Trademark Act §68(a)(2), 15 U.S.C. §1141h(a)(2), provides that a request for extension of protection is subject to opposition under Trademark Act §13. The USPTO must notify the International Bureau of the World Intellectual Property Organization (IB) within 18 months of the date the IB sends the request for extension of protection to the USPTO of: (1) a notification of refusal based on the filing of an opposition; or (2) a notification of the possibility that an opposition may be filed after expiration of the 18 month period. 15 U.S.C. §1141h(c)(1)(B)-(C); see TMEP §1904.03(a).

The notice must state the dates on which the opposition period begins and ends, if known. If the dates are unknown, the USPTO must communicate them to the IB "at the latest at the same time as any notification of a provisional refusal based on an opposition." Regs. Rule 16(1)(b).

Any notification of refusal on the basis of opposition must be received by the IB within 7 months after the beginning of the opposition period or within one month after the end of the opposition period, whichever is earlier. 15 U.S.C. §11411h(c)(2); Article 5(2)(c)(ii).

An opposition to a §66(a) application must be filed through the Board's electronic filing system and may not be filed in paper form under any circumstances. 37 C.F.R. §§2.101(b)(3), 2.102(a)(1); TBMP §309.01; see In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, Ser. No. 79000042, 2005 TTAB LEXIS 72, at *2-3 (2005); TBMP §110.01.

Once filed, an opposition to a §66(a) application may not be amended to add to the grounds for opposition, to add to the goods or services opposed, or to add a joint opposer. 37 C.F.R. §§2.104(c), 2.107(b). The opposition is limited to those goods, services, grounds, and named opposers set forth in the opposition form cover sheet generated by the Board's electronic filing system. 37 C.F.R. §§2.104(c), 2.107(b) ("The grounds for opposition, the goods or services opposed, and the named opposers are limited to those identified in the ESTTA cover sheet regardless of what is contained in any attached statement."); Sterling Computs. Corp. v. IBM Corp., Opp. No. 91273043, 2023 TTAB LEXIS 331, at *8-9 (2023); CSC Holdings, LLC v. SAS Optimhome, Opp. No. 91199973, 2011 TTAB LEXIS 245, at *8-11 (2011); see TBMP §315. The notice of opposition must also include all fees for each party opposer to oppose the registration in all classes specified in the opposition. 37 C.F.R. §2.101(d).

An opposer cannot amend its pleading to include common law trademark rights not previously identified on the Board’s electronic filing system’s cover sheet. Sterling Computs. Corp. v. IBM Corp., 2023 TTAB LEXIS 331, at *9. However, if a §1(a) use-based application or registration is identified on the cover sheet as a likelihood of confusion grounds for opposition against a §66(a) application, this claim would be sufficient to satisfy the requirement to notify the IB of an opposer’s reliance on common law rights that are coterminous with the pleaded application or registration. Id. at *12-13.

Request for Extension of Time to Oppose. A request for extension of time to oppose a §66(a) application must be filed through the Board's electronic filing system and may not be filed in paper form under any circumstances. 37 C.F.R. §2.102(a)(1).

No more than three requests to extend the time for filing an opposition may be filed. The time for filing an opposition may not be extended beyond 180 days from the date of publication. 37 C.F.R. §2.102(c).

See TMEP §1503 for further information about oppositions.