           CHAPTER 200  EXTENSIONS OF TIME TO OPPOSE


20l  In General

202  Time for Filing Request

203  Form of Request

204  Fee

205  Mark on Supplemental Register Not Subject to Opposition

206  Identification of Potential Opposer

207  Requirements for Showing of Cause

208  Essential Element Omitted

209  Action by Board on Request

210  Objections to Request

211  Relief From Action of Board

212  Amendment of Application During or After Extension

213  Effect of Restoration of Jurisdiction

214  Effect of Republication

215  Effect of Letter of Protest

216  Inadvertently Issued Registration

217  Relinquishment of Extension

218  Abandonment of Application

219  Amendment to Allege Use; Statement of Use



201  In General

15 U.S.C. 1063 (a) Any person who believes that he would be
damaged by the registration of a mark upon the principal
register may, upon payment of the prescribed fee, file an
opposition in the Patent and Trademark Office, stating the
grounds therefor, within thirty days after the publication
under subsection (a) of section 12 of this Act of the mark
sought to be registered.  Upon written request prior to the
expiration of the thirty-day period, the time for filing
opposition shall be extended for an additional thirty days,
and further extensions of time for filing opposition may be
granted by the Commissioner for good cause when requested
prior to the expiration of an extension.  The Commissioner
shall notify the applicant of each extension of the time for
filing opposition.  An opposition may be amended under such
conditions as may be prescribed by the Commissioner.

37 CFR 2.101 Filing an opposition.
(a) An opposition proceeding is commenced by the filing of
an opposition in the Patent and Trademark Office.

(b) Any entity which believes that it would be damaged by
the registration of a mark on the Principal Register may
oppose the same by filing an opposition, which should be
addressed to the Trademark Trial and Appeal Board.  The
opposition need not be verified, and may be signed by the
opposer or the opposer's attorney or other authorized
representative.

(c) The opposition must be filed within thirty days after
publication (2.80) of the application being opposed or
within an extension of time (2.102) for filing an
opposition.

                        *     *     *

37 CFR 2.102 Extension of time for filing an opposition.
(a) Any person who believes that he would be damaged by the
registration of a mark on the Principal Register may file a
written request to extend the time for filing an opposition.
The written request may be signed by the potential opposer
or by an attorney at law or other person authorized, in
accordance with 2.12(b) and (c) and 2.17(b), to represent
the potential opposer.

(b) The written request to extend the time for filing an
opposition must identify the potential opposer with
reasonable certainty.  Any opposition filed during an
extension of time should be in the name of the person to
whom the extension was granted, but an opposition may be
accepted if the person in whose name the extension was
requested was misidentified through mistake or if the
opposition is filed in the name of a person in privity with
the person who requested and was granted the extension of
time.

(c) The written request to extend the time for filing an
opposition must be filed in the Patent and Trademark Office
before the expiration of thirty days from the date of
publication or within any extension of time previously
granted, should specify the period of extension desired, and
should be addressed to the Trademark Trial and Appeal Board.
A first extension of time for not more than thirty days will
be granted upon request.  Further extensions of time may be
granted by the Board for good cause.  In addition,
extensions of time to file an opposition aggregating more
than 120 days from the date of publication of the
application will not be granted except upon (1) a written
consent or stipulation signed by the applicant or its
authorized representative, or (2) a written request by the
potential opposer or its authorized representative stating
that the applicant or its authorized representative has
consented to the request, and including proof of service on
the applicant or its authorized representative, or (3) a
showing of extraordinary circumstances, it being considered
that a potential opposer has an adequate alternative remedy
by a petition for cancellation.

(d) Every request to extend the time for filing a notice of
opposition should be submitted in triplicate (original plus
two copies).

Any person (whether natural or juristic--see TBMP 303.02)
who believes that he, she, or it would be damaged by the
registration of a mark upon the Principal Register may, upon
payment of the prescribed fee, file an opposition in the
PTO, stating the grounds therefor, within 30 days after the
publication of the mark in the Official Gazette for purposes
of opposition.  See Section 13(a) of the Act, 15 U.S.C.
1063(a), and 37 CFR 2.101.  For further information
concerning the filing of an opposition, see TBMP chapter
300.

Similarly, any person who believes that he, she, or it would
be damaged by the registration of a mark upon the Principal
Register may file a written request to extend the time for
filing an opposition.  See Section 13(a) of the Act, 15
U.S.C. 1063(a), and 37 CFR 2.102.  Requests for extension
of time to oppose are determined by the Board.  See 37 CFR
2.102(c), and Cass Logistics Inc. v. McKesson Corp., 27
USPQ2d 1075 (TTAB 1993).

The time for filing a request for an extension of time to
oppose is governed by Section 13(a) of the Act, 15 U.S.C.
1063(a), and 37 CFR 2.102(c).  For further information
concerning the time for filing a request for extension of
time to oppose, see TBMP 202.

Other requirements for a request for extension of time to
oppose are specified in 37 CFR 2.102.  Moreover, certain
requirements for papers filed in inter partes proceedings
before the Board also apply to a request for extension of
time to oppose.  For information concerning the requirements
(other than the time requirement) for a request for
extension of time to oppose, see TBMP 203-208.



202  Time for Filing Request

202.01  In General

15 U.S.C. 1063 (a) Any person who believes that he would be
damaged by the registration of a mark upon the principal
register may, upon payment of the prescribed fee, file an
opposition in the Patent and Trademark Office, stating the
grounds therefor, within thirty days after the publication
under subsection (a) of section 12 of this Act of the mark
sought to be registered.  Upon written request prior to the
expiration of the thirty-day period, the time for filing
opposition shall be extended for an additional thirty days,
and further extensions of time for filing opposition may be
granted by the Commissioner for good cause when requested
prior to the expiration of an extension.  The Commissioner
shall notify the applicant of each extension of the time for
filing opposition.  An opposition may be amended under such
conditions as may be prescribed by the Commissioner.

37 CFR 2.102(c) The written request to extend the time for
filing an opposition must be filed in the Patent and
Trademark Office before the expiration of thirty days from
the date of publication or within any extension of time
previously granted, should specify the period of extension
desired, and should be addressed to the Trademark Trial and
Appeal Board.   ...

A first request for an extension of time to oppose an
application for registration of a mark must be filed prior
to the expiration of the thirty-day period after publication
of the mark in the Official Gazette, pursuant to Section
12(a) of the Act, 15 U.S.C. 1062(a), for purposes of
opposition.  Any request for a further extension of time to
oppose must be filed prior to the expiration of an extension
granted to the requesting party or its privy.  See Section
13(a) of the Act, 15 U.S.C. 1063(a), and 37 CFR 2.102(c).
See also In re Cooper, 209 USPQ 670 (Comm'r 1980).

A potential opposer which has requested an extension of time
to oppose should not wait until it has received notification
from the Board of the grant or denial of the request before
filing an opposition or a request for a further extension of
time to oppose.  If a request for an extension of time to
oppose is granted, the length of the granted extension will
be no greater (and may be less) than that sought in the
extension request, and it will run from the expiration of
the thirty-day opposition period after publication, in the
case of a first request, or from the date of expiration of
the previously granted extension, in the case of a request
for a further extension.  See In re Societe Des Produits
Nestle S.A., 17 USPQ2d 1093 (Comm'r 1990).  While the Board
attempts to notify a potential opposer of the grant of an
extension request prior to the expiration of the granted
extension, particularly where the length of the granted
extension is less than that requested, the Board is under no
obligation to do so, and in many cases cannot.  See Lotus
Development Corp. v. Narada Productions, Inc., 23 USPQ2d
1310 (Comm'r 1991), and In re Societe Des Produits Nestle
S.A., supra.  Cf. In re Holland American Wafer Co., 737 F.2d
1015, 222 USPQ 273 (Fed. Cir. 1984); In re L.R. Sport Inc.,
25 USPQ2d 1533 (Comm'r 1992); and In re Application Papers
Filed November 12, 1965, 152 USPQ 194 (Comm'r 1966).



202.02  Date of Publication of Mark

Normally, the date of publication of a mark is the cover
date of the issue of the Official Gazette in which the mark
is published, pursuant to Section 12(a) of the Act, 15
U.S.C. 1062(a), for purposes of opposition.  However, when
an issue of the Official Gazette is mailed late, the date of
publication of the marks published therein for opposition is
considered by the Commissioner to be the date on which the
Official Gazette was mailed, as specified in the
Commissioner's Notice of the late mailing.



202.03  Late-mailed Official Gazette

Ordinarily, an issue of the Official Gazette is mailed to
subscribers during the business week of the date appearing
on its cover, and that cover date is considered to be the
date of publication of the marks published therein, pursuant
to Section 12(a) of the Act, 15 U.S.C. 1062(a), for
purposes of opposition.  However, it sometimes happens that
an issue of the Official Gazette is mailed to subscribers
late, that is, after the business week of the date appearing
on its cover.

When an issue of the Official Gazette is mailed late, the
date of publication of the marks published therein for
opposition is considered by the Commissioner to be the date
on which the Official Gazette was mailed, and the thirty-day
opposition period is considered by the Commissioner to run
from the Official Gazette mailing date, rather than from its
cover date.  Applicants and potential opposers are notified
of the late mailing, and of the consequent change in both
the publication date and the opposition period expiration
date, by a Commissioner's Notice published in a subsequent
issue of the Official Gazette.  Cf. In re BPJ Enterprises
Ltd., 7 USPQ2d 1375, 1376, at fn.1 (Comm'r 1988).  In such
cases, extensions of time to oppose run from the opposition
period expiration date specified in the Commissioner's
Notice, and the 120-day period of 37 CFR 2.102(c) runs from
the Official Gazette mailing date specified in the Notice.

The Official Gazette mailing date, and the opposition period
expiration date, specified in the Commissioner's Notice will
be used by the Board as the basis for calculating the
expiration date of a first extension of time to oppose, even
if an extension request specifies an extension expiration
date calculated from the Official Gazette cover date.
Ordinarily, the dates specified in the Commissioner's Notice
will also be used by the Board in calculating the expiration
dates of further extensions of time to oppose.  However, if
a request for a further extension specifies a different
extension expiration date, and the request meets the
requirements of 37 CFR 2.102, the extension will be set to
expire on the specified date.



202.04  Premature Request

Section 13(a) of the Act, 15 U.S.C. 1063(a), provides that
an opposition to the registration of a mark upon the
Principal Register may be filed "within thirty days after"
the publication of the mark in the Official Gazette,
pursuant to Section 12(a) of the Act, 15 U.S.C. 1062(a),
for opposition.  Section 13(a) also provides for extensions
of this time for filing an opposition, under certain
conditions.  Thus, any opposition, and any request for an
extension of time to oppose, filed prior to the publication
of the mark sought to be opposed, is premature, and will be
rejected by the Board, even if the mark has been published
by the time of the Board's action.  Cf. TBMP 119.03 and
307.03.



202.05  Late Request

A request for an extension of time to oppose must be filed
prior to the expiration of the thirty-day period after
publication (for opposition) of the mark which is the
subject of the request, in the case of a first request, or
prior to the expiration of an extension granted to the
requesting party or its privy, in the case of a request for
a further extension.  See Section 13(a) of the Act, 15
U.S.C. 1063(a), and 37 CFR 2.102(b) and (c).  See also In
re Cooper, 209 USPQ 670 (Comm'r Pats 1980).  Because these
timeliness requirements are statutory, they cannot be waived
by stipulation of the parties, nor can they be waived by the
Commissioner upon petition.  See In re Cooper, supra.
Accordingly, a first request filed after the expiration of
the thirty-day period following publication of the subject
mark, or a request for a further extension filed after the
expiration of the previous extension granted to the
requesting party or its privy, must be denied by the Board
as late, even if the applicant has consented to the granting
of the late filed request.

Moreover, once the time for opposing the registration of a
mark has expired, the PTO will not withhold issuance of the
registration while applicant negotiates for settlement with
a party which failed to timely oppose.  This is so even if
the applicant itself requests that issuance be withheld.



203  Form of Request

203.01  In General

37 CFR 2.102(a) Any person who believes that he would be
damaged by the registration of a mark on the Principal
Register may file a written request to extend the time for
filing an opposition.  The written request may be signed by
the potential opposer or by an attorney at law or other
person authorized, in accordance with 2.12(b) and (c) and
2.17(b), to represent the potential opposer.

                        *     *     *

37 CFR 2.102(c) The written request to extend the time for
filing an opposition must be filed in the Patent and
Trademark Office before the expiration of thirty days from
the date of publication or within any extension of time
previously granted, should specify the period of extension
desired, and should be addressed to the Trademark Trial and
Appeal Board.  ...

37 CFR 2.102(d) Every request to extend the time for filing
a notice of opposition should be submitted in triplicate
(original plus two copies).

A request for an extension of time to oppose must be made in
writing.  See Section 13(a) of the Act, 15 U.S.C. 1063(a),
and 37 CFR 2.102(a) and 1.2.  The request should specify
the period of extension desired, and should be addressed to
the mailing address of the Trademark Trial and Appeal Board
(see TBMP 103).

In addition, every request for an extension of time to
oppose should be filed in triplicate, so that if the request
is approved, it may be so stamped; one copy may be placed in
the application file; and the other copies may be mailed to
the potential opposer and the applicant.  See 37 CFR
2.102(d).  If only a single copy of an extension request is
filed, the request will not be refused consideration, but
action thereon may be delayed because the Board itself will
have to make the extra copies.



203.02  Identifying Information

A request for an extension of time to oppose should bear at
its top the heading "IN THE UNITED STATES PATENT AND
TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL
BOARD," followed by information identifying the application
to which the request pertains, namely, the name of the
applicant, and the application serial number, filing date,
mark, and date of publication in the Official Gazette.  Cf.
37 CFR 1.5(c), and In re Merck & Co., 24 USPQ2d 1317
(Comm'r 1992) (misidentification by potential opposer of
application to which request for extension of time to oppose
pertains).  The request should also bear an appropriate
title describing its nature, such as "Request for Extension
of Time to Oppose" or "Request for Further Extension of Time
to Oppose."  In addition, the request must identify the
potential opposer with reasonable certainty.  See 37 CFR
2.102(b), and TBMP 206.



203.03  Signature

37 CFR 2.102(a) Any person who believes that he would be
damaged by the registration of a mark on the Principal
Register may file a written request to extend the time for
filing an opposition.  The written request may be signed by
the potential opposer or by an attorney at law or other
person authorized, in accordance with 2.12(b) and (c) and
2.17(b), to represent the potential opposer.

A request for an extension of time to oppose may be signed
either by the potential opposer or by its attorney or other
authorized representative.  See 37 CFR 2.102(a).  See also
La Maur, Inc. v. Andis Clipper Co., 181 USPQ 783 (Comm'r
1974).  Under the written signature there should appear the
name, in typed or printed form, of the person signing; a
description of the capacity in which he or she signs (e.g.,
as the individual who is the potential opposer, if the
potential opposer is an individual; as a corporate officer,
specifying the particular office held, if the potential
opposer is a corporation; as potential opposer's attorney;
etc.); and his or her business address (to which
correspondence relating to the request will be sent) and
telephone number.

While a request for an extension of time to oppose must be
signed, an unsigned request will not be refused
consideration if a signed copy is submitted to the PTO
within the time limit set in the written notification of
this defect by the Board.  See 37 CFR 2.119(e) and TBMP
106.02.

A potential opposer which has submitted an unsigned request
for an extension of time to oppose should not wait until it
has submitted a signed copy of the request (in response to
the Board's written notification of the defect), and the
Board has acted thereon, before filing an opposition or a
request for a further extension of time to oppose.  If the
extension request is ultimately granted, the length of the
granted extension will be no greater (and may be less) than
that sought in the extension request, and it will run from
the expiration of the thirty-day opposition period after
publication, in the case of a first request, or from the
date of expiration of the previously granted extension, in
the case of a request for a further extension.  If no
opposition or request for further extension of time to
oppose is filed prior to the expiration of any extension
ultimately granted (after submission of a signed copy of the
request) to the potential opposer, the time for opposing
will be deemed to have expired, and the applicatiion which
was the subject of the request will be sent to issue.  Cf.
TBMP 202.01.



203.04  Service

Rule 2.119(a), 37 CFR 2.119(a), requires, in part, that
with certain stated exceptions, every paper filed in the PTO
in inter partes cases must be served upon the other parties,
and that proof of such service must be made before the paper
will be considered by the Office.  Rule 2.101(a), 37 CFR
2.101(a), provides that an opposition proceeding is
commenced by the filing of an opposition in the PTO.
Inasmuch as a request for an extension of time to oppose is
a paper filed prior to the commencement of the opposition,
it is ex parte, rather than inter partes, in nature.
Accordingly, the request need not include proof of service
upon the applicant unless the request seeks an extension
beyond 120 days from the date of publication, and is based
upon a statement by the potential opposer or its authorized
representative that the applicant or its authorized
representative has consented to the request.  See 37 CFR
2.102(c) and La Maur, Inc. v. Andis Clipper Co., 181 USPQ
783 (Comm'r 1974).  However, once the Board has acted upon a
request for an extension of time to oppose, the Board itself
will send the applicant a copy of the extension request
(unless it bears proof of service by potential opposer)
together with the Board's action thereon.  See Section 13 of
the Act, 15 U.S.C. 1063.



203.05  Duplicate Requests

It sometimes happens that duplicate requests for an
extension of time to oppose are filed on behalf of the same
party by two attorneys from the same firm, or from differing
firms, or by an attorney from a firm and in-house counsel.
Attorneys should make every effort to avoid the filing of
such duplicate requests, which waste the time and resources
both of the Board, and of the attorneys themselves.

When duplicate requests have been filed, and the first
request has been granted, the second request is given no
consideration, and the attorneys are notified in writing of
the duplicate filings and are requested to take appropriate
action to avoid the filing of duplicate requests in the
future.  If requests filed by different attorneys on behalf
of the same party are duplicates but for the fact that the
second request seeks a longer extension than the first, the
second request will be granted, if otherwise appropriate,
but the attorneys will be requested in writing to avoid the
filing of further duplicate requests.



204  Fee

There is no fee for filing a request for an extension of
time to oppose.  Cf. 37 CFR 2.6.



205  Mark on Supplemental Register Not Subject to Opposition

Although the mark in an application for registration on the
Principal Register is published for, and subject to,
opposition, the mark in an application for registration on
the Supplemental Register is not.  See Sections 12(a),
13(a), and 24 of the Act, 15 U.S.C. 1062(a), 1063(a), and
1092, and 37 CFR 2.82.  If it appears, after examination of
an application for registration of a mark on the
Supplemental Register, that applicant is entitled to the
registration sought, a certificate of registration is
issued, without any publication for opposition.  See
Sections 23(b) and 24 of the Act, 15 U.S.C. 1091(b) and
1092, and 37 CFR 2.82.  Upon issuance of the registration,
the mark is published in the Official Gazette, not for
opposition, but rather to give notice of the registration's
issuance.  See Section 24 of the Act, 15 U.S.C. 1092; 37
CFR 2.82; and TMEP 1502.

Accordingly, the Board must deny any request for an
extension of time to oppose the mark in an application for
registration on the Supplemental Register.  The remedy of
the would-be opposer lies in the filing of a petition to
cancel the registration of the mark, once the registration
has issued.  See Section 24 of the Act, 15 U.S.C. 1092.



206  Identification of Potential Opposer

37 CFR 2.102(b) The written request to extend the time for
filing an opposition must identify the potential opposer
with reasonable certainty.  Any opposition filed during an
extension of time should be in the name of the person to
whom the extension was granted, but an opposition may be
accepted if the person in whose name the extension was
requested was misidentified through mistake or if the
opposition is filed in the name of a person in privity with
the person who requested and was granted the extension of
time.



206.01  Requirement for Identification

A request for an extension of time to oppose must identify
the potential opposer with reasonable certainty.  See 37 CFR
2.102(b).  If a request for extension of time to oppose
fails to identify the potential opposer with reasonable
certainty, the Board can allow the defect to be corrected
only if the correction is made prior to the expiration of
the time for filing the request, that is, prior to the
expiration of the thirty-day opposition period following
publication of the subject mark, in the case of a first
request, or prior to the expiration of the previous
extension, in the case of a request for a further extension.
See In re Spang Industries, Inc., 225 USPQ 888 (Comm'r
1985).  Cf. In re Su Wung Chong, 20 USPQ2d 1399 (Comm'r
1991); In re Software Development Systems, Inc., 17 USPQ2d
1094 (Comm'r 1989); and In re Societe Des Produits Nestle
S.A., 17 USPQ2d 1093 (Comm'r 1990).

If a request for a further extension of time to oppose does
not specifically name the potential opposer, but it is clear
from the circumstances that the request is being submitted
on behalf of the same potential opposer which obtained an
earlier extension(s) (for example, the request is submitted
by the same attorney(s) who submitted the earlier request(s)
on behalf of the potential opposer, and, asks for an
"additional" or "further" extension; or the request
indicates that the "potential opposer" was granted an
earlier extension(s) until a specified time, and asks for an
additional or further extension; etc.), the request may be
construed by the Board as identifying the potential opposer
with reasonable certainty.  However, the better, and safer,
practice is to specifically name the potential opposer in
each request for an extension of time to oppose.



206.02  Request for Further Extension Filed by Privy

An extension of time to oppose is a personal privilege which
inures only to the benefit of the party to which it was
granted and those in privity with that party.  For this
reason, a request for a further extension of time to oppose,
or an opposition, filed during an extension of time
ordinarily must be filed in the name of the party to which
the extension was granted.  However, a request for a further
extension, or an opposition, filed by a different party will
not be rejected on that ground if it is shown to the
satisfaction of the Board that the different party is in
privity with the party granted the previous extension(s).
See 37 CFR 2.102(b); TMEP 1503.04(d); SDT Inc. v.
Patterson Dental Co., 30 USPQ2d 1707 (TTAB 1994); and In re
Cooper, 209 USPQ 670 (Comm'r 1980).  The "showing" should be
in the form of a recitation of the facts upon which the
claim of privity is based, and must be submitted either with
the request or opposition, or during the time allowed by the
Board in its letter requesting an explanation of the
discrepancy.  If the request for a further extension, or the
opposition, is filed both in the name of the party granted
the previous extension and in the name of one or more
different parties, an explanation will be requested as to
each different party, and the request will not be granted,
or the opposition accepted, as to any different party which
fails to make a satisfactory showing of privity.

The term "privity" is defined in Black's Law Dictionary
(Fifth Edition, 1979) as follows:
     Mutual or successive relationship to the same rights of
     property.  In its broadest sense, "privity" is defined
as mutual
     or successive relationships to the same right of
property,
     or such an identification of interest of one person
with another
     as to represent the same legal right.

In the field of trademarks, the concept of privity generally
includes, inter alia, the relationship of successive
ownership of a mark (e.g., assignor, assignee) and the
relationship of "related companies" within the meaning of
Sections 5 and 45 of the Act, 15 U.S.C. 1055 and 1127.
Cf. Rolex Watch U.S.A., Inc. v. Madison Watch Co., 211 USPQ
352, 358 (TTAB 1981); In re Cooper, 209 USPQ 670 (Comm'r
1980); Argo & Co. v. Carpetsheen Mfg., Inc., 187 USPQ 366,
367 (TTAB 1975); and F. Jacobson & Sons, Inc. v. Excelled
Sheepskin & Leather Coat Co., 140 USPQ 281 (Comm'r 1963).
But see Tokaido v. Honda Associates Inc., 179 USPQ 861 (TTAB
1973).  It does not, however, include the attorney/client
relationship.  See In re Spang Industries, Inc., 225 USPQ
888 (Comm'r 1985).

If, at the time when a first request for an extension of
time to oppose is being prepared, it is not clear which of
two or more entities will ultimately be the opposer(s), the
better practice is to name each of them, in that and any
subsequest extension request, as a potential opposer,
thereby avoiding any need for a showing of privity when an
opposition or subsequent extension request is later filed by
one or more of them.



206.03  Misidentification

Ordinarily, a request for a further extension of time to
oppose, or an opposition, filed during an extension of time
to oppose must be filed in the name of the party to which
the previous extension was granted.  See 37 CFR 2.102(b).
However, a request for a further extension, or an
opposition, filed in a different name will not be rejected
on that ground if it is shown to the satisfaction of the
Board that the party in whose name the extension was
requested was misidentified through mistake.  See 37 CFR
2.102(b), and Cass Logistics Inc. v. McKesson Corp., 27
USPQ2d 1075 (TTAB 1993).  The phrase "misidentification by
mistake," as used in 37 CFR 2.102(b), means a mistake in
the form of the potential opposer's name or its entity type,
not the naming of a different existing legal entity that is
not in privity with the party that should have been named.
See Cass Logistics Inc. v. McKesson Corp., supra.  See also
TMEP 1503.04.  Cf. Arbrook, Inc. v. La Citrique Belge,
Naamloze Vennootschap, 184 USPQ 505 (TTAB 1974); Davidson v.
Instantype, Inc., 165 USPQ 269 (TTAB 1970); Pyco, Inc. v.
Pico Corp., 165 USPQ 221 (TTAB 1969); and Raker Paint
Factory v. United Lacquer Mfg. Corp., 141 USPQ 407 (TTAB
1964).  Cf. also TMEP 802.06 and 802.07; In re Tong Yang
Cement Corp., 19 USPQ2d 1689 (TTAB 1991); In re Atlantic
Blue Print Co., 19 USPQ2d 1078 (Comm'r 1990); In re
Techsonic Industries, Inc., 216 USPQ 619 (TTAB 1982); Argo &
Co. v. Springer, 198 USPQ 626 (TTAB 1978); In re Eucryl,
Ltd., 193 USPQ 377 (TTAB 1976); Argo & Co. v. Springer, 189
USPQ 581 (TTAB 1976); and U.S. Pioneer Electronics Corp. v.
Evans Marketing, Inc., 183 USPQ 613 (Comm'r 1974).

The "showing" submitted in support of a claim of
misidentification by mistake  should be in the form of a
recitation of the facts upon which the claim of
misidentification by mistake is based, and must be submitted
either with the request or opposition, or during the time
allowed by the Board in its letter requesting an explanation
of the discrepancy.



207  Requirements for Showing of Cause

37 CFR 2.102(c) The written request to extend the time for
filing an opposition must be filed in the Patent and
Trademark Office before the expiration of thirty days from
the date of publication or within any extension of time
previously granted, should specify the period of extension
desired, and should be addressed to the Trademark Trial and
Appeal Board.  A first extension of time for not more than
thirty days will be granted upon request.  Further
extensions of time may be granted by the Board for good
cause.  In addition, extensions of time to file an
opposition aggregating more than 120 days from the date of
publication of the application will not be granted except
upon (1) a written consent or stipulation signed by the
applicant or its authorized representative, or (2) a written
request by the potential opposer or its authorized
representative stating that the applicant or its authorized
representative has consented to the request, and including
proof of service on the applicant or its authorized
representative, or (3) a showing of extraordinary
circumstances, it being considered that a potential opposer
has an adequate alternative remedy by a petition for
cancellation.



207.01  First Extension of Thirty Days

A first extension of time to oppose for not more than thirty
days will be granted upon written request therefor, if the
request is otherwise appropriate (i.e., is timely filed;
identifies the potential opposer with reasonable certainty;
etc.).  No showing of cause is required.  See Section 13(a)
of the Act, 15 U.S.C. 1063(a); 37 CFR 2.102(c); and Lotus
Development Corp. v. Narada Productions, Inc., 23 USPQ2d
1310 (Comm'r 1991).



207.02  Further Extensions

Extensions of time to oppose beyond the first thirty-day
extension may be granted by the Board for good cause,
provided that the extensions do not aggregate more than 120
days from the date of publication of the subject mark.  See
37 CFR 2.102(c), and Lotus Development Corp. v. Narada
Productions, Inc., 23 USPQ2d 1310 (Comm'r 1991).  If a
request for a further extension of time to oppose does not
include a showing of good cause, the Board can allow the
defect to be corrected only if the correction is made prior
to the expiration of the time for filing the request, that
is, prior to the expiration of the previous extension.  Cf.
In re Su Wung Chong, 20 USPQ2d 1399 (Comm'r 1991); In re
Software Development Systems, Inc., 17 USPQ2d 1094 (Comm'r
1989); In re Societe Des Produits Nestle S.A., 17 USPQ2d
1093 (Comm'r 1990); and In re Spang Industries, Inc., 225
USPQ 888 (Comm'r 1985).

A showing of good cause for a further extension of time to
oppose should be in the form of a recitation of the reasons
why additional time is needed for filing an opposition.  The
merits of the potential opposition are not relevant to the
issue of whether good cause exists for the requested
extension.

A first request for an extension of time to oppose may seek
an extension of more than thirty days, but good cause must
be shown for the time in excess of thirty days.  See
Kimberly-Clark Corp. v. Paper Converting Industry, Inc., 21
USPQ2d 1875 (Comm'r 1991).  If an otherwise proper first
extension request seeks an extension of more than thirty
days, but does not include a showing of good cause for the
time in excess of thirty days, the potential opposer will be
granted an extension of only thirty days.  However, a
request for a further extension, showing good cause, may be
submitted during that thirty-day extension period.

If a request for a further extension of time to oppose
includes a showing which constitutes good cause for part,
but not all, of the requested extension, any extension
granted to a potential opposer will be limited to the time
for which good cause has been shown.



207.03  Extensions Beyond 120 Days From Publication

Extensions of time to oppose aggregating more than 120 days
from the date of publication of the subject mark will not be
granted unless the potential opposer submits, in addition to
the showing of good cause required for extensions of time
beyond the first thirty-day extension period, one of the
following:  (1) a written consent or stipulation signed by
the applicant or its authorized representative, or (2) a
written request by the potential opposer or its authorized
representative stating that the applicant or its authorized
representative has consented to the request, and including
proof of service on the applicant or its authorized
representative, or (3) a showing of extraordinary
circumstances.  See 37 CFR 2.102(c).  If one of these
elements (i.e., the showing of extraordinary circumstances,
or applicant's written consent, or the statement that
applicant has consented, or the proof of service upon
applicant) is omitted from an extension  request based in
whole or in part upon the omitted element, the Board can
allow the defect to be corrected only if the correction is
made prior to the expiration of the time for filing the
request, that is, prior to the expiration of the previous
extension.  See In re Su Wung Chong, 20 USPQ2d 1399 (Comm'r
1991); In re Software Development Systems, Inc., 17 USPQ2d
1094 (Comm'r 1989); and In re Societe Des Produits Nestle
S.A., 17 USPQ2d 1093 (Comm'r 1990).  Cf. In re Spang
Industries, Inc., 225 USPQ 888 (Comm'r 1985).

If a showing of extraordinary circumstances is submitted in
support of a request for an extension running beyond 120
days from the date of publication, the requirement for a
showing of good cause is satisfied thereby.  If a request
for an extension running beyond 120 days from publication is
based upon applicant's consent, but includes no recitation
of other facts relating to good cause, applicant's consent
will be construed as good cause for that request, but
potential opposer will be advised by the Board, in writing,
that any further extension request based upon applicant's
consent must include also a recitation of circumstances
showing good cause for the request.

A request for a further extension of time to oppose may seek
an extension for a period beginning prior to 120 days from
the date of publication of the subject mark and ending after
the 120th day.  If such a request includes a showing of good
cause, but does not meet the requirements of 37 CFR
2.102(c) for extensions aggregating more than 120 days from
publication (i.e., does not include a showing of
extraordinary circumstances; or applicant's written consent;
or a statement that applicant has consented, accompanied by
proof of service on applicant), any extension granted to
potential opposer will be limited to the time for which good
cause has been shown, and will end on or before the 120th
day after publication.  See Lotus Development Corp. v.
Narada Productions, Inc., 23 USPQ2d 1310 (Comm'r 1991), and
In re Societe Des Produits Nestle S.A., 17 USPQ2d 1093
(Comm'r 1990).



208  Essential Element Omitted

If any element (e.g., identification of potential opposer,
showing of good cause, showing of extraordinary
circumstances, applicant's written consent, statement that
applicant has consented, proof of service on applicant)
essential to a particular request for extension of time to
oppose is omitted from the request, the Board can allow the
defect to be corrected only if the correction is made prior
to the expiration of the time for filing the request, that
is, prior to the expiration of the thirty-day opposition
period following publication of the subject mark, in the
case of a first request, or prior to the expiration of the
previous extension, in the case of a request for a further
extension.  See In re Su Wung Chong, 20 USPQ2d 1399 (Comm'r
1991); In re Software Development Systems, Inc., 17 USPQ2d
1094 (Comm'r 1989); In re Societe Des Produits Nestle S.A.,
17 USPQ2d 1093 (Comm'r 1990); and In re Spang Industries,
Inc., 225 USPQ 888 (Comm'r 1985).

While a request for an extension of time to oppose must be
signed, an unsigned request will not be refused
consideration if a signed copy is submitted to the PTO
within the time limit set in the written notification of
this defect by the Board.  See 37 CFR 2.119(e) and TBMP
106.02.



209  Action by Board on Request

209.01  Obtaining Application File

When a first request for an extension of time to oppose is
received by the Board, the Board pulls the file of the
involved application from issue.  The application file
generally is retained at the offices of the Board until all
Board proceedings relating to the application have ended,
that is, until the opposition period has expired without any
opposition having been filed, or until all Board inter
partes proceedings involving the application have been
finally determined.  Thereafter, the application is either
sent to issue (if no opposition was filed, or if all
oppositions filed were dismissed, and the decision in any
interference or concurrant use proceeding was favorable to
applicant), or stamped "ABANDONED" and sent to the PTO
warehouse for storage (if an opposition was sustained, or if
the decision in an interference or concurrent use proceeding
was unfavorable to applicant).

The file of an application which is the subject matter of an
opposition, an extension of time to oppose, an interference,
or a concurrent use proceeding, is readily available at the
offices of the Board for public inspection and copying.
However, files or portions thereof may not be taken away
from the offices of the Board, and a person who removes
papers from a file for copying at the ofices of the Board
should always return the papers to the file in their proper
order.  See TBMP 121.01.



209.02  Notification of Action on Request

A request for an extension of time to oppose is examined by
a member of the Board's administrative staff.  Ordinarily,
if the request is granted, it is stamped "APPROVED"; marked
with both the date of approval and the date of expiration of
the extension granted; and signed by the administrative
staff member who granted it.  One copy of the approved
extension request is placed in the file of the subject
application, one copy is mailed to the potential opposer,
and one copy is mailed to the applicant.

Sometimes it is necessary for the administrative staff
member to prepare a letter in connection with an extension
that is being granted, as, for example, when the extension
granted is shorter than that sought because a request for a
further extension shows good cause for only part, rather
than all, of the requested extension.  In such a case, one
copy each of the request and letter is placed in the file of
the subject application, one copy of each is mailed to the
applicant, and a copy of the letter is mailed to the
potential opposer.

If a request for an extension of time to oppose is denied, a
letter stating the reason(s) for the denial is prepared by
the administrative staff member.  One copy each of the
request and letter is placed in the file of the subject
application, one copy of each is mailed to the applicant,
and a copy of the letter is mailed to the potential opposer.



209.03  Grant or Denial of Extensions - General Policy

The Board is relatively liberal in granting extensions of
time to oppose.  A liberal policy is necessary in order to
afford potential opposers adequate time to make appropriate
investigations and to decide, on the basis of the
information so gathered, whether or not to oppose.  The
policy also allows potential opposers and applicants a
reasonable opportunity to negotiate for settlement prior to
the filing of an opposition.  Cf. Pickering & Co. v. Bose
Corp., 174 USPQ 172 (Comm'r 1972).

Balanced against these considerations, however, must be
applicant's interest in obtaining a registration quickly;
the need of third parties, who may be using marks similar to
applicant's and/or own conflicting applications, to know as
soon as possible whether or not applicant's application will
be opposed and, if so, on what basis; and the PTO's interest
in minimizing application pendency time.  See In re
Universal Card Group Inc., 25 USPQ2d 1157 (Comm'r 1992).

In view thereof, the time for filing an opposition will not
be suspended, or extended for an inordinate period, pending,
for example, the final determination of another proceeding
between the potential opposer and the applicant; or the
conclusion of unduly prolonged settlement negotiations
between them; or the filing of a new application, and
prosecution thereof to publication or registration, by the
potential opposer or applicant.

When a potential opposer files a request to suspend, or
further extend, its time to oppose, pending the final
determination of another proceeding between potential
opposer and applicant, the request will be granted to the
extent that potential opposer will be given a reasonable
extension of time to oppose.  However, potential opposer
will be advised by the Board, in writing, that it is not the
practice of the Board to suspend, or extend for an
inordinate period, the time for opposing pending the final
determination of another proceeding, and that any further
request for an extension of time to oppose should be based
upon other circumstances.

When a potential opposer files repeated extension requests
based upon applicant's consent coupled with an assertion
that the parties are negotiating for settlement, the Board
ordinarily will require, for extensions aggregating more
than 180 days from the date of publication of applicant's
mark, that the extension request include also a short
summary of the progress of the negotiations.  In such a
case, potential opposer will be advised by the Board, in
writing, that any further extension requests made on the
basis of consent and settlement negotiations should include
a summary of the progress of the negotiations.

As a general rule, the Board will not grant extensions of
time to oppose beyond 360 days from the date of publication,
unless settlement has been reached and only needs to be
executed.  The general rule, however, will be applied
flexibly and reasonably, depending upon the circumstances in
a given case.  For example, if a foreign party is involved,
or if parties are trying to settle several cases at once, or
if numerous parties are involved, more time may be allowed.

After 120 days from the date of publication of applicant's
mark, the Board, as a general rule, will not grant
extensions for more than sixty days at a time for requests
made without the consent of the applicant, or more than
ninety days at a time for requests made with the consent of
the applicant.  Again, however, the general rule will be
applied flexibly and reasonably, depending upon the
circumstances in a particular case.



209.04  Determination of Extension Expiration Date

The extension expiration date stamped on an approved
request, or stated in a letter granting an extension, is the
date upon which the extension actually expires, even if that
date is a Saturday, Sunday, or a Federal holiday within the
District of Columbia.  However, if the expiration date falls
on a Saturday,  Sunday, or a Federal holiday within the
District of Columbia, an opposition, or a request for a
further extension, filed by the potential opposer on the
next succeeding day which is not a Saturday, Sunday, or a
Federal holiday will be considered timely.  See 37 CFR 1.6;
Lotus Development Corp. v. Narada Productions, Inc., 23
USPQ2d 1310 (Comm'r 1991); and TBMP 112.

A first request for an extension of time to oppose sometimes
asks for an extension of "thirty days," but specifies an
extension expiration date which is different from the
expiration date of the requested thirty days.  In this case,
the extension, if granted, will be set to expire on the
thirtieth day, rather than on the specified date, unless the
specified date is beyond thirty days, and good cause has
been shown for the time in excess of thirty days.  Cf. 37
CFR 2.102(c), and TBMP 207.02.

Similarly, a request for a further extension of time to
oppose sometimes asks for a certain number of days, but
specifies an extension expiration date which is different
from the expiration date of the requested number of days.
In this case, the extension, if granted, will normally be
set to expire on the specified date.  However, if part of
the extension would fall beyond 120 days from the date of
publication, and the request does not meet the 37 CFR
2.102(c) requirements for extensions aggregating more than
120 days from publication (i.e., does not include a showing
of extraordinary circumstances; or applicant's written
consent; or a statement that applicant has consented,
accompanied by proof of service on applicant), the
extension, if granted, will be set to expire no later than
120 days from the date of publication.  See Lotus
Development Corp. v. Narada Productions, Inc., 23 USPQ2d
1310 (Comm'r 1991), and In re Societe Des Produits Nestle
S.A., 17 USPQ2d 1093 (Comm'r 1990).  See also 37 CFR
2.102(c), and TBMP 207.03.

A first request for an extension of time to oppose may seek
an extension of more than thirty days, but good cause must
be shown for the time in excess of thirty days.  See 37 CFR
2.102(c); Kimberly-Clark Corp. v. Paper Converting
Industry, Inc., 21 USPQ2d 1875 (Comm'r 1991); and TBMP
207.02.  If an otherwise proper first extension request
seeks an extension of more than thirty days, but does not
include a showing of good cause for the time in excess of
thirty days, potential opposer will be granted an extension
of only thirty days.

A request for a further extension of time to oppose may seek
an extension for a period beginning prior to 120 days from
the date of publication of the subject mark and ending after
the 120th day.  If such a request includes a showing of good
cause, but does not meet the requirements of 37 CFR
2.102(c) for extensions aggregating more than 120 days from
publication (i.e., does not include a showing of
extraordinary circumstances; or applicant's written consent;
or a statement that applicant has consented, accompanied by
proof of service on applicant), any extension granted to
potential opposer will be limited to the time for which good
cause has been shown, and will end on or before the 120th
day after publication.  See 37 CFR 2.102(c); Lotus
Development Corp. v. Narada Productions, Inc., 23 USPQ2d
1310 (Comm'r 1991); In re Societe Des Produits Nestle S.A.,
17 USPQ2d 1093 (Comm'r 1990); and TBMP 207.03.

When an issue of the Official Gazette is mailed late (see
TBMP 202.03), extensions of time to oppose run from the
opposition period expiration date specified in the
Commissioner's Notice of the late mailing, and the 120-day
period of 37 CFR 2.102(c) runs from the Official Gazette
mailing date specified in the Notice.  The Official Gazette
mailing date, and the opposition period expiration date,
specified in the Commissioner's Notice will be used by the
Board as the basis for calculating the expiration date of a
first extension of time to oppose, even if an extension
request specifies an extension expiration date calculated
from the Official Gazette cover date.  Normally, the dates
specified in the Commissioner's Notice will also be used by
the Board in calculating the expiration dates of further
extensions of time to oppose.  However, if a request for a
further extension specifies a different extension expiration
date, and the request meets the requirements of 37 CFR
2.102, the extension will be set to expire on the specified
date.



210  Objections to Request

Inasmuch as a request for an extension of time to oppose is
ex parte in nature, there is no requirement that a copy
thereof be served upon the applicant, unless the request
seeks an extension beyond 120 days from the date of
publication and is based upon an allegation of applicant's
oral consent.  See TBMP 203.04.  For the same reason, an
applicant is not notified of the filing of an extension
request prior to action thereon by the Board.  It is not
until after the Board has acted upon an extension request
that the Board sends the applicant a copy of the request (if
there is no proof of service by potential opposer), together
with notification of the Board's action thereon.

An applicant may learn of the filing of an extension
request, and file objections thereto, before applicant
receives anything from the Board relating to the request.
This may happen, for example, when potential opposer serves
a courtesy copy of the request upon applicant; or when the
request is based upon an allegation of applicant's oral
consent thereto, so that proof of service upon applicant is
a required element of the request.  If the objections are
received by the Board before it acts upon the request, the
Board will consider them in determining the request.  If the
objections are received after action on the request, and the
request has been granted, they will be treated as a request
for reconsideration of the Board's action.

An applicant which receives notification from the Board that
an extension request has been filed and granted may, if it
so desires, submit objections thereto in the form of a
request for reconsideration of the Board's action.  For
information concerning a request for reconsideration of an
action of the Board relating to a request for extension of
time to oppose, see TBMP 211.01.

Further, an applicant which receives notification from the
Board that a request for extension of time to oppose has
been granted may submit objections to the granting of any
further extensions of time to the potential opposer.  In
such a case, the objections will be considered by the Board
in determining any subsequent request, filed by the
potential opposer, for an extension of time to oppose.  If
the objections are not received by the Board until after the
Board has granted a subsequent extension request, they will
be treated as a request for reconsideration of the Board's
action.

Any paper objecting to a request for an extension of time to
oppose, or to the granting of any further extensions of time
to oppose, should state clearly the reasons for objection.
There is no requirement that the paper be served upon the
potential opposer.  If there is no indication that service
has been made, the Board will send potential opposer a copy
of the paper together with the Board's action on the
extension request, or, if the paper is treated by the Board
as a request for reconsideration, with the Board's action on
the request for reconsideration.



211  Relief From Action of Board

211.01  Request for Reconsideration

If an applicant or potential opposer is dissatisfied with an
action of the Board relating to a request for an extension
of time to oppose, it may file a request for reconsideration
of the action, stating the reasons therefor.  The request
should be filed promptly after receipt by the filing party
of the action in question.

A request for reconsideration of a Board action relating to
a request for an extension of time to oppose is examined by
one of the Board's administrative staff members, who will
prepare a letter granting or denying the request.  One copy
of the letter is placed in the file of the subject
application, one copy is mailed to the applicant, and one
copy is mailed to the potential opposer.

There is no requirement that a request for reconsideration
be served upon the nonfiling party.  If there is no
indication that service has been made, the Board will send
the nonfiling party a copy of the request together with that
party's copy of the Board's letter granting or denying the
request.

The filing of a request for reconsideration of the denial,
or the granting, of a request for an extension of time to
oppose does not relieve the potential opposer of the
responsibility of filing an opposition, or a request for a
further extension of time to oppose, prior to the expiration
of the extension which is the subject of the request.  Cf.
37 CFR 2.89(g).



211.02  Petition to the Commissioner

If an applicant or potential opposer is dissatisfied with an
action of the Board relating to a request for an extension
of time to oppose, it may file a petition to the
Commissioner, pursuant to 37 CFR 2.146, for review of the
action in question.  See also TMEP 1702 and 1704.

The petition to the Commissioner must include a statement of
the facts relevant to the petition; the points to be
reviewed; the action or relief requested; and the requisite
fee, as specified in 37 CFR 2.6.  Any brief in support of
the petition must be embodied in or accompany the petition.
If facts are to be proved, the proof must be in the form of
affidavits or declarations in accordance with 37 CFR 2.20,
and these affidavits or declarations, with any exhibits
thereto, must accompany the petition.  See 37 CFR 2.146(c).

A petition from the denial of a request for an extension of
time to oppose must be filed within 15 days from the mailing
date of the denial of the request and must be served on the
attorney or other authorized representative of the
applicant, if any, or on the applicant.  Proof of service of
the petition must be made as provided in 37 CFR 2.119(a)
(see also TBMP 113.03 and 113.04).  Applicant may file a
response within 15 days from the date of service of the
petition.  A copy of the response must be served upon the
petitioner, with proof of service as provided by 37 CFR
2.119(a).  No further paper relating to the petition may be
filed.  See 37 CFR 2.146(e)(1).

Rule 2.146(e)(1), 377 CFR 2.146(e)(1), the provisions of
which are summarized in the preceding paragraph, presently
makes no reference to a petition from the granting of a
request for an extension of time to oppose.  However, the
provisions of the rule may appropriately be followed in the
case of such a petition.

The filing of a petition from the denial, or from the
granting, of a request for an extension of time to oppose
does not relieve the potential opposer of the responsibility
of filing an opposition, or a request for a further
extension of time to oppose, prior to the expiration of the
extension which is the subject of the petition.  That is, if
the Commissioner's decision on the petition is favorable to
the potential opposer, the term of the extension which was
the subject of the petition will run from the expiration of
the previously existing period for filing an opposition, not
from the date of the Commissioner's decision on the
petition.  Cf. 37 CFR 2.89(g) and 2.146(g).  Any
opposition, or request for a further extension of time to
oppose, filed by the involved potential opposer during the
pendency of the petition to the Commissioner will be held by
the Board for appropriate action after determination of the
petition.  In order to avoid the need for filing repeated
requests for further extensions of time to oppose during the
pendency of the petition, the potential opposer may simply
file, prior to the expiration of the extension which is the
subject of the petition, or prior to the expiration of a
subsequent extension, a request for a further extension of
time to oppose until a specified time, such as 30 days,
after the Board's action following determination of the
petition.

If a petition from the granting of a request for an
extension of time to oppose is granted, any opposition or
request for further extension of time to oppose filed during
or after the extension period in question will be rejected
by the Board as untimely.



212  Amendment of Application During or After Extension

212.01  Jurisdiction to Consider Amendment

If a request for an extension of time to oppose is filed,
the Board obtains the file of the application and generally
retains physical possession thereof until all Board
proceedings relating to the application have ended, that is,
until the opposition period has expired without any
opposition having been filed, or until all Board inter
partes proceedings involving the application have been
finally determined.  However, the Board has no jurisdiction
over the application unless and until the application
becomes involved in a Board inter partes proceeding.  In the
absence of an inter partes proceeding, the Board has
jurisdiction only over matters relating to the requested
extension(s) of time to oppose.

During the time between the publication of a mark in the
Official Gazette for opposition, and the printing of a
certificate of registration (in an application under Section
1(a) or 44 of the Act, 15 U.S.C. 1051(a) or 1126) or notice
of allowance (in an application under Section 1(b) of the
Act, 15 U.S.C. 1051(b)), the Examining Attorney may approve
an amendment to the application under certain conditions,
provided that the application is not involved in an inter
partes proceeding before the Board.  See 37 CFR 2.84; In re
MCI Communications Corp., 21 USPQ2d 1534 (Comm'r 1991); and
TMEP 1504.01, 1504.03, and 1505 et seq.

Thus, if, in an application which is the subject of a
request for an extension of time to oppose, an amendment or
other paper (such as, a request for republication, a request
for reconsideration of a refusal to approve an amendment,
etc.) relating to the application is filed by the applicant,
and the application is not involved in any Board inter
partes proceeding, it is the Examining Attorney who must
determine the propriety of the amendment or other paper.
See 37 CFR 2.84, and In re MCI Communications Corp., 21
USPQ2d 1534 (Comm'r 1991).

However, the Board does determine the propriety of a request
filed by an attorney or other authorized representative to
withdraw as applicant's representative, in an application
which is the subject of a request for an extension of time
to oppose.  The Board has jurisdiction to consider the
request to withdraw as representative in such a case,
because applicant's representative of record acts in
applicant's behalf in matters relating to the requested
extension(s) of time to oppose.



212.02  Conditions for Examining Attorney Approval of
Amendment

During the time between the publication of a mark in the
Official Gazette for opposition, and the printing of a
certificate of registration (in an application under Section
1(a) or 44 of the Act, 15 U.S.C. 1051(a) or 1126) or notice
of allowance (in an application under Section 1(b) of the
Act, 15 U.S.C. 1051(b)), an application not involved in an
inter partes proceeding before the Board may be amended upon
request by the applicant, provided that the amendment does
not necessitate issuance of a refusal or requirement by the
Examining Attorney.  If a refusal or requirement by the
Examining Attorney would be needed, the amendment cannot be
made unless applicant (1) successfully petitions the
Commissioner to restore jurisdiction over the application to
the Examining Attorney for consideration of the amendment
and further examination, and (2) is able to satisfy any
requirement or overcome any refusal asserted in any Office
action issued after the restoration of jurisdiction.  See 37
CFR 2.84(b) and TMEP 1504.01 and 1505 et seq.

Examples of the types of amendments which may be made under
the conditions described above include acceptable amendments
to the identification of goods, to the drawing, to add a
disclaimer, and (in the case of an application under Section
1(a) of the Act, 15 U.S.C. 1051(a), or an application under
Section 1(b) of the Act, 15 U.S.C. 1051(b) in which an
acceptable amendment to allege use has been filed) to
convert an application for an unrestricted registration to
one for concurrent registration.

An applicant which files an amendment to its application
during an extension of time to oppose need not have
potential opposer's consent thereto.



212.03  Form of Amendment

An amendment or other paper relating to an application which
is the subject of a request for an extension of time to
oppose should be in the normal form for an amendment or
other paper relating to an application, except that it
should be directed to the attention of the Trademark Trial
and Appeal Board (i.e., BOX TTAB NO FEE, Assistant
Commissioner for Trademarks, 2900 Crystal Drive, Arlington,
Virginia 22202-3513), because the application file will be
in the physical possession of the Board.



212.04  Action by Board--Upon Receipt of Amendment

When an amendment relating to an application which is the
subject of a request for an extension of time to oppose is
filed in the PTO, it is forwarded within the PTO to the
physical location of the application.  Normally, the file of
such an application will be located at the offices of the
Board.  After the amendment has been placed in the
application file, a Board administrative staff member will
prepare a letter acknowledging receipt of the amendment,
forwarding the application file to the Examining Attorney
for consideration of the amendment, and explaining the
effect the filing of the amendment has on the extension of
time to oppose.  See, for example, In re MCI Communications
Corp., 21 USPQ2d 1534 (Comm'r 1991).

For example, if an extension of time to oppose is running
when the letter is prepared, the letter will acknowledge
receipt of the amendment; note that the amendment requires
consideration by the Examining Attorney; state that
potential opposer has been granted an extension of time to
oppose until a specified date; suspend the running of
potential opposer's extension of time to oppose; forward the
application to the Examining Attorney for consideration of
the amendment; instruct the Examining Attorney to act on the
amendment (either by approving it for entry or by
telephoning the applicant, explaining why the amendment
cannot be approved, and placing a record of the telephone
call in the file), and then return the application to the
Board; and indicate that after the application has been
returned to the Board, proceedings with respect to the
potential opposition will be resumed, and further
appropriate action will be taken.  See In re MCI
Communications Corp., 21 USPQ2d 1534 (Comm'r 1991).  If the
amendment is filed during an extension of time to oppose,
and the Board's letter will not be ready for mailing prior
to the date set for the expiration of the extension, the
letter will include a statement that the filing of the
amendment prior to the date set for the expiration of the
extension served to suspend the running of the extension.

The reason for the suspension of the running of the
extension period, in the example above, is that the
potential opposer is entitled to know, before it files an
opposition, whether or not the amendment has been approved.
However, the suspension is solely for the benefit of the
potential opposer, that is, to preserve potential opposer's
time for opposing until potential opposer has been notified
of the disposition of the amendment and has had adequate
time thereafter to file an opposition.  If, notwithstanding
the Board's letter suspending the running of the extension,
an opposition is filed prior to the expiration of the
extension as originally set, the opposition will not be
rejected by the Board as having been filed during the
suspension; rather, potential opposer will be deemed to have
waived the suspension of the running of its extension, and
the opposition will be deemed timely.  If the amendment is
approved, and opposer does not wish to oppose the
application as amended, opposer may request that the
opposition not be instituted (or, if already instituted,
that the institution be vacated), and that the opposition
fee be refunded.

If an amendment is filed after the expiration of potential
opposer's extension of time to oppose, and no opposition or
request for a further extension of time to oppose has been
timely filed, the Board's letter will acknowledge receipt of
the amendment; note that the amendment requires
consideration by the Examining Attorney; indicate that
potential opposer's extension of time to oppose has expired,
and that no opposition or request for a further extension of
time to oppose has been timely filed; forward the
application to the Examining Attorney for consideration of
the amendment; and state that the Examining Attorney may
treat the amendment in the same manner as any amendment
after publication (TMEP 1504.01 and 1505 et seq.), and
need not return the application to the Board after
consideration of the amendment.

If an amendment is filed prior to action by the Board on a
request for an extension of time to oppose, and the request
is appropriate for granting, the letter will acknowledge
receipt of the request and the amendment; note that the
amendment requires consideration by the Examining Attorney;
grant the request; suspend the running of the extension
period; forward the application to the Examining Attorney
for consideration of the amendment; instruct the Examining
Attorney to act on the amendment (either by approving it for
entry or by telephoning the applicant, explaining why the
amendment cannot be approved, and placing a record of the
telephone call in the file), and then return the application
to the Board; and indicate that after the application has
been returned to the Board, proceedings with respect to the
potential opposition will be resumed, and further
appropriate action will be taken.

If an amendment is filed prior to action by the Board on a
request for an extension of time to oppose, and the request
is not appropriate for granting, the letter will acknowledge
receipt of the request and the amendment; note that the
amendment requires consideration by the Examining Attorney;
deny the request; forward the application to the Examining
Attorney for consideration of the amendment; and state that
the Examining Attorney may treat the amendment in the same
manner as any amendment after publication (TMEP 1504.01
and 1505 et seq.), and need not return the application to
the Board after consideration of the amendment.

If an amendment is filed after a request for an extension of
time to oppose has been denied by the Board, but before the
Board has forwarded the application to issue, the letter
will acknowledge receipt of the amendment; note that the
amendment requires consideration by the Examining Attorney;
indicate that potential opposer's request for an extension
of time to oppose has been denied; forward the application
to the Examining Attorney for consideration of the
amendment; and state that the Examining Attorney may treat
the amendment in the same manner as any amendment after
publication (TMEP 1504.01 and 1505 et seq.), and need not
return the application to the Board after consideration of
the amendment.

When the Board's letter is ready for mailing, one copy is
placed in the file of the subject application, one copy is
mailed to the applicant, and one copy each of the amendment
and letter is mailed to the potential opposer.  The
application is then forwarded to the Examining Attorney for
consideration of the amendment.



212.05  Action by Board--After Consideration of Amendment

When an amendment in an application which is the subject of
an extension of time to oppose is forwarded to the Examining
Attorney for consideration, the Examining Attorney acts on
the amendment, either by approving it for entry or by
telephoning the applicant, explaining why the amendment
cannot be approved, and placing a record of the telephone
call in the file.  See In re MCI Communications Corp., 21
USPQ2d 1534 (Comm'r 1991).  The Examining Attorney then
returns the application to the Board (unless the time for
opposing expired prior to the filing of the amendment).

After the application has been returned to the Board, a
Board administrative staff member will prepare a letter
indicating whether or not the amendment was approved,
resuming proceedings with respect to the potential
opposition, and taking further appropriate action relating
thereto.

For example, sometimes a potential opposer, in a request for
an extension of time to oppose or in a separate paper,
states that it has agreed not to oppose if applicant's
application is amended in a certain manner.  If the
amendment submitted by applicant conforms to the agreement,
and is approved by the Examining Attorney, the Board's
resumption letter will indicate that the amendment has been
approved; that potential opposer has agreed not to oppose if
the amendment is approved; and that the application is
accordingly being forwarded to issue.  If the amendment was
not approved, the letter will so state, and the Board will
reset potential opposer's time to oppose (potential opposer
is usually allowed thirty days for the purpose; the
suspension period is deemed to have commenced with the
filing of the amendment; and the running of the 120-day
period of 37 CFR 2.102(c) is considered to have been tolled
for the length of the suspension, if the suspension began
during the 120-day period).

If there is no statement by potential opposer that it will
not oppose if the amendment submitted by applicant is
approved, the Board's resumption letter will state whether
the amendment was approved, and the Board will reset
potential opposer's time to oppose (in the manner indicated
in the preceding paragraph).

Sometimes an Examining Attorney considering an amendment to
an application which is the subject of an extension of time
to oppose, does not approve the amendment submitted by the
applicant, but instead makes a different amendment by
Examiner's Amendment (see TMEP 1111).  In such a case, the
Board, in its  resumption letter, will so state; specify the
amendment made by Examiner's Amendment; resume proceedings
with respect to the potential opposition; and take further
apropriate action relating thereto.

When the Board's resumption letter is ready for mailing, one
copy is placed in the file of the subject application, one
copy is mailed to the applicant, and one copy is mailed to
the potential opposer.



212.06  Amendment During Opposition

If an amendment is filed in an application which is the
subject of an opposition, the Board has jurisdiction over
the application and will determine the propriety of the
amendment.  Once an opposition has commenced, the
application which is the subject of the opposition may not
be amended in substance, except with the consent of the
other party or parties and the approval of the Board, or
except upon motion granted by the Board.  See 37 CFR 2.133,
and TBMP 514.



213  Effect of Restoration of Jurisdiction

If the Examining Attorney wishes to refuse registration or
make a requirement in an application which is the subject of
a request for an extension of time to oppose, the Examining
Attorney must request the Commissioner to restore
jurisdiction over the application to the Examining Attorney
for that purpose.  See 37 CFR 2.84(a) and TMEP 1504.01
and 1504.02.  If the application is also the subject of an
opposition, the Examining Attorney's request for
jurisdiction must be directed to the Board.  See 37 CFR
2.130 and TMEP 1504.02.

When a request for jurisdiction is granted in an application
for which there is an unexpired extension of time to oppose,
the application is no longer subject to the filing of a new
opposition, and the restoration of jurisdiction serves to
stay the running of the extension period.  After the Board
learns of the restoration of jurisdiction, a Board
administrative staff member will prepare a letter advising
potential opposer and applicant thereof and taking further
appropriate action.  Examples of three such letters are
described below.

If the restoration of jurisdiction occurred during the
running of an extension of time to oppose, and the Board's
letter will be ready for mailing prior to the date set for
the expiration of the extension, the letter will inform
potential opposer and applicant that jurisdiction over the
application has been restored to the Examining Attorney;
that the application is no longer subject to the filing of a
new opposition; that the running of the extension is
suspended pending determination by the Examining Attorney of
the registrability of the mark; and that if the application
is subsequently approved by the Examining Attorney, and the
mark is not republished, potential opposer's time for filing
an opposition will be reset.

One copy of the Board's letter will be placed in the file of
the subject application, one copy will be mailed to the
applicant, and one copy each of the letter and of the
Examining Attorney's Office action will be mailed to the
potential opposer.  Before the application is sent to the
Examining Attorney, the administrative staff member will
attach to the front of the file a note reading:  "EXAMINER
NOTE:  IF THIS APPLICATION IS ULTIMATELY APPROVED,
APPLICATION FILE MUST BE RETURNED TO TTAB FOR ACTION WITH
RESPECT TO EXTENSION OF TIME TO OPPOSE."  If the Examining
Attorney does subsequently approve the application, and the
mark is not republished, the Board administrative staff
member will prepare a letter so advising potential opposer
and applicant, and resetting potential opposer's time to
oppose (potential opposer is usually allowed thirty days for
the purpose; the suspension period is deemed to have
commenced with the restoration of jurisdiction; and the
running of the 120-day period of 37 CFR 2.102(c) is
considered to have been tolled for the length of the
suspension, if the suspension began during the 120-day
period).  If the mark is republished, potential opposer's
time for opposing will recommence on the date of
republication.

If the restoration of jurisdiction occurred during the
running of an extension of time to oppose, and the Board's
letter notifying potential opposer and applicant of the
restoration of jurisdiction will not be ready for mailing
prior to the date set for the expiration of the extension,
the letter will include a statement that the restoration of
jurisdiction prior to the date set for the expiration of the
extension served to suspend the running of the extension.

If the restoration of jurisdiction occurred prior to the
expiration of the extension sought in a well-taken request
for an extension of time to oppose, and the extension
request has not yet been determined when the Board's letter
is being prepared, the Board, in its letter, will inform
potential opposer and applicant that jurisdiction over the
application has been restored to the Examining Attorney;
state that the application is no longer subject to the
filing of a new opposition; grant the extension request;
suspend the running of the extension pending determination
by the Examining Attorney of the registrability of the mark;
and indicate that if the application is subsequently
approved by the Examining Attorney, and the mark is not
republished, potential opposer's time for filing an
opposition will be reset.



214  Effect of Republication

The Examining Attorney may determine that the mark in an
application which is the subject of a request for an
extension of time to oppose must be republished.  This may
happen, for example, when the mark was originally published
in the wrong class; when the goods or services, although
properly identified in the application itself, were
published incorrectly; when a disclaimer was mistakenly
included, or not included, in the original publication; or
when the application has been amended after publication (but
before the filing of an opposition), and the amendment is of
such nature as to require republication (see TMEP 1505.01).

If a mark is republished by order of the Examining Attorney,
any opposition filed during the original thirty-day
opposition period, or within a granted extension thereof, is
considered by the Board to be timely.  If the change
reflected in the republication is one which might have an
effect upon the opposition, the Board will notify opposer
and applicant, in writing, of the republication, and of the
reason therefor; explain that the opposition will be
determined on the basis of applicant's correct (or amended)
mark, goods or services, disclaimer status, etc.; and allow
opposer time to indicate whether it wishes to proceed with
the opposition on that basis, or to have its opposition fee
refunded, and the opposition not instituted.

However, once the Board learns that a mark which is the
subject of a request for an extension of time to oppose has
been or will be republished by order of the Examining
Attorney, no further extension of the original opposition
period will be granted; rather, a potential opposer's time
for opposing will recommence with the republication of
applicant's mark.  Thus, if there is a pending request for
an extension of time to oppose, a Board administrative staff
member will prepare a letter notifying potential opposer and
applicant of the republication and taking appropriate action
with respect to the extension request.  Normally, the
extension request will be deemed moot.  However, if the
extension request was filed within thirty days after the
date of republication, it may be treated as a request for an
extension of the new opposition period.

If there has been an error in the first publication, or the
application has been amended thereafter, republication is
often necessary in order to give potential opposers fair
notice of the registration sought by applicant.  Sometimes,
however, a mark which has been published correctly, and has
not been amended thereafter, is republished not because
there is any need for republication, but by inadvertence.
When there is no need for republication, and a mark is
republished solely by mistake (as, for example, when an
application has survived an opposition, and is ready to go
to issue, but is inadvertently sent to publication rather
than to issue), the application may not properly be
subjected to another opposition period.

Accordingly, when it comes to the attention of the Board
that an application has been republished by mistake, the
Board will not entertain any opposition or request for an
extension of time to oppose filed in response to the
republication.  An opposition filed in response to the
inadvertent republication will be returned to the opposer,
and the opposition fee will be refunded.  The remedy of a
would-be opposer or potential opposer in such a case lies in
the filing of a petition for cancellation, under Section 14
of the Act, 15 U.S.C. 1064, after applicant's registration
has been issued.



215  Effect of Letter of Protest

A third party which has knowledge of facts bearing upon the
registrability of a mark in a pending application may bring
such information to the attention of the PTO by filing, with
the Director of the Trademark Examining Groups, a "letter of
protest," that is, a letter which recites the facts and
which is accompanied by supporting evidence.  See TMEP
1116; In re BPJ Enterprises Ltd., 7 USPQ2d 1375 (Comm'r
1988); and In re Pohn, 3 USPQ2d 1700 (Comm'r 1987).  The
Director will determine whether the letter of protest should
be "granted," that is, whether the information should be
given to the Examining Attorney for consideration.  See TMEP
1116.  For information concerning the standard applied by
the Director in determining whether a letter of protest
should be granted, see "Changes in Practice Concerning
Letters of Protest," 1172 TMOG 93 (March 28, 1995).

A letter of protest may be filed either before or after
publication of the subject mark for opposition.  However, a
letter of protest filed after publication ordinarily must be
filed within thirty days after publication in order to be
considered timely.  See In re BPJ Enterprises Ltd., 7 USPQ2d
1375 (Comm'r 1988); In re Pohn, 3 USPQ2d 1700 (Comm'r 1987);
and TMEP 1116.02(a).  Moreover, even if the Director
decides to grant a post-publication letter of protest, the
submitted information cannot be considered by the Examining
Attorney unless the Commissioner, upon written request by
the Director, concurs in the decision to grant the letter of
protest and restores jurisdiction over the application to
the Examining Attorney.  See TMEP 1116.02.  If the
application is the subject of an opposition, the request for
jurisdiction should be directed to the Board.  See 37 CFR
2.130 and TMEP 1504.02.

The filing of a letter of protest after publication does not
serve to stay the time for filing an opposition to the
subject mark.  See TMEP 1116.  If a party which files a
letter of protest after publication wishes to preserve its
right to oppose in the event that the letter of protest is
denied, it must file a timely request for an extension of
time to oppose.  Cf. In re BPJ Enterprises Ltd., 7 USPQ2d
1375 (Comm'r 1988).

If a potential opposer indicates, in a first or a subsequent
request for an extension of time to oppose, that potential
opposer filed a letter of protest (not yet determined by the
Director) with respect to the subject mark within thirty
days after publication, the Board will grant the extension
request, if otherwise appropriate, and then suspend the
running of the extension pending determination of the letter
of protest.

The Board will not suspend the running of an extension of
time to oppose pending the determination of a letter of
protest if the letter of protest was filed by a third party,
or was filed more than thirty days after publication of the
subject mark, or if the filing of the letter of protest is
not brought to the attention of the Board.

If a potential opposer indicates, in a first or a subsequent
request for an extension of time to oppose, that potential
opposer filed a letter of protest (not yet determined by the
Director) with respect to the subject mark more than thirty
days after publication, the Board will consider such filing
to be good cause for extensions of time to oppose
aggregating up to 120 days from the date of publication of
the mark, but will not consider the filing to constitute
extraordinary circumstances justifying an extension of time
beyond 120 days from publication.  The filing by a third
party of a letter of protest (not yet determined by the
Director), with respect to a mark which is the subject of a
request for an extension of time to oppose, will not be
considered by the Board to constitute good cause for the
granting of an extension to the potential opposer.

Following determination of a letter of protest filed with
respect to an application which is the subject of a request
for an extension of time to oppose, the Board will take
further appropriate action.  Two examples are described
below.

Often, when the application comes to the Board for further
appropriate action, the letter of protest has been granted;
jurisdiction over the application has been restored to the
Examining Attorney; the Examining Attorney has issued an
Office action asserting a refusal or a requirement; and an
extension of time to oppose is running, or the running of
the extension has been suspended pending determination of
the letter of protest.  In such a case, a Board
administrative staff member will prepare a letter notifying
potential opposer and applicant that the letter of protest
has been granted; that jurisdiction over the application has
been restored to the Examining Attorney; that an Office
action has been issued; that the application is no longer
subject to the filing of a new opposition; that the running
of the extension is suspended pending determination by the
Examining Attorney of the registrability of applicant's
mark; and that if the application is subsequently approved
by the Examining Attorney, and the mark is not republished,
potential opposer's time for filing an opposition will be
reset.  One copy of the Board's letter will be placed in the
file of the subject application, one copy will be mailed to
the applicant, and one copy each of the letter and of the
Examining Attorney's Office action will be mailed to the
potential opposer.  If the Examining Attorney does
subsequently approve the application, and the mark is not
republished, a Board administrative staff member will
prepare a letter so advising potential opposer and
applicant, and resetting potential opposer's time to oppose
(potential opposer is usually allowed thirty days for the
purpose; and the running of the 120-day period of 37 CFR
2.102(c) is considered to have been tolled for the length
of the suspension, if the suspension began during the 120-
day period).

If the running of the extension of time to oppose has been
suspended pending the determination of a letter of protest,
and the letter of protest is denied, the Board's letter will
so advise potential opposer and applicant, and will reset
potential opposer's time to oppose (again, potential opposer
is usually allowed thirty days for the purpose; and the
running of the 120-day period of 37 CFR 2.102(c) is
considered to have been tolled for the length of the
suspension, if the suspension began during the 120-day
period).



216  Inadvertently Issued Registration

Sometimes a registration is issued, mistakenly, from an
application which, at the time of such issuance, is the
subject of an unexpired extension of time to oppose, or a
timely opposition.  Such a registration is called an
"inadvertently issued" registration.

The Board is without authority, within the context of either
an extension of time to oppose, or an opposition proceeding,
to cancel an inadvertently issued registration and restore
it to application status.  Rather, it is the Commissioner
who has such authority, and the Commissioner exercises this
authority with caution.  See In re Trademark Registration of
Mc Lachlan Touch Inc., 6 USPQ2d 1395 (Comm'r 1987).

Accordingly, when it comes to the attention of the Board
that a registration has issued inadvertently from an
application which is the subject of an unexpired extension
of time to oppose, or a timely opposition, the Board will
forward the registration file to the Commissioner for such
action as the Commissioner deems appropriate.  The
Commissioner, in turn, may either cancel the registration as
inadvertently issued, and restore it to application status,
or decline to do so.
If the Commissioner cancels, and restores to application
status, a registration which issued inadvertently during an
extension of time to oppose, the Board will reset potential
opposer's time to oppose.  In such cases, the running of
potential opposer's extension of time to oppose is deemed to
have been suspended by the inadvertent issuance of the
registration, because a potential opposer cannot file an
opposition to an issued registration.  When potential
opposer's time to oppose is reset, potential opposer
normally will be allowed thirty days for the purpose; and
the running of the 120-day period of 37 CFR 2.102(c) is
considered to have been tolled for the length of the
suspension, if the suspension began during the 120-day
period.  See In re Siemens Aktiengesellschaft, 34 USPQ2d
1862 (Comm'r 1995).  Potential opposer and applicant will be
informed of the inadvertent issuance of the registration;
its cancellation by the Commissioner; and the resetting of
potential opposer's time to oppose, in a letter prepared by
a Board administrative staff member.

If a registration issued inadvertently during an extension
of time to oppose is not cancelled by the Commissioner, and
restored to application status, any opposition which may
have been filed by the potential opposer will be returned;
any submitted opposition fee will be refunded; and potential
opposer may have remedy by way of a petition to cancel the
registration.

If a registration issues inadvertently during a timely
opposition, the Commissioner normally will cancel the
registration as inadvertently issued, and restore it to
application status.  However, if the opposition has already
been finally determined in applicant's favor when the
inadvertent issuance is discovered, applicant may either
keep the registration, or request that it be cancelled as
inadvertently issued, restored to application status, and
then reissued.




217  Relinquishment of Extension

If a potential opposer whose request for an extension of
time to oppose is pending, or whose granted extension has
not yet expired, files a letter notifying the Board that it
will not oppose, the Board will immediately forward the
application which was the subject of the request, or
extension, to issue.

If a potential opposer which has requested or obtained an
extension of time to oppose thereafter agrees
unconditionally, in writing, not to oppose, applicant may
submit a copy of the agreement to the Board, with an
appropriate cover letter bearing proof of service upon
potential opposer, and the Board will immediately forward
the subject application to issue.  Cf. TBMP 211.05.



218  Abandonment of Application

If an applicant files an express abandonment of an
application which is the subject of a pending request for an
extension of time to oppose, or of a granted extension, the
application stands abandoned and any pending request for an
extension of time to oppose is moot.  An application which
has been abandoned is no longer subject to the filing of a
new opposition.  Any opposition filed on or after the filing
date of the abandonment will be returned by the Board to the
opposer, and the opposition fee will be refunded.  See
Societe des Produits Nestle S.A. v. Basso Fedele & Figli, 24
USPQ2d 1079 (TTAB 1992), and In re First National Bank of
Boston, 199 USPQ 296 (TTAB 1978).  Cf. TBMP 307.11 and
602.01.

The express abandonment of an application which is not the
subject of an inter partes proceeding before the Board
(e.g., an opposition, interference, or concurrent use
proceeding) is without prejudice to the applicant; it is not
necessary that applicant obtain a potential opposer's
consent thereto.  See 37 CFR 2.68.

In contrast, after the commencement of an opposition,
interference, or concurrent use proceeding, if applicant
files an express abandonment of its application or mark
without the written consent of every adverse party to the
proceeding, judgment will be entered against the applicant.
See 37 CFR 2.135.  However, if an applicant files an
abandonment after the commencement of an opposition,
interference, or concurrent use proceeding, but before
applicant has been notified thereof by the Board, applicant
will be given an opportunity to obtain the written consent
of every adverse party, or to withdraw the abandonment and
litigate the proceeding, failing which judgement shall be
entered against applicant.  See In re First National Bank of
Boston, 199 USPQ 296 (TTAB 1978).  Cf. TBMP 307.11 and
602.01.

An applicant which wishes to expressly abandon its
application may do so by filing in the PTO a written
statement of abandonment or withdrawal of the application,
signed by the applicant or by the applicant's attorney or
other authorized representative.  See 37 CFR 2.68.

When an applicant files an express abandonment of an
application which is the subject of a pending request for an
extension of time to oppose, or of a granted extension, a
Board administrative staff member will prepare a letter
acknowledging receipt of the abandonment, and notifying
potential opposer that the application is no longer subject
to the filing of a new opposition.



219  Amendment to Allege Use; Statement of Use

An amendment to allege use under Section 1(c) of the Act, 15
U.S.C. 1051(c), filed in an intent-to-use application
(i.e., an application under Section 1(b) of the Act, 15
U.S.C. 1051(b)) after approval for publication is late-
filed.  See 37 CFR 2.76(a); "Waiver of Trademark Rule
2.76(a)," 1156 TMOG 12 (November 2, 1993); and In re Sovran
Financial Corp., 25 USPQ2d 1537 (Comm'r 1992).  Thus, an
amendment to allege use filed during an extension of time to
oppose, or during an opposition, is late-filed.

A statement of use under Section 1(d) of the Act, 15 U.S.C.
1051(d), is premature if it is filed in an intent-to-use
application prior to the issuance of a notice of allowance
under Section 13(b)(2) of the Act, 15 U.S.C. 1063(b)(2).
See Section 1(d)(1) of the Act, 15 U.S.C. 1051(d)(1), and
37 CFR 2.88(a).  A notice of allowance is issued in an
intent-to-use application (for which no amendment to allege
use has been timely filed and accepted) only after the time
for opposing has expired, and all oppositions filed have
been dismissed.  See Section 13(b)(2) of the Act, 15 U.S.C.
1063(b)(2), and 37 CFR 2.81(b).  Thus, a statement of use
filed during an extension of time to oppose, or during an
opposition, is premature.

Any late-filed amendment to allege use, or premature
statement of use, will be returned to the applicant, and any
fee submitted therewith will be refunded.  See 37 CFR
2.76(a) and 2.88(a).

If an intent-to-use application has already been published,
and is the subject of an extension of time to oppose, when a
timely filed amendment to allege use (i.e., an amendment to
allege use filed prior to approval for publication) is
associated with the application, the Board will suspend the
running of any granted extension and return the application
to the Trademark Examining Attorney for appropriate action
with respect to the amendment to allege use.  The Examining
Attorney, in turn, will process the amendment to allege use
in the same manner (described in TMEP 1105.05(a)(i)(A)) as
any other timely filed amendment to allege use which is not
associated with the application file until after
publication.   In the event that the amendment to allege use
is ultimately withdrawn by the applicant, or approved by the
Examining Attorney, the application should be returned by
the Examining Attorney to the Board (prior to any scheduled
republication of applicant's mark) for further appropriate
action with respect to the extension of time to oppose.  See
TMEP 1105.05(a)(i)(A).  If the application is abandoned
while it is before the Examining Attorney, the Board should
be notified.

If an intent-to-use application has already been published,
and is the subject of an opposition, when a timely filed
amendment to allege use (i.e., an amendment to allege use
filed prior to approval for publication) is associated with
the application, the Board normally will suspend the
opposition and return the application to the Trademark
Examining Attorney for appropriate action (as described in
TMEP 1105.05(a)(i)(A)) with respect to the amendment to
allege use.  In the event that the amendment to allege use
is ultimately withdrawn by the applicant, or approved by the
Examining Attorney, the application should be returned by
the Examining Attorney to the Board (prior to any scheduled
republication of applicant's mark) for further appropriate
action with respect to the opposition.  See TMEP
51105.05(a)(i)(A).  If the application is abandoned while it
is before the Examining Attorney, the Board should be
notified.

Sometimes a notice of allowance is issued, mistakenly, in an
intent-to-use application which, at the time of such
issuance, is the subject of an unexpired extension of time
to oppose, or a timely opposition.  If a notice of allowance
is inadvertently issued in an intent-to-use application
which is the subject of an unexpired extension of time to
oppose, or a timely opposition, and a statement of use is
filed, the notice of allowance will be cancelled (by the
Intent To Use Division of the Office of Trademark Services)
as inadvertently issued, the statement of use will be
returned, and the fee submitted therewith will be refunded.
If the inadvertently issued notice of allowance has already
been cancelled when the Board receives the statement of use,
the Board itself will return the statement of use and refund
the fee submitted therewith.  If the inadvertently issued
notice of allowance has not already been cancelled when the
Board receives the statement of use, the Intent To Use
Division will return the statement of use, and refund the
fee, when it cancels the notice of allowance.
