to grant the letter of protest and restores jurisdiction over the application to the examining attorney.114 If the application is the subject of an opposition, the request for jurisdiction should be directed to the Board.115
The filing of a letter of protest does not stay the time for filing an opposition to the subject mark, regardless of when the letter of protest was filed.116 If a party that files a letter of protest after publication wishes to preserve its right to oppose in the event that the letter of protest is denied, it must file a timely request for an extension of time to oppose.117
If a potential opposer indicates, in a first or a subsequent request for an extension of time to oppose, that it has filed a letter of protest (not yet determined by the Administrator) with respect to the subject mark (even if filed more than thirty days after publication) such filing will constitute good cause for extensions of time to oppose aggregating up to 120 days from the date of publication of the mark. However, the filing will not constitute extraordinary circumstances justifying an extension of time beyond 120 days from publication.
The filing by a third party of a letter of protest (not yet determined by the Administrator), with respect to a mark that is the subject of a request for an extension of time to oppose, will not be considered by the Board to constitute good cause for the granting of an extension to the potential opposer.
Following determination of a letter of protest filed with respect to an application that is the subject of a request for an extension of time to oppose, the Board will take further appropriate action. Examples are described below.
Often, when the application comes to the Board for further appropriate action, the letter of protest has been granted; jurisdiction over the application has been restored to the examining attorney; and the examining attorney has issued an Office action asserting a refusal or a requirement. If a well-taken request for an extension of time to oppose is running at this time, a Board administrative staff member will prepare an action notifying the potential opposer and applicant that the letter of protest has been granted; that jurisdiction over the application has been restored to the examining attorney; that an Office action has been issued by the examining attorney; that the extension request is approved (or, if already approved, that potential opposer has been granted an extension of time to oppose until a specified date); that if the application is subsequently approved, and the mark is not republished, that the application must be returned to the Board; and that the filing of the amendment does not relieve the potential opposer of the responsibility of filing an opposition, or a further request for extension of time to oppose, prior to the expiration of the previous request.
If, during the running of a well taken request for an extension of time, the examining attorney ultimately approves the application, and the mark is not republished, the Board administrative staff member will issue an action so advising potential opposer and applicant and approving the extension of time (or, if already approved, noting that potential opposer has been granted an extension of time to oppose until a specified date). If the mark is republished, or if registration is ultimately denied, the extension request, if not yet granted, will be moot. No further extension of the original opposition period will be granted. Rather a potential opposer's time for opposing will recommence on the date of republication.
If, during the running of an extension of time, the letter of protest is denied, the Board will so advise potential opposer and applicant and take appropriate action on the extension request.
One copy of the Board's action will be entered in the file of the subject application, one copy will be sent to the applicant, and one copy each of the Board's action and of the examining attorney's Office action will be sent to the potential opposer.
If opposer files a timely opposition while its letter of protest is pending (or if the letter of protest is granted, while the question of registrability is still before the examining attorney), the Board will institute the opposition. At the same time, however, the Board will normally suspend the opposition until the letter of protest is decided (or, if the letter of protest has already been granted, until the registrability of the mark has been finally determined). If, along with the notice of opposition, the opposer files a motion to suspend the opposition, citing the filing of its letter of protest (or the restoration of jurisdiction) as the reason for suspension, the Board will institute the opposition, grant the motion to suspend, and state that the opposition is suspended pending a decision on the letter of protest (or if the letter of protest has already been granted, pending final determination of the application before the examining attorney). A copy of the Board's letter will be sent to both parties, and a copy of the notice of opposition along with a copy of any motion to suspend will be sent to the applicant.
If the examining attorney subsequently approves the application, and the mark is republished, and if the change reflected in the republication is one that might have an effect upon the opposition, the Board will issue an action notifying opposer and applicant of the republication. The Board will inform them of the reason for republication; explain that the opposition will be determined on the basis of applicant's correct (or amended) mark, goods or services, disclaimer status, etc.; and allow the opposer time to indicate whether it wishes to proceed with the opposition on that basis, or to have its opposition fee refunded and the opposition dismissed as a nullity. If opposer chooses to go forward, proceedings in the opposition will be resumed, and appropriate dates will be set.
If registration is ultimately denied, the opposition will not be instituted, or if already instituted, will be dismissed as a nullity and the fee refunded.
Sometimes a registration is issued, mistakenly, from an application that, at the time of such issuance, is the subject of an unexpired extension of time to oppose, or a timely opposition. Such a registration is called an "inadvertently issued" registration.
The Board is without authority, within the context of either an extension of time to oppose, or an opposition proceeding, to cancel an inadvertently issued registration and restore it to application status. Rather, it is the Director who has such authority, and the Director exercises this authority with caution.118 A registration will ordinarily be deemed to have been issued inadvertently if a notice of opposition or a request for extension of time to oppose was timely and properly filed but inadvertently overlooked by the Board.119 The Director will not find that a registration issued inadvertently if (1) the notice of opposition was defective in some manner, and (2) that defect prevented the Office from identifying the application in question, and from withholding the issuance of a registration.120
Accordingly, when it comes to the attention of the Board that a registration has issued inadvertently from an application that is the subject of an unexpired extension of time to oppose, the Board will issue an action approving the extension of time, if appropriate (or, if already approved, noting that potential opposer has been granted an extension of time to oppose until a specified date), and advising potential opposer that if it wishes to preserve its right to oppose should the registration be cancelled as inadvertently issued, potential opposer must continue to file further timely requests for extensions of time to oppose, or it must file the notice of opposition. The Board will then forward the registration file to the Director for such action, as the Director deems appropriate. The Director, in turn, may either cancel the registration as inadvertently issued, and restore it to application status, or decline to do so.
The inadvertent issuance of the registration will be considered good cause for extensions of time to oppose aggregating up to 120 days from the date of publication of the mark, but it will not constitute extraordinary circumstances justifying an extension of time beyond 120 days from publication.
If, during the running of an extension of time, the Director cancels and restores to application status a registration that issued inadvertently during an extension of time to oppose, the potential opposer and applicant will be informed of the inadvertent issuance of the registration, its cancellation by the Director, and the status of the extension request in an action prepared by a Board administrative staff member.
If a registration that issued inadvertently during an extension of time to oppose is not cancelled by the Director and restored to application status, any opposition that may have been filed by the potential opposer will be returned, and any submitted opposition fee will be refunded. The potential opposer’s substantive remedy will, under the statute, be through a petition to cancel the registration.
If a timely opposition is filed while the matter of the registration is pending before the Director, the Board will institute the opposition. At the same time, however, the Board will normally suspend the opposition until the matter is resolved. If, along with the notice of opposition, the opposer files a motion to suspend the opposition, citing the inadvertently issued registration as the reason for suspension, the Board will institute the opposition, grant the motion to suspend, and state that the opposition is suspended pending a decision on the matter of the registration. A copy of the Board's action will be sent to both parties, and a copy of the notice of opposition, will be sent to the applicant with a copy of any motion to suspend.
If the Director cancels and restores the registration to application status, the opposition will be resumed and appropriate dates will be set. If the Director declines to cancel the registration, the opposition will be dismissed as a nullity and the fee will be refunded.
If a registration issues inadvertently during a timely opposition, the Director normally will cancel the registration as inadvertently issued, and restore it to application status. However, if the opposition has already been finally determined in applicant's favor when the inadvertent issuance is discovered, applicant may either keep the registration, or request that it be cancelled as inadvertently issued, restored to application status, and then reissued.
If a potential opposer whose request for an extension of time to oppose is pending, or whose granted extension has not yet expired, files a letter notifying the Board that it will not oppose, the Board will immediately forward to issue the application that was the subject of the request or extension.
If a potential opposer that has requested or obtained an extension of time to oppose thereafter agrees unconditionally in writing not to oppose, applicant may submit a copy of the agreement to the Board, with an appropriate cover letter bearing proof of service upon potential opposer, and the Board will immediately forward the subject application to issue.121
If an applicant files an express abandonment of an application that is the subject of a pending or granted request for extension of time to oppose, or if a 66(a) application that is the subject of a pending or granted request for extension of time to oppose is abandoned by the Office as the result of cancellation of the underlying international registration,122 the application stands abandoned and any pending request for an extension of time to oppose is moot. An application that has been abandoned is no longer subject to the filing of a new opposition. Any opposition filed on or after the filing date of the abandonment will be returned by the Board to the opposer, and the opposition fee will be refunded.123
The abandonment of an application that is not the subject of an inter partes proceeding before the Board (i.e., an opposition, interference, or concurrent use proceeding) is without prejudice to the applicant. It is not necessary that applicant obtain a potential opposer's consent thereto.124
In contrast, after the commencement of an opposition, interference, or concurrent use proceeding, if an applicant files an express abandonment of its application (or if a 66(a) application is abandoned by the Office as the result of cancellation of the underlying international registration) without the written consent of every adverse party to the proceeding, judgment will be entered against the applicant.125 However, if an application is abandoned after the commencement of an opposition, interference, or concurrent use proceeding, but before applicant has been notified thereof by the Board, the applicant will be given an opportunity to obtain the written consent of every adverse party, or to withdraw the abandonment and litigate the proceeding, failing which judgment shall be entered against applicant.126
An applicant may expressly abandon its application by filing in the Office a written statement of abandonment or withdrawal of the application, signed by the applicant or by the applicant's attorney or other authorized representative.127
When an applicant files an express abandonment of an application that is the subject of a pending or granted request for extension of time to oppose, or a 66(a) application is abandoned by the Office as the result of cancellation of the underlying international registration, a Board administrative staff member will prepare a letter acknowledging the abandonment, and notifying potential opposer that the application is no longer subject to the filing of a new opposition.
An amendment to allege use under Section 1(c) of the Act, 15 U.S.C. § 1051(c), filed in an intent-to-use application (i.e., an application under Section 1(b) of the Act, 15 U.S.C. § 1051(b)) after approval for publication, is late-filed.128 Thus, an amendment to allege use filed during an extension of time to oppose or during an opposition is late-filed.
A statement of use under Section 1(d) of the Act, 15 U.S.C. § 1051(d), is premature if it is filed in an intent-to-use application prior to the issuance of a notice of allowance under Section 13(b)(2) of the Act, 15 U.S.C. § 1063(b)(2).129 A notice of allowance is issued in an intent-to-use application (for which no amendment to allege use has been timely filed and accepted) only after the time for opposing has expired and all oppositions filed have been dismissed.130 Thus, a statement of use filed during an extension of time to oppose or during an opposition is premature.
Any late-filed amendment to allege use or premature statement of use will be returned to the applicant, and any fee submitted therewith will be refunded.131
If an intent-to-use application has been published and is under a well taken request for an extension of time to oppose when a timely filed amendment to allege use (i.e., an amendment to allege use filed prior to approval for publication) is associated with the application, the Board will issue an action approving the extension of time (or, if already approved, noting that potential opposer has been granted an extension of time to oppose until a specified date) and advise the potential opposer that if it wishes to preserve its right to oppose should the amendment to allege use be ultimately withdrawn by the applicant or approved by the examining attorney, the potential opposer must continue to file further timely requests for extensions of time to oppose, or it must file the notice of opposition.
The Board will then return the application to the trademark examining attorney for appropriate action with respect to the amendment to allege use. The examining attorney, in turn, will process the amendment to allege use in the same manner132 as any other timely filed amendment to allege use that is not associated with the application file until after publication. In the event that the amendment to allege use is ultimately withdrawn by the applicant, or approved by the examining attorney, the examining attorney should return the application to the Board (before any scheduled republication of applicant's mark) for further appropriate action with respect to the extension of time to oppose.133 If the application is abandoned while it is before the examining attorney, the Board should be notified.
The filing of the amendment to allege use will be considered good cause for extensions of time to oppose aggregating up to 120 days from the date of publication of the mark, but it will not constitute extraordinary circumstances justifying an extension of time beyond 120 days from publication.
If an intent-to-use application has already been published, and is the subject of an opposition, when a timely filed amendment to allege use (i.e., an amendment to allege use filed prior to approval for publication) is associated with the application, the Board normally will suspend the opposition and return the application to the trademark examining attorney for appropriate action134 with respect to the amendment to allege use. In the event that the amendment to allege use is ultimately withdrawn by the applicant, or approved by the examining attorney, the examining attorney should return the application to the Board (prior to any scheduled republication of applicant's mark) for further appropriate action with respect to the opposition.135 If the application is abandoned while it is before the examining attorney, the Board should be notified.
Sometimes a notice of allowance is issued mistakenly in an intent-to-use application that, at the time of such issuance, is the subject of an unexpired extension of time to oppose or a timely opposition. If a notice of allowance is inadvertently issued in an intent-to-use application which is the subject of an unexpired extension of time to oppose or a timely opposition, and a statement of use is filed, the notice of allowance will be cancelled (by the Intent To Use Division of the Office of Trademark Services) as inadvertently issued. The statement of use will be returned, and the fee submitted therewith will be refunded. If the inadvertently issued notice of allowance has already been cancelled when the Board receives the statement of use, the Board itself will return the statement of use and refund the fee submitted therewith. If the inadvertently issued notice of allowance has not already been cancelled when the Board receives the statement of use, the Intent To Use Division will return the statement of use and refund the fee when it cancels the notice of allowance.
Sometimes a notice of allowance issues between the time an extension request is submitted but not yet approved. Additionally, by the time the Board receives the file for action the extension requested has expired, and no opposition or further extension requests have been filed. In that case, the Board will issue an action acknowledging the extension request; indicating that it was well taken but that time has since expired and no opposition or further request has been filed. The Board will also indicate that a notice of allowance was inadvertently issued during the requested extension period, but since the requested time period has run without subsequent action by the potential opposer, the notice of allowance will not be withdrawn.
The Board has jurisdiction over four types of inter partes proceedings, namely, oppositions, cancellations, interferences, and concurrent use proceedings.1
An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a registration of a mark on the Principal Register. "Any person who believes that he would be damaged by the registration of a mark" may file an opposition thereto, but the opposition may be filed only as a timely response to the publication of the mark, under Section 12(a) of the Act, 15 U.S.C. § 1062(a), in the Official Gazette of the USPTO.2
Mark on Supplemental Register Not Subject to Opposition:
15 U.S.C. § 1092 [Section 24 of the Trademark Act] Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office. Whenever any person believes that he is or will be damaged by the registration of a mark on this register, including as a result of dilution under section 43(c), he may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration. ...
Although the mark in an application for registration on the Principal Register is published for, and subject to, opposition, the mark in an application for registration on the Supplemental Register is not.3
Accordingly, the Board must reject any opposition filed with respect to the mark in an application for registration on the Supplemental Register. The opposition papers will be returned to the person who filed them, and any opposition fee submitted will be refunded. The remedy of the would-be opposer lies in the filing of a petition to cancel the registration of the mark, once the registration has issued.4
A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration of a trademark. The proceeding may only be filed after the issuance of the registration. A petition for cancellation may be filed by "any person who believes that he is or will be damaged by the registration" of the mark.5
An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more registrations which are in conflict), is entitled to registration.6 The proceeding is declared by the Office only on petition to the Director showing extraordinary circumstances therefor, that is, that the party who filed the petition would be unduly prejudiced without an interference.7
A concurrent use proceeding is a proceeding in which the Board determines whether one or more applicants is entitled to a concurrent registration, that is, a registration with conditions and limitations, fixed by the Board, ordinarily as to the geographic scope of the applicant's mark or the goods and/or services on or in connection with which the mark is used.8
37 CFR § 2.101(a) An opposition proceeding is commenced by filing a timely opposition, together with the required fee, in the Office in the Office.
37 CFR § 2.111(a) A cancellation proceeding is commenced by the filing of a timely petition for cancellation, together with the required fee, in the Office.
37 CFR § 2.116(b) The opposer in an opposition proceeding or the petitioner in a cancellation proceeding shall be in the position of plaintiff, and the applicant in an opposition proceeding or the respondent in a cancellation proceeding shall be in the position of defendant. A party that is a junior party in an interference proceeding or in a concurrent use registration proceeding shall be in the position of plaintiff against every party that is senior, and the party that is a senior party in an interference proceeding or in a concurrent use registration proceeding shall be a defendant against every party that is junior.
37 CFR § 2.116(c) The opposition or the petition for cancellation and the answer correspond to the complaint and answer in a court proceeding.
An opposition proceeding is commenced by the timely filing of a notice of opposition, together with the required fee, in the USPTO.9 Similarly, a cancellation proceeding is commenced by the timely filing of a petition for cancellation, together with the required fee, in the USPTO.10
The notice of opposition, or the petition for cancellation, and the answer thereto correspond to the complaint and answer in a court proceeding.11 The opposer in an opposition proceeding, or the petitioner in a cancellation proceeding, is in the position of plaintiff, and the applicant in an opposition proceeding, or the respondent in a cancellation proceeding, is in the position of defendant.12
An interference proceeding commences when the Board mails a notice of interference to each of the parties to the proceeding, as described in 37 CFR § 2.93.13
A concurrent use proceeding commences when the Board mails a notice of the proceeding to each of the parties thereto, as described in 37 CFR §§ 2.99(c) and 2.99(d)(1).
For further information concerning interference and concurrent use proceedings, see TBMP chapters 1000 and 1100, respectively.
303.01 In General
15 U.S.C. § 1063(a) [Section 13(a) of the Trademark Act] Any person who believes that he would be damaged by the registration of a mark upon the principal register, including as a result of dilution under section 43(c), may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 12 of this Act of the mark sought to be registered. ...
15 U.S.C. § 1064 [Section 14 of the Trademark Act] A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of dilution under section 43(c), by the registration of a mark on the principal register established by this Act, or under the Act of March 3, 1881, or the Act of February 20, 1905....
15 U.S.C. § 1092 [Section 24 of the Trademark Act] Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office. Whenever any person believes that he is or will be damaged by the registration of a mark on this register, including as a result of dilution under section 43(c), he may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration. ...
15 U.S.C. § 1127 [Section 45 of the Trademark Act: Construction and Definitions] In the construction of this Act, unless the contrary is plainly apparent from the context--
* * * *
Person; Juristic Person. The term "person" and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term "juristic person" includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
The term "person" also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this Act in the same manner and to the same extent as any non-governmental entity.
The term “person” also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this Act in the same manner and to the same extent as any non-governmental entity.
* * * *
37 CFR § 2.2(b) Entity as used in this part includes both natural and juristic persons.
37 CFR § 2.101(b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may oppose the same by filing an opposition, which should be addressed to the Trademark Trial and Appeal Board. ...
37 CFR § 2.111(b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. ...
303.02 Meaning of the Term "Person"
The term "person," as used in the Act, includes both natural and juristic persons.14 A juristic person is a "firm, corporation, union, association, or other organization capable of suing and being sued in a court of law."15
If an operating division of a corporation is not itself incorporated or is not otherwise a legal entity which can sue and be sued, it does not have legal standing to own a mark or to file an application for registration, an opposition, or a petition for cancellation.16 In such a case, the application, opposition, or petition for cancellation should be filed in the name of the corporation of which the division is a part. If an opposition or a petition for cancellation is filed in the name of a division, and there is no indication that the division is incorporated, the Board will make written inquiry as to whether the division is incorporated or is otherwise a legal entity that can sue and be sued. If the opposer or petitioner responds in the negative, the opposition or petition for cancellation will go forward in the name of the corporation of which the division is a part.17
The term “person” as used in the Act also includes the United States, any agency and instrumentality thereof, or any individual, firm or corporation which acts for the United States and with the authorization and consent of the United States, as well as any state, any instrumentality of a state, and any officer or employee of a state or instrumentality of a state acting in his or her official capacity.18
303.03 Meaning of the Term "Damage"
The term "damage," as used in Sections 13 and 14 of the Act, 15 U.S.C. §§ 1063 and 1064, concerns specifically a party's standing to file an opposition or a petition to cancel, respectively. A party may establish its standing to oppose or to petition to cancel by showing that it has a "real interest" in the case, that is, a personal interest in the outcome of the proceeding and a reasonable basis for its belief in damage.19 There is no requirement that actual damage be pleaded and proved in order to establish standing or to prevail in an opposition or cancellation proceeding.20
For a discussion of standing, see TBMP § 309.03(b).
303.04 Federal Trade Commission
15 U.S.C. § 1064 …Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this Act, and the prescribed fee shall not be required.
The proviso at the end of Section 14 of the Lanham Act, 15 U.S.C. § 1064, provides statutory standing for the Federal Trade Commission to cancel a registration on the Principal Register on the grounds specified in paragraphs (3) and (5) of the section.21
For information concerning the grounds for cancellation specified in paragraphs (3) and (5) of Section 14 of the Act, see TBMP § 307.01.
303.05 Opposition Filed During Extension of Time to Oppose
37 CFR § 2.102(b) A written request to extend the time for filing an opposition must identify the potential opposer with reasonable certainty. Any opposition filed during an extension of time should be in the name of the person to whom the extension was granted. An opposition may be accepted if the person in whose name the extension was requested was misidentified through mistake or if the opposition is filed in the name of a person in privity with the person who requested and was granted the extension of time.
303.05(a) General Rule
An extension of time to oppose is a personal privilege which inures only to the benefit of the party to which it was granted and those in privity with that party.22 For this reason, an opposition filed during an extension of time to oppose ordinarily must be filed in the name of the party to which the extension was granted.23 An opposition filed in a different name will be accepted only if the opposition is filed by a person in privity with the person granted the extension of time or if the person that requested the extension was misidentified through mistake.24