Opposition

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. 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(a)

.

The notice must state the dates on which the opposition

period begins and ends, if known.  If the dates are unknown, the USPTO must communicate

them to the IB “at the latest at the same time as any notification of a provisional

refusal based on an opposition.”  Regs. Rule 16(1)(b).

Any notification of refusal on the basis of opposition

must be received by the IB within 7 months after the beginning of the opposition period

or within one month after the end of the opposition period, whichever is earlier.

15 U.S.C. §11411h(c)(2); Article 5(2)(c)(ii).

An opposition to a §66(a) application must be filed

through the 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);

TBMP §110.01

.

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 or services

opposed, or to add a joint opposer.

37 C.F.R.

§§2.104(c)

,

2.107(b)

. The opposition is limited to those 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

0.01

.

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 or services

opposed, or to add a joint opposer.

37 C.F.R.

§§2.104(c)

,

2.107(b)

. The opposition is limited to those 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)

.

An opposer cannot amend its pleading to include common

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

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.

Request for Extension of Time to Oppose

.  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. §2.102(a)(1)

.

No more than three requests to extend the time for filing

an opposition may be filed.  The time for filing an opposition may not be extended

beyond 180 days from the date of publication.

37 C.F.R

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. §2.102(a)(1)

.

No more than three requests to extend the time for filing

an opposition may be filed.  The time for filing an opposition may not be extended

beyond 180 days from the date of publication.

37 C.F.R.

§2.102(c)

.

See

TMEP §1503

for further information

about oppositions.