Trademark Extension needed. I'm the defendant, how do I request an extension?
Austin, TX |
I recently filed a TM and it was opposed. I would like to file an extension and can manage the uspto online form, but was wondering if there are additional forms that I need to attach. And do I need to notify the opposer?
You seem to be rather astute, to have mastered the system sufficiently to have obtained, without professional assistance, an allowance and publication of your U.S. trademark application. And yet, I infer, some business has come out of the woodwork with guns blazing, seeking to prevent you from registering your mark. That's what the "opposition" is all about. It's an adversarial legal proceeding. That's a war ... though fought within the confines of an administrative agency ... the Trademark Trial and Appeal Board (TTAB) of the US Patent & Trademark Office.
I suspect that you don't attach much pecuniary value to the trademark, because you seem to be a layperson who hasn't yet hired a lawyer to be your "mouthpiece." If you keep on this path and seek to appear in this proceeding without counsel, that is, pro se, the odds of your getting the trademark registered are mighty low.
Your question doesn't indicate which stage of the opposition proceeding you're at ... so I can't tell what deadline you are seeking to get "extended." If you've consulted (and understood) the TTAB's procedure manual (the TBMP, see link provided below), you'd at least be able to describe in detail what's going on.
Do yourself a favor. Either level the playing field by hiring counsel experienced in Trademark Office practice, or throw in the towel now and kiss the possibility of this trademark registration goodbye.
This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance.
-Gerry J. Elman, J.D.
Elman Technology Law, P.C.
Your efforts to represent yourself in what amounts to a litigation procedure is ill-advised. The very first thing you will be asked to do is file an answer which, among other things, responds to the allegations and enumerates all of your counterclaims and defenses (and potential defenses) so that you do not lose your right to rely upon them later.
This is a critical juncture and you have to make a choice - either get professional assistance or walk away from federal registration of the mark. An attorney may very well tell you that you have a losing hand and that you should give up now - which WILL save you money in the long run. Or he or she may tell you the facts and law are on your side. He or she will also explain your settlement options, in case you want to pursue a compromise strategy.
In short, hire an attorney today and let him or her take care of this step for you, and go over all of your options so that you can make an informed decision.
Attorney Elman is quite right. Either get a lawyer or get out. If the trademark is not worth a lawyer who knows this stuff, it's not worth fighting this battle. The problem is you don't know what you don't know. You are almost certain to miss something and lose. Even if you try, you are no match for a good experienced trademark litigator. Don't disillusion yourself into thinking otherwise.
I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.