Filing an extension of time to oppose a trademark application is a relatively easy and inexpensive way to reserve your right to file a trademark opposition. It provides you with more time to carefully consider the cost of a trademark opposition and whether you want to invest your valuable time and money in formally opposing a trademark application. It also gives you time to contact the owner of the trademark application in order to discuss any questions or concerns you may have regarding the trademark or any of the information presented in the trademark application.
When Can I File an Extension of Time to Oppose?
An extension of time to oppose must be filed within 30 days of the trademark being published for opposition. If you miss that 30-day window, then your only option would be to file a trademark cancellation if/when the trademark application becomes a registration. Therefore, you should regularly monitor the status of any trademark application you may want to oppose so that you don’t inadvertently miss your opportunity to file the extension.
How Do I File One?
An extension of time to oppose a trademark application is filed electronically with the Trademark Trial and Appeal Board (TTAB). The TTAB provides a fairly straightforward online form through the Electronic System for Trademark Trials and Appeals (ESTTA). In order to successfully prepare and submit the extension, you’ll need the following:
- The serial number of the trademark application against which you want to file the extension
- The legal name and address of the potential opposer
- The citizenship of the potential opposer (if the potential opposer is an individual)
- The state and/or country in which the potential opposer is incorporated (if the potential opposer is an entity)
- The potential opposer’s correspondence information
- A credit or debit card with which to pay any required filing fees
How Long is an Extension of Time to Oppose?
At any point during the 30-day publication period, you can file a 30-day extension of time to oppose. If you determine during the 30-day extension that you need more time to decide whether or not to file a trademark opposition, you can request an additional 60 days by filing another extension of time to oppose (and paying the filing fee). So, in total, you’re able to extend the time to oppose a trademark by 90 days.
In the alternative, you can simply file one 90-day extension of time to oppose. I generally recommend this option if you need time to find and consult with a trademark attorney, or need additional time to fully investigate whether you have a legitimate legal basis to file a trademark opposition.
You can also obtain one last 60-day extension of time to oppose if the owner of the trademark application consents to the extension. This often occurs when the potential opposer and the owner of the application are in settlement negotiations and may be close to reaching an amicable resolution that would avoid the need to file a trademark opposition.
If no trademark opposition is filed against the application before the extension of time expires, and the application was filed under Section 1(a) (use in commerce) or Section 44(e) (U.S. application based on a foreign trademark registration), then the Trademark Office will issue the Certificate of Registration. On the other hand, if the application was filed under Section 1(b) (intent to use), then the Trademark Office will issue the Notice of Allowance instead.
Questions About an Extension of Time to Oppose?
I’m experienced US trademark attorney Morris Turek. If an extension of time to oppose has been filed against your trademark application, or you need some assistance filing an extension of time to oppose someone else’s application, please don’t hesitate to contact me right away. I may be reached at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or by filling out the contact form located below. I look forward to speaking with you soon.