Opposition to §66(a) Applications

Trademark Act §68(a)(2),

15 U.S.C.

§1141h(a)(2)

, provides that a request for extension of protection

is subject to opposition under Trademark Act §13,

15 U.S.C.

§1063

.  The USPTO must notify the International Bureau of the

World Intellectual Property Organization (IB) within 18 months of the date the IB sends

the request for extension of protection to the USPTO of:  (1) a notification of refusal

based on the filing of an opposition; or (2) a notification of the possibility that an

opposition may be filed after expiration of the 18-month period.

15 U.S.C.

§1141h(c)(1)(B)-(C)

;

see

TMEP

§§1904.03

,

1904.04

.

An opposition to a §66(a) application, or a request for

extension of time to oppose a §66(a) application, must be filed through the Board’s

electronic filing system and may not be filed in paper form under any circumstances.

37

C.F.R. §§2.101(b)(3)

,

2.102(a)(1)

;

TBMP §309.01

;

see

In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH

, Ser. No.

79000042, 2005 TTAB LEXIS 72, at *2-3 (2005).

Once filed, an opposition to a §66(a) application may not

be amended to add to the grounds for opposition, to add to the goods/services opposed,

or to add a joint opposer.

37 C.F.R.

§§2.104(c)

,

2.107(b)

. The opposition is limited to the goods, services,

grounds, and named opposers set forth in the opposition form cover sheet generated by

the Board’s electronic filing system.

37 C.F.R.

§§2.104(c)

,

2.107(b)

(“The grounds for opposition, the goods

or services opposed, and the named opposers are limited to those identified in the ESTTA

cover sheet regardless of what is contained in any attached statement.”);

Sterling Computs. Corp. v. IBM Corp.

, Opp. No. 91273043, 2023 TTAB

LEXIS 331, at *8-9 (2023);

CSC Holdings, LLC v. SAS Optimhome

, Opp.

No. 91199973, 2011 TTAB LEXIS 245, at *8-11 (2011);

see

TBMP §315

. The notice

of opposition must also include all fees for each party opposer to oppose the

registration in all classes specified in the opposition.

37 C.F.R. §2.101(d)

n any attached statement.”);

Sterling Computs. Corp. v. IBM Corp.

, Opp. No. 91273043, 2023 TTAB

LEXIS 331, at *8-9 (2023);

CSC Holdings, LLC v. SAS Optimhome

, Opp.

No. 91199973, 2011 TTAB LEXIS 245, at *8-11 (2011);

see

TBMP §315

. The notice

of opposition must also include all fees for each party opposer to oppose the

registration in all classes specified in the opposition.

37 C.F.R. §2.101(d)

.

An opposer cannot amend its pleading to include common

law trademark rights not previously identified on the Board’s electronic filing system

cover sheet.

Sterling Computs. Corp. v. IBM Corp.

, 2023 TTAB LEXIS

331, at *9. However, if a §1(a) use-based application or registration is identified on

the cover sheet as a likelihood of confusion grounds for opposition against a §66(a)

application, this claim would be sufficient to satisfy the requirement to notify the IB

of an opposer’s reliance on common law rights that are coterminous with the pleaded

application or registration.

Id.

at *12-13.

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