The following HELP material has been pubished by the USPTO/TTAB at http://estta.uspto.gov/help.html#checklist.


ESTTA HELP


Representation Before the Board


The following persons are recognized to practice before the Office in trademark matters:

  1. The party, if the party is an individual;
  2. An officer, partner, member, or sole proprietor of a business;
  3. An attorney at law admitted to practice in one of the United States;
  4. Foreign attorneys or agents qualified to practice before the USPTO pursuant to 37 CFR § 11.14, but only if the attorney or agent's client is located in that country. Currently, only Canadian attorneys or agents are qualified to practice under this provision.

While non-attorneys may appear as noted above, Board proceedings are legal proceedings, and often involve complex questions of trademark law and procedure. Many parties find the advice of qualified counsel essential. Board personnel are not permitted to provide legal advice to any party, and will not give any special consideration to parties who elect not to retain qualified counsel. USPTO personnel cannot assist in choosing an attorney.


For further information regarding representation before the TTAB, see 37 CFR § 11.14; TBMP §§ 114-116.


Correspondence Information


Current and correct correspondence information is necessary at all times. Please assure that the street address AND the email address are BOTH correct. The Board will send confirmation of filings submitted via ESTTA, and its orders (where the party has provided an email address), via email. Unless otherwise noted, if the Board sends an order to a party via e-mail, it will not send a hard copy.


A filer may use a form on ESTTA to change its correspondence address. Select the following: File Documents in a Board Proceeding > Change of Address.


For further information regarding correspondence in Board matters, see TBMP § 117, et seq.


Trademark Trial and Appeal Board (TTAB)


The Trademark Trial and Appeal Board is an administrative tribunal with jurisdiction to consider only whether a particular party is entitled to obtain or keep a federal trademark registration within the context of an opposition, cancellation, or concurrent use proceeding. The TTAB hears two types of proceedings: 1) trials in inter partes matters (oppositions, cancellations, and concurrent use proceedings), and 2) ex parte appeals from an examining attorney's refusal to register a mark. Inter partes proceedings involve a dispute between two (or more) parties in the positions of plaintiff and defendant, while appeals involve only an applicant and the USPTO.


The Board cannot consider questions of infringement or unfair competition, and may not grant injunctions, award damages, or attorney fees. Any such matters must be brought before a court of competent jurisdiction.


For more information about the TTAB and its jurisdiction, see Trademark Act §§ 17, 20; TBMP § 102, et seq. The TTAB's home page at http://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-board-ttab features valuable links and information.


Trademark Trial and Appeal Board Manual of Procedure (TBMP)


The TBMP contains substantive excerpts from and explanations of many of the statutes, rules, cases and procedures relevant to practice before the Board and Board proceedings. However, the TBMP is not an exhaustive reference. Moreover, statutes, rules and cases are amended or changed from time to time, and the amendments or changes might not appear between revisions of the TBMP.


The TBMP is accessible on the USPTO web site at http://tbmp.uspto.gov/RDMS/detail/manual/TBMP/current/tbmpd1e2.xml. The TBMP is updated annually.


Publication


Prior to registration on the Principal Register, all marks are published in the Official Gazette of the United States Patent and Trademark Office. The Official Gazette is published weekly and provides notice to all potential opposers. If an opposition or extension of time to oppose is not filed within thirty days following the publication date, a mark will proceed to registration or issuance of a notice of allowance, as appropriate.


Marks to be registered on the Supplemental Register are not published prior to registration, and are therefore not subject to opposition. If any party believes it is damaged by the existence of a mark on the Supplemental Register, it may file a petition for cancellation.


The Official Gazette is published electronically at http://www.uspto.gov/learning-and-resources/official-gazette/trademark-official-gazette-tmog.


For further information on publication for opposition, see Trademark Act § 12; Trademark Rule 2.80-2.84; TMEP (Trademark Manual of Examining Procedure) § 1502.


Petitions to the Director


DO NOT USE ESTTA to file Petitions to the Director. Petitions to the Director should be filed using the Trademark Online Filing System (TEAS) accessible at http://www.uspto.gov/trademarks-application-process/filing-online/petition-forms. For further information see TMEP Chapter 1700.


Form: Request for Extension of Time to Oppose


A person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file a notice of opposition within thirty days of the date the mark is published in the Official Gazette. Such person may request an extension of time in which to oppose. A request for extension of time must be filed prior to the expiration of the opposition period or prior to the expiration of any previously granted extension.


Extensions may be requested as follows:


  1. A person may file a first request for either a thirty-day extension of time, which will be granted upon request, or a ninety-day extension of time, which will granted only for good cause shown.
  2. A person who was granted a thirty-day extension of time, may file a request for an additional sixty-day extension of time, which will be granted only for good cause shown.
  3. After receiving one or two extensions of time totaling ninety days, a person may file one final request for an extension of time for an additional sixty days. The Board will grant this request only upon consent of the applicant or upon a showing of extraordinary circumstances.

No further extensions of time to file an opposition will be granted under any circumstances. In addition, the Board will not suspend the time for filing a notice of opposition. ESTTA will only present extension options which are currently available to the potential opposer.


Extension requests are granted only for the periods as described in 1-3 above. No partial periods (e.g., 15 days) are available. For example, a first request for an extension of 15 days will not be granted. Instead, the granted extension will be for the full first period of 30 days.


Requests for an extension of time to oppose may be filed through ESTTA. However, all requests for extension of time to oppose an application filed under Trademark Act § 66 must be filed through ESTTA.


An extension of time to oppose is a personal right accorded to the person or entity to which it was granted. Therefore, a second or subsequent extension request or a notice of opposition may only be filed by a potential opposer to whom a previous extension was granted, or by one who is in privity with such a person.


For further information on requests for extension of time to oppose, see Trademark Act § 13; 37 CFR § 2.102; TBMP Chapter 200.


File a new proceeding


Use these options to file a new notice of opposition or petition to cancel, or to file an appeal of a final refusal to register. Choose your filing and enter the serial number of the application to be opposed, the registration number of the registration to be cancelled, or the serial number of the application to be appealed.


Form: Notice of Opposition to Registration


Prior to registration on the principal register, all pending trademarks are published in the Official Gazette. Any person who believes that he would be damaged by the registration may file a notice of opposition within thirty days of the date of publication, or within an extension of such period.


Oppositions to registration of marks filed under Trademark Act § 66 must be filed electronically through ESTTA. All other oppositions may be filed either through ESTTA or on paper.


For further information on notices of opposition, see Trademark Act § 13; 37 CFR §§ 2.101 - 2.107; TBMP Chapter 300.


Form: Petition for Cancellation


A petition for cancellation of a trademark registration may be filed at any time. However, a mark which has been registered for more than five years may only be cancelled for the reasons enumerated in Trademark Act § 14.


If the mark sought to be cancelled has been registered more five years or more, ESTTA requires the petitioner to state available statutory bases for cancellation. That is, the ESTTA form provides only the available bases for cancellation. However, if you believe that cancellation is proper upon a ground which does not appear on the ESTTA form, you may file a petition for cancellation on paper.


For further information on petitions for cancellation, see Trademark Act § 14; 37 CFR §§ 2.111-2.115; TBMP § 300, et seq.


Notice of Ex Parte Appeal


An applicant for registration of a trademark may appeal to the Board any final refusal to register the mark. An appeal is initiated by filing a timely notice of appeal with the Board, with the required fee. 37 CFR § 2.6(a)(18) sets forth the required fee.


To be timely, an appeal must be filed within six months from the date of the final refusal. Note that the filing of a request for reconsideration of the final refusal does not in itself extend or toll the time to file an appeal.


ESTTA will not permit the filing of a notice of appeal if the USPTO's records indicate an application status that is not appropriate for appeal (e.g., if a final refusal has not been issued), or if the appeal would be untimely. If you believe that the USPTO’s electronic records are incorrect, bring the matter to the attention of the Office. If the matter cannot be resolved within the time to appeal, you may file a timely notice of appeal on paper.


NOTE: Do not use this form for filing a notice of appeal from a Board decision to the U.S. Court of Appeal for the Federal Circuit or to a U.S. District Court. The proper procedure for such appeals is set out in Trademark Rule 2.145.


For more information on notices of ex parte appeal, see 37 CFR §§ 2.141 - 2.142; and TBMP § 1200, et seq.


Request for Reconsideration


During the period between a final action and expiration of the time for filing an appeal, the applicant may request the trademark examining attorney to reconsider the final action. The filing of a request for reconsideration will not extend the time for filing an appeal.


A request for reconsideration must be filed prior to the expiration of time to appeal, i.e., no later than six months from the mailing date of the final office action. Note that a request for reconsideration does not extend the time for filing an appeal. If a request for reconsideration has been filed, but not acted upon by the expiration of the time to appeal, an applicant must file a timely appeal if it wishes to preserve its right to do so.


A request for reconsideration should be filed with the trademark examining attorney, not the Trademark Trial and Appeal Board. Requests for reconsideration may be filed using TEAS using the Response to Office Action form. (To maintain their status, TEAS Plus applicants must use TEAS for filing a request for reconsideration.)


For further information on requests for reconsideration, see Trademark Rule 2.63(b); TBMP §§ 1201.01, 1204; TMEP §§ 715.03; 715.04.


File documents in a Board proceeding


Use these options to file documents (motions, briefs, etc.) in an already existing opposition, cancellation, concurrent use, or appeal proceeding. Choose a filing option and enter the opposition number (91xxxxxx), cancellation number (92xxxxxx), concurrent use number (94xxxxxx), or application serial number (7xxxxxxx or 8xxxxxxx) to which your filing applies.


Form: Opposition, Cancellation or Concurrent Use (general filings)


Use this option to file all submissions in existing opposition or cancellation proceedings. Such submissions include - but are not limited to - answers, counterclaims, motions, testimony, stipulations, and briefs. Additional choices to identify the most common filings are provided.


Do not use this option to file extensions of time to oppose, notices of opposition, or petitions for cancellation.


NOTE: While written stipulations or consent motions may be filed using this option, ESTTA provides a web form for consent motions to extend the time to answer, to extend discovery or trial dates, to suspend for settlement, or to suspend pending disposition of a civil action. These web forms, found under "Consent Motions (opposition or cancellation)", provide easier filing and faster processing for these motions.


IMPORTANT: Submissions may only be made by the parties to a Board proceeding or their attorneys. Board rules do not allow filings by non-parties. Such submissions will be removed from the record.


Consistent with Board practice, all filings will be considered based on their content, and not based on their title or caption. However, to aid the Board in entry and prompt consideration of your submission, the ESTTA form requires the user to accurately identify its filing. ESTTA presents titles for the most common types of filings. Choose the option which most closely identifies your filing. If the filing embodies two or more motions, choose the primary or most significant motion. If there is no title which identifies your filing, you may choose "Other Motions/Papers", and your submission will be so identified, although use of this option does not allow the Board to efficiently process and route your submission.


Papers requiring fees


Currently, ESTTA is able to automatically accept payment for notices of opposition, petitions for cancellation, counterclaims, and notices of appeal. The payment may be made by credit card (MasterCard, Visa, American Express or Discover), Electronic Funds Transfer, or through an existing USPTO deposit account. Certain filings, such as amendments to registrations and requests to divide, also require a fee. The current version of ESTTA does not support electronic fee processing for these submissions. Accordingly, payment of a fee for such submission should either be by written authorization to debit the filer's USPTO deposit account or be filed by mail.


Information regarding establishing a deposit account is at 37 CFR § 2.208.


A list of current trademark fees may be found at 37 CFR § 2.6.


The fee for a counterclaim is the same as the fee for a notice of opposition or petition for cancellation. The fee must be submitted for each opposer or petitioner.


Ex Parte Appeal (general filings)


Use this option to file all submissions in an ex parte appeal proceeding except the notice of appeal itself. Such submissions include - but are not limited to - motions to extend or suspend the time for filing briefs, requests for oral hearing, and requests for remand.


A request for reconsideration of the examining attorney’s refusal to register which is filed prior to, or simultaneous with, the notice of appeal, should be filed with the examining attorney, and not with the Board. However, if such a submission has been filed, be sure to check the box in ESTTA to indicate this, so that the Board may suspend the appeal pending the examining attorney’s consideration of the request for reconsideration.


IMPORTANT: Submissions may only be filed by the applicant or the examining attorney. Board rules do not permit filings by others. Such submissions will be removed from the record.


Consistent with Board practice, all filings will be considered for their content, and not their title. However, to aid the Board in entry and prompt consideration of your submission, the ESTTA form requires the user to identify its filing. Options are presented for the most common types of filings. Choose the option which most closely identifies your filing. If the filing embodies two or more motions, choose the primary or most significant motion. If there is no option which identifies your filing, you may pick "other" and briefly describe the submission.


Requirements For Electronic Filing


Electronic filing through ESTTA requires a computer and an Internet connection. ESTTA has been tested using Internet Explorer 9, Internet Explorer 11 and Google Chrome Version 43, on PC architecture. While every effort has been made to use standard programming, the USPTO cannot guarantee that ESTTA will function properly using browsers or operating systems other than those identified here.


To file a notice of opposition electronically through ESTTA, you will need the following, in addition to answering the questions on the ESTTA web forms:


Your pleading must be a file stored on your computer in PDF (preferred), TIFF or TXT format. The pleading should be formatted for 8.5" x 11" paper in black and white text or graphics. TIFF or PDF filings should be in 300 dpi resolution. There is a limit of approximately 6 megabytes per file. While documents containing color or grayscale may be submitted, they may severely limit the number of pages which can be uploaded, and will be converted into black and white by ESTTA in any event.

If an opposer claims prior rights to a trademark, the filer must have for each such mark (1) a registration or application number if opposer's mark is either registered, or is a common-law mark depicted in a trademark application; or (2) if opposer owns a common-law mark which is not depicted in an application, opposer must (a) attach an image of the mark in JPEG format. The image should be formatted for 8cm x 8cm at 300 dpi resolution. (b) If the common-law mark comprises words only, without a claim to stylization or a design, the mark may be typed into the ESTTA form. If the mark is not capable of visual representation, e.g., scent or sound marks, the user must provide a description of the mark.

Accepted Formats


For pleadings, motions and other papers,your document may be in PDF (preferred), TIFF, or TXT format, formatted in letter size (8.5" x 11"), portrait orientation, and preferably in black and white. If your document is in TIFF or PDF format, it should be rendered at 300 dpi. Documents may either be scanned in TIFF or PDF format, or (preferably) converted from word processing files using commercially-available software. Most word processing programs allow the user to save a document as a PDF or TXT file.


The maximum size for each individual attachment is approximately 6 MB. The aggregate size of all attachments for a single ESTTA transmission is approximately 53 MB. You may attach more than one file in more than one format.


Accepted Format for Pleaded Mark


In an opposition against an application under Trademark Act § 66, in which the opposer claims rights based on its ownership of a mark, a copy of the mark must be submitted.


If the mark is the subject of a U.S. Registration, or if the mark is a common-law mark depicted in a U.S. Application, you may enter the registration number or application number, and the drawing of the mark will be retrieved from the USPTO database.


If the opposer's mark is typed or in standard character form (i.e., words only, with no design or claim to particular format or typeface), you may type the mark in the appropriate field. If the mark is not capable of being depicted in a drawing (e.g., sound marks, scent marks), enter a description of the mark in the appropriate field.


Otherwise, you must attach an image of the mark to your ESTTA filing. The image must be in JPEG format at 300 dpi resolution, no larger than 8 x 8cm (3.15" x 3.15" or 945 by 945 pixels).


Pleading


A proper pleading for a notice of opposition or petition for cancellation contains a "short and plain statement of the claim showing that the [filer] is entitled to relief". This is the same as the document you would file if you were filing a notice of opposition or petition for cancellation on paper. The pleading states in numbered paragraphs facts which if proven would establish that the opposer or petitioner has (1) standing to oppose registration or to petition for cancellation; and (2) a legal ground for opposition or cancellation. The filer does not have to actually prove these allegations at this time, but must have a good faith belief in their truth.


For further information on pleadings, see 37 CFR §§ 2.101, 2.104, 2.122(c)-(d); Fed. R. Civ. P. 7, 8-11; TBMP Chapter 300.


Madrid Protocol (Trademark Act § 66) Applications


The Madrid Protocol is an international agreement which facilitates the filing and maintenance of trademarks in member countries. Applications to the USPTO filed under the Madrid Protocol are governed by Trademark Act § 66, et seq. Because of the strict time limits involved in oppositions against Trademark Act § 66 applications, electronic filing is required for extensions of time to oppose and notices of opposition against such applications. Once filed, however, such oppositions are very similar to oppositions against an application based on Trademark Act §§ 1 or 44 with notable exceptions.


For more information concerning filings under Trademark Act § 66, see TMEP Chapter 1900, et seq. See TBMP § 309.03 describing some limitations on the scope of a notice of opposition against an application filed under the Madrid Protocol.


Signature of Electronically-Filed Papers


All submissions to the Board must be signed by the party on whose behalf the submission is filed, or by that party’s attorney. Submissions filed electronically via ESTTA may be signed (1) by signing the paper in pen, then scanning the paper for attachment and transmission or (2) by placing a symbol comprised of numbers and/or letters between two forward slashes. E.g.: /John Q. Public/ - on the ESTTA cover sheet in the signature block or (3) by placing on the paper being filed a symbol comprised of numbers and/or letters between two forward slashes. E.g.:/John Q.Public/


For more information on signature requirements, see 37 CFR §§ 2.119(e); 2.193(c); 37 CFR § 11.18; Fed. R. Civ. P. 11; TBMP §§ 106.02, 203.03, 309.02, 311.01, 502.04, 527.02, 1202.03.


Filing Confidential Materials with the Board


The Board's standard order for the protection of confidential materials is in effect in all opposition, cancellation, or concurrent use proceedings, unless the parties agree to and file for the Board's approval of an alternative order. See 37 CFR § 2.116(g); and TBMP § 412.


Except for materials properly designated and filed as confidential, the files of applications and registrations which are the subject matter of Board proceedings, and all proceeding files and exhibits thereto, are available for public inspection and copying. Therefore, only the particular portions of a brief, pleading motion or other submission that discloses confidential information should be filed under seal pursuant to a protective order. If a party submits any brief, pleading, motion or other filing that contains confidential information under seal, the party must also submit for the public record a carefully and appropriately redacted version of the submission.


See 37 CFR §§ 2.27, 2.116(g), 2.126(d). See also TBMP §§ 412.04, 412.05.


Email Addresses


Upon successful completion of an ESTTA submission, the filer will receive filing confirmation by e-mail, at the e-mail address provided by the filer. The Board may also send orders (or notice of orders) to both parties by e-mail. Accordingly, it is critical that ESTTA filers make sure that both parties' e-mail addresses are correct and complete prior to transmission.


You may enter more than one e-mail address, separated by commas, in the e-mail address field in ESTTA, up to a total of 150 characters. The filing information and any resulting order (if sent by e-mail) will be sent only to the entered addresses. When filing an ESTTA "Consent motion," you must enter all e-mail addresses displayed in TTABVue for both yourself and the opposing party. (You can copy and paste the addresses from TTABVue if you like.)


Parties should take care to promptly update the address to which correspondence should be sent (both street address and email) whenever appropriate. Parties are responsible for maintaining the correct correspondence information with the Board. Failure to do so may result in missed deadlines, with adverse consequences. Note that although e-mail orders and notices can be sent to more than one e-mail address, the Board will only send paper copies to the single correspondence address of record.


Proceedings Involving the Same or Similar Marks


If one or both of the parties to a proceeding are involved in another proceeding before the Board, or in a civil court the decision of which may have a bearing on the Board proceeding, the filer should so inform the Board using this field. [Doing so, however, is informational, and does not relieve the party of the necessity of taking any appropriate action, such as filing a motion to suspend or consolidate.]


What's new in ESTTA


The Notice of Opposition and Petition for Cancellation forms have been modified to prompt the filer to enter the grounds for opposition or cancellation, including any mark asserted by the plaintiff as a bar to registration. This change will provide for more complete information in the Board's automated systems without manual data entry, and will make the forms generally consistent with each other.


The Appeal of Refusal to Register form will now generate an error message when the application status is incorrect for an appeal. This change will reduce the delay and manual processing required when improper appeals are filed.



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