You have filed your trademark application with the United States Patent and Trademark Office (USPTO). Your trademark application was assigned to, reviewed by and approved for publication by an Examining Attorney at the USPTO. You got excited, you may have started using the mark or expanded your existing use and you were anxiously awaiting receipt of your Certificate of Registration. You figured the 30 day Opposition Period was a mere formality. Then, you suddenly receive notice from the USPTO that an entity has filed a Request for an Extension of Time to File an Opposition. Now what? Does this mean your trademark application is dead? Are you being sued? What should you do next?
First, recognize what a Request for Extension of Time to Oppose is. The Trademark Trial and Appeal Board (TTAB) makes a short form available for any “person who believes that he, she or it 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. Such person may 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 prior to the expiration of any previously granted extension.” Since no further extensions of time to file an opposition will be granted under any circumstances, entities oftentimes, as a matter of course, utilize a Request for Extension of Time to Oppose in order to further analyze whether there is any basis for a Trademark Opposition Proceeding. This means an entity may be considering opposing your trademark application because of, among other reasons, their prior use and your use creating a likelihood of consumer confusion.
Second, recognize what a Request for Extension of Time to Oppose is not. It is not a Notice of Opposition, which would trigger a Trademark Trial and Appeal Board Opposition Proceeding and necessitate your filing of an Answer or other responsive pleading. It is not a lawsuit.
Third, recognize that a Request for Extension of Time to Oppose may be an opportunity for you to perform your own analysis, with the help of a trademark attorney if you so desire, in order to determine your risk level. Once you are apprised of your risk, you may take affirmative steps to communicate with the potential Opposer in hopes of identifying an amicable resolution. You may also stand by and do nothing, willing to dispute any Opposition or take other action.
Ultimately, a Request for Extension of Time to Oppose is yet another data point you should be mindful of in the trademark prosecution process. While an Opposer may send a cease and desist letter and inform you of the potential TTAB Opposition, you may receive notice of the request for extension without any direct correspondence from the requesting entity. As such, pay attention to what you receive and contact a trademark attorney with questions.