What is an extension of time to oppose a trademark application?
The US trademark legal system allows third parties to oppose the registration of a pending trademark application. When a trademark application is published for opposition, a window of time is given to the public to oppose a trademark application that has received preliminary approval from the USPTO. By filing an extension of time to oppose, third parties can have more time before filing a trademark opposition.
How much additional time can be requested?
In addition to the 30-day publication window, a potential opposer may request either a 30-day extension or a 90-day extension for good cause. A USPTO fee applies to the 90-day extension request.
Examples of good cause include:
- additional time to investigate the claim
- additional time to confer with counsel
- settlement discussions with applicant
- additional time to seek counsel for representation
Using extension of time to oppose as negotiation tactic
If you are concerned about the registration of someone else’s mark, requesting an extension of time provides some time to negotiate a coexistence agreement that might avoid the need to file an opposition.
For example, you can:
- seek a consent agreement with certain provisions regarding their registration or use
- request that certain words always be used in the other side’s mark
- request that certain restrictions on the class of consumers or trade channels be written into the trademark application
- request that certain goods or services be deleted from the application
- request that certain graphical elements or colors in the mark be limited
- propose a settlement agreement detailing certain DuPont factors that eliminate or minimize any likelihood of confusion.
While a TTAB opposition would only determine the rights of an applicant to register a mark, a settlement agreement can always be explored to cover both registration and usage.
Potential opposers should also consider promptly filing any new trademark applications, especially for new goods or services not covered in existing registrations. A signed consent agreement with the applicant detailing reasons for no likelihood of confusion may come in handy if the USPTO trademark examining attorney should think otherwise.
If you are the applicant on the receiving end of an extension request, see what the other side has to offer. There may be a middle ground to pursue.
Will the potential opposer file an opposition?
Only time will tell. Keep in mind that if the potential opposer was determined to kill your mark, they could have filed the notice of opposition promptly without requesting any extensions.
Sometimes, an adversarial legal proceeding such as a trademark opposition becomes more of a battle of financial resources (who has more money?) and less of a battle on the merits (who is right?). While a trademark opposition at the TTAB may be less expensive than federal court litigation, legal fees for a trademark opposition can still exceed tens of thousands if the other side fights back.
What happens if the other side files an opposition?
If an opposition is filed, the Trademark Trial and Appeal Board (TTAB) will institute an opposition proceeding with an opposition number. The TTAB will send to the applicant a scheduling order with relevant deadlines.
Applicants will want to pay particular attention to the most immediate deadline of filing an answer to the opposition.
Can an additional extension be requested beyond 120 days from the date of publication?
If the end of a 90-day extension period is approaching, a potential opposer may file one final request for an additional 60-day extension only under the following conditions:
a) consent by the applicant either in writing or verbally (the potential opposer may state that the applicant has consented to the request); or
b) with a showing of extraordinary circumstances.
