In this matter, the Trademark Trial and Appeal Board dismissed an opposition without prejudice in this precedential opinion because the party that filed the opposition was different from the party that sought and obtained an extension of time to file the opposition.

Less than a month after the application published, an employee of Opposer filed and was granted a 30-day extension of time to oppose Applicant’s application. The employee listed herself, an individual, as the potential opposer making no mention of Opposer.  Within the extension period, Opposer filed an opposition.  Applicant moved to dismiss the opposition arguing that the individual that secured the extension of time to oppose was not the same entity as Opposer.

In determining Applicant’s motion, the Board considered Trademark Rule 2.102(b), which provides that an opposition filed by a party different than the party that obtained the extension of time will not be automatically rejected if it is established that (1) the Opposer is in privity with the party that secured the extension or (2) if the misidentification of the potential opposer in the extension request was by mistake.

As to privity, the Board noted the long standing principle that there is no privity “between a person and a corporation merely because the person is employed by the corporation.”  Accordingly, in this case, the Board did not find privity as the employee was neither an owner nor manager of Opposer, but instead  was merely employed by Opposer.

As to mistake, the Board confirmed that mistake must be 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.” Opposer argued that the employee intended to file the extension request in Opposer’s name, but mistakenly entered her name.  The Board, however, found it significant that the employee identified herself, not Opposer, with certainty, i.e., as an individual citizen of the United States.

Finding neither mistake nor privity, the Board dismissed the opposition without prejudice for lack of subject matter jurisdiction.

Take away:  Take care to identify the correct entity when requesting an extension of time to oppose a published application.