While non-attorneys may appear as noted above, Board proceedings are legal in nature, and often involve complex questions of trademark law and procedure. TTAB personnel are not permitted to give legal advice to any party. Many parties find the advice of qualified counsel essential. The Board will not give any special consideration to parties who elect not to retain qualified counsel. USPTO personnel cannot assist in choosing an attorney.
For further information regarding representation before the TTAB, see Patent and Trademark Rule 10.14, 10.18; TBMP §§ 114-116 (2d ed. rev. 2004).
This information is necessary so that the Board may communicate with the filer regarding the submission. Please make sure that both the address and the e-mail address is correct. The Board will send ESTTA filing confirmation, and in some cases orders, via e-mail. Unless otherwise noted, if an order is sent via e-mail, no hard copy will follow.
The filer's correspondence address may be changed via ESTTA. File Documents in a Board Proceeding > Change of Address.
For further information regarding correspondence in Board matters, see TBMP § 117, et seq. (2d ed. rev. 2004).
The Trademark Trial and Appeal Board is an administrative tribunal with jurisdiction to consider only whether a particular party is entitled to have or keep a federal trademark registration within the context of an opposition, cancellation, or concurrent use proceeding. The TTAB hears two types of proceedings; trials in inter partes matters (oppositions, cancellations, and concurrent use proceedings), and ex parte appeals from an examining attorney's refusal to register a mark. Inter partes proceedings involve a dispute between two (or more) parties, while appeals involve only an applicant and the USPTO.
The Board cannot consider questions of infringement or unfair competition, and may not grant injunctions, award damages, or attorney fees. Any such matters must be brought before a court of competent jurisdiction.
For more information about the TTAB and its jurisdiction, see Trademark Act § 17, 20; TBMP section 102, et seq. (2d ed. rev. 2004). The TTAB's home page at www.uspto.gov/web/offices/dcom/ttab features valuable links and information.
The TBMP contains a collection of many of the statutes, rules, cases and procedures relevant to practice before the TTAB. However, the TBMP is not intended to be an exhaustive reference to all areas of TTAB practice. Some relevant statutes and cases may not be included in the TBMP, and statutes and rules are amended from time to time and relevant cases frequently appear between manual revisions.
The TBMP can be found on the USPTO web site at www.uspto.gov/web/offices/dcom/ttab/tbmp/. (same comment as before). Changes to the TTAB's rules and the Trademark Act since publication of the current edition of the TBMP may be found on the USPTO web site.
Changes to the TTAB's rules the Trademark Act since publication of the current edition of the TBMP may be found on the USPTO web site.
Prior to registration on the Principal Register, all marks are published in the Official Gazette of the Patent and Trademark Office. The Official Gazette is published weekly and provides notice to all potential opposers. If an opposition or extension of time to oppose is not filed within thirty days following publication, a mark will proceed to registration or issuance of a notice of allowance, as appropriate.
Marks to be registered on the Supplemental Register are not published prior to registration, and are therefore not subject to opposition. If any party believes it is damaged by the existence of a mark on the Supplemental Register, it may file a petition for cancellation.
The Official Gazette is published electronically at www.uspto.gov/web/offices/com/sol/og/index.html. Information on ordering paper copies of the Official Gazette may be found at www.uspto.gov/web/offices/ac/ido/oeip/catalog/products/tmprod-1.htm#OGTM
For further information on publication, see Trademark Act § 12; Trademark Rule 2.80-2.84; TMEP (Trademark Manual of Examining Procedure) § 1502.
A person who believes that he would be damaged by the registration of a mark on the Principal Register may file a notice of opposition within thirty days of the date the mark is published in the Official Gazette. The Trademark Rules also permit any such person to request an extension of time in which to oppose. A request for extension of time must be filed prior to the expiration of the opposition period or any extension thereof.
Extensions may be requested as follows:
No further extensions of time to file an opposition will be granted under any circumstances. In addition, the Board will no longer suspend the time for filing a notice of opposition. ESTTA will only present extension options which are currently available to the potential opposer.
All of the above extension requests may be filed through ESTTA. Requests for extension of time to oppose an application filed under Trademark Act §66 must be filed through ESTTA.
An extension of time to oppose is a personal right accorded to the person or entity to which it was granted. Therefore, a second or subsequent extension request or a notice of opposition may only be filed by a potential opposer to whom a previous extension was granted, or by one who is in privity with such a person.
For further information on requests for extension of time to oppose, see Trademark Act § 13; Trademark Rule 2.102; TBMP Chapter 200 (2d ed. rev. 2004).
Use these options to file a new opposition, cancellation or appeal a final refusal to register. Choose your filing and enter the serial number of the application to be opposed, the registration number of the registration to be cancelled, or the serial number of the application to be appealed.
Prior to registration on the principal register, all pending trademarks are published in the Official Gazette. Any person who believes that he would be damaged by the registration may file a notice of opposition within thirty days of the date of publication, or within an extension of such period.
Oppositions to registration of marks filed under Trademark Act § 66 must be filed electronically through ESTTA. All other oppositions may be filed either through ESTTA or on paper.
For further information on notices of opposition, see Trademark Act § 13; Trademark Rules 2.101 - 2.107; TBMP Chapter 300 (2d ed. rev. 2004).
A petition for cancellation of a trademark registration may be filed at any time. However, a mark which has been registered for more than five years may only be cancelled for the reasons enumerated in Trademark Act § 14.
If the mark sought to be cancelled has been registered more than five years, ESTTA requires the petitioner to state the statutory basis for cancellation. Only valid options are presented. However, if you believe that cancellation is proper upon a ground which does not appear on the ESTTA form, you may file a petition for cancellation on paper.
For further information on petitions for cancellation, see Trademark Act § 14; Trademark Rules 2.111-2.115; TBMP § 300, et seq.
An applicant for registration of a trademark may appeal to the Trademark Trial and Appeal Board any final refusal to register the mark. An appeal is initiated by filing a timely notice of appeal with the Board, along with the required fee, which is currently $100 per class of goods or services.
To be timely, an appeal must be filed within six months from the date of the final refusal. Note that the filing of a request for reconsideration of the final refusal does not in itself extend or toll the time to file an appeal.
ESTTA will not permit the filing of a notice of appeal if the USPTO's records indicate an inappropriate status for appeal (e.g., final refusal has not been issued), or if the appeal would be untimely. If you believe that the USPTO’s electronic records are incorrect, you should bring the matter to the attention of the Office. If the matter cannot be resolved within the time to appeal, you may file a timely notice of appeal on paper.
NOTE: Do not use this form for filing a notice of appeal from a Board decision to the U.S. Court of Appeal for the Federal Circuit or to a U.S. District Court. The proper procedure for such appeals is set out in Trademark Rule 2.145.For more information on notices of ex parte appeal, see Trademark Rule 2.141 - 2.142; and TBMP §1200, et seq.
During the period between a final action and expiration of the time for filing an appeal, the applicant may request the trademark examining attorney to reconsider the final action. The filling of a request for reconsideration will not extend the time for filing an appeal
A request for reconsideration must be filed prior to the expiration of time to appeal, i.e., no later than six months from the mailing date of the final office action. Note that a request for reconsideration does not extend the time for filing an appeal. If a request for reconsideration has been filed, but not acted upon by the expiration of the time to appeal, an applicant must file a timely appeal if it wishes to preserve its right to do so.
A request for reconsideration should be filed with the trademark examining attorney, not the Trademark Trial and Appeal Board. Requests for reconsideration may be filed using TEAS using the Response to Office Action form. (To maintain their status, TEAS Plus applicants must use TEAS for filing a request for reconsideration.)
For further information on requests for reconsideration, see Trademark Rule 2.64(b); TBMP §§ 1201.01, 1204 (2d ed. rev. 2004); TMEP §§ 715.03; 715.04.
Use these options to file documents (motions, briefs, etc.) in an already existing opposition, cancellation, concurrent use, or appeal proceeding. Choose a filing option and enter the opposition number (91xxxxxx), cancellation number (92xxxxxx), concurrent use number (94xxxxxx), or application serial number (7xxxxxx) to which your filing applies.
Use this option to file all papers in trademark opposition or cancellation proceedings except extensions of time to oppose, notices of opposition, or petitions for cancellation. Such papers include - but are not limited to - answers, counterclaims, motions, testimony, stipulations, and briefs.
NOTE: While written stipulations or consent motions may be filed using this option, ESTTA provides a web form for consent motions to extend the time to answer, to extend discovery or trial dates, to suspend for settlement, or to suspend in view of a civil action. These web forms, found under "Consent Motions (opposition or cancellation)", provide easier filing and faster processing for these motions. However, if your proceeding was commenced on or after November 1, 2007, you should not use the Board's web form until further notice, because it will not result in the correct schedule.
IMPORTANT: Papers may only be filed by the parties to a Board proceeding or their attorneys. Board rules do not allow filings by non-parties. Such papers will be removed from the file and discarded.
Consistent with Board practice, all filings will be considered for their content, and not their title. However, to aid the Board in entry and prompt consideration of your paper, the ESTTA form requires the user to identify its filing. Titles are presented for the most common types of filings. Choose the option which most closely identifies your filing. If the filing embodies two or more motions, choose the primary or most significant motion. If there is no title which identifies your filing, you may pick "Other Motions/Papers", and your submission will be so identified, although use of this option does not allow the Board to efficiently process and route your submission.
Fees: Some filings require payment of a fee. ESTTA is currently unable to automatically accept payment for papers other than notices of opposition, petitions for cancellation, and notices of es parte appeal. Accordingly, if a fee is payable for the paper or motion you are submitting, you must authorize payment from a deposit account in the paper. If you wish to pay by check or credit card, you should not use ESTTA.
Certain filings (in addition to notices of opposition and petitions for cancellation), such as counterclaims, amendments to registrations, and requests to divide, require that a fee be submitted. The current version of ESTTA does not support electronic fee processing for these papers. Accordingly, submission of papers requiring payment of a fee should either include written authorization to debit the filer's USPTO deposit account or be filed by mail.
The fee for a counterclaim is the same as the fee for a notice of opposition or petition for cancellation, i.e., $300 per class of goods or services subject to the counterclaim. The fee must be submitted for each opposer or petitioner.
Use this option to file all papers in an ex parte appeal proceeding except the notice of appeal itself. Such papers include – but are not limited to – motions to extend or suspend the time for filing briefs, requests for oral hearing, and requests for remand.
A request for reconsideration of the examining attorney’s refusal to register which is filed prior to, or simultaneous with, the notice of appeal, should be filed with the examining attorney, and not with the Board. However, if such a paper has been filed, be sure to check the box in ESTTA to indicate this, so that the Board may suspend the appeal pending the examining attorney’s consideration of the request for reconsideration.
IMPORTANT: Papers may only be filed by the applicant or the examining attorney. Board rules do not permit filings by others. Such papers will be removed from the file and discarded.
Consistent with Board practice, all filings will be considered for their content, and not their title. However, to aid the Board in entry and prompt consideration of your paper, the ESTTA form requires the user to identify its filing. Options are presented for the most common types of filings. Choose the option which most closely identifies your filing. If the filing embodies two or more motions, choose the primary or most significant motion. If there is no option which identifies your filing, you may pick “other?? and briefly describe the paper.
Electronic filing through ESTTA requires a computer and an Internet connection. ESTTA has been tested using Netscape 4 and Internet Explorer 4 and above, on PC architecture. While every effort has been made to use standard programming, the USPTO cannot guarantee that ESTTA will function properly using different browsers or operating systems.
To file a notice of opposition electronically through ESTTA, you will need the following, in addition to answering the questions on the ESTTA web forms:
For pleadings, motions and other papers,your document may be in PDF (preferred), TIFF, or TXT format, formatted in letter size (8.5" x 11"), portrait orientation, and preferably in black and white. If your document is in TIFF or PDF format, it should be rendered at 300 dpi. Documents may either be scanned in TIFF or PDF format, or (preferably) converted from word processing files using commercially-available software. Most word processing programs allow the user to save a document as a PDF or TXT file.
The maximum file size is approximately 6 MB for any individual file.
The maximum filing size for all attachments is approximately 53 MB. You may attach more than one file in more than one format.
In an opposition against an application under Trademark Act § 66, in which the opposer claims rights based on its ownership of a mark, a copy of the mark must be submitted.
If the mark is the subject of a U.S. Registration, or if the mark is a common-law mark depicted in a U.S. Application, you may enter the registration or application number, and the drawing of the mark will be retrieved from the USPTO database.
If the opposer's mark is typed or in standard character form (i.e., words only, with no design or claim to particular format or typeface), you may type the mark in the appropriate field. If the mark is not capable of being depicted in a drawing (e.g., sound marks, scent marks), enter a description of the mark in the appropriate field.
Otherwise, you must attach an image of the mark to your ESTTA filing. The image must be in JPEG format at 300 dpi resolution, no larger than 8 x 8cm (3.15" x 3.15" or 945 by 945 pixels).
A proper pleading for a notice of opposition or petition for cancellation contains a "short and plain statement of the claim showing that the [filer] is entitled to relief". This is the same as the document you would file if you were filing a notice of opposition or petition for cancellation on paper. The pleading states in numbered paragraphs facts which if proven would establish that the opposer has (1) standing to oppose registration or to petition for cancellation; and (2) a legal ground for opposition or cancellation. The filer does not have to actually prove these allegations at this time, but must have a good faith belief in their truth.
For further information on pleadings, see Trademark Rules 2.101, 2.104, 2.122(c)-(d); Fed. R. Civ. P. 7, 8-11; TBMP Chapter 300 (2d ed. rev. 2004).
The Madrid Protocol is an international agreement which facilitates the filing and maintenance of trademarks in member countries. U.S. applications filed by way of the Madrid Protocol are governed by Trademark Act § 66, et seq. Because of the strict time limits involved in oppositions against Trademark Act § 66 applications, electronic filing is required for extensions of time to oppose and notices of opposition against such applications. Once filed, however, such oppositions are nearly identical to oppositions against an application based on Trademark Act §§ 1 or 44.
For more information concerning filings under Trademark Act § 66, see TMEP § 1900, et seq.
All papers submitted to the Board must be signed by the party on whose behalf the paper is filed, or by that party’s attorney. Electronically-filed papers filed via ESTTA may be signed (1) by signing the paper in pen, then scanning the paper for attachment and transmission or (2) by placing on the paper a symbol comprised of numbers and/or letters between two forward slashes. E.g.: /John Q. Public/
For more information on signature requirements, see Trademark Rules 2.119(e); 2.193(c); Patent and Trademark Rule 10.18; Fed. R. Civ. P. 11; TBMP § 106.02, 203.03, 309.02, 311.01, 502.04, 527.02, 1202.03.
The Board's standard order for the protection of confidential materials is in effect in all opposition, cancellation, or concurrent use proceedings, unless the parties agree to an alternative order, or the Board grants a motion to deviate from the standard order.
Except for materials properly filed as confidential, 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 portions of a brief, pleading motion or other paper that discloses 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 the paper.
See Trademark Rules 2.27, 2.116(g), 2.126(d). See also TBMP § 412.04(2d.ed.rev.2004).
Upon successful completion of an ESTTA submission, the filer will receive a filing confirmation by e-mail, at the e-mail address provided. The Board may (as in the case of an extension of time to oppose) also send orders to the filer by e-mail. Accordingly, it is critical that ESTTA filers make sure that the e-mail address is correct prior to transmission.
You may enter more than one e-mail address, separated by commas, in the e-mail address field in ESTTA, up to a total of 150 characters. The filing receipt and any resulting order (if sent by e-mail) will be copied to all entered addresses. Note, however, that the Board will only send a paper copy to one correspondence address per party.
Parties should take care to update the address to which correspondence should be sent (both street address and email) whenever appropriate. Parties are responsible for maintaining the correct correspondence information with the Board. Failure to do so may result in missing deadlines, with adverse consequences.
If one or both of the parties to this proceeding are involved in a case before the Board or a civil court which may have a bearing on the Board proceeding, the filer should so inform the Board using this field. Doing so, however, is informational, and does not relieve the party of the necessity of taking any appropriate action, such as filing a motion to suspend or consolidate.
ESTTA CONSENT MOTION FORMS CAN NOW BE USED FOR ALL Opposition and Cancellation Proceedings.
A NEW FORM FOR REQUESTING BOARD PARTICIPATION IN A DISCOVERY CONFERENCE is now available under the "Opposition, Cancellation or Concurrent Use (general filings)".
In addition, filers may submit written consent motions to extend or suspend using the "Opposition, Cancellation or Concurrent Use (general filings)" option. Select the appropriate motion under "Scheduling Motions", and attach a motion in PDF (preferred), TIFF or TXT format when prompted.
For more information concerning the new rules, see
• Miscellaneous Changes to trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (Aug 1, 2007), available at www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf.
• A chart summarizing the rules changes is available at www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.pdf.
The Notice of Opposition and Petition for Cancellation forms have been modified to prompt the filer to enter the grounds for opposition or cancellation, including any mark asserted by the plaintiff as a bar to registration. This change will provide for more complete information in the Board's automated systems without manual data entry, and will make the forms generally consistent with each other.
The Appeal of Refusal to Register form will now generate an error message when the application status is incorrect for an appeal. This change will reduce the delay and manual processing required when improper appeals are filed.
This release provides the ability to pay the filing fee for a counterclaim and changes the consent motion forms to display the proposed trial schedule prior to transmission.