In the world of trademark litigation, procedural precision is everything. And yet, even experienced attorneys frequently stumble over one of the most basic—and essential—requirements before the U.S. Trademark Trial and Appeal Board (TTAB): proper service of process. Filing through ESTTA is now second nature to most practitioners. But if you think hitting “submit” is the end of your obligation, think again.
Confusion around TTAB service requirements continues to generate unnecessary delays, defaults, and even dismissed claims. As emphasized in this article, the Board takes service seriously. Understanding the difference between filing and serving can make or break a case, especially during the critical early stages of a proceeding.
The ESTTA Illusion: Why Filing Isn’t Enough
The TTAB has streamlined litigation in many ways through its Electronic System for Trademark Trials and Appeals (ESTTA). From notices of opposition to final briefs, nearly everything is filed online. This has led many practitioners to assume that electronic filing through ESTTA automatically fulfills their service obligations as well. In reality, that assumption can be dangerously wrong.
ESTTA is a filing platform, not a service platform. When you submit a document via ESTTA—particularly after the complaint stage—the system generates a notice of the filing. But this electronic notice is not considered formal service. In other words, even though your motion, answer, or request is on the record, you may still be violating TTAB rules if you don’t separately serve it on the opposing party.
The Official Rule on Service
Under the TTAB’s procedural rules, all filings after the initial complaint must be served on every other party involved in the proceeding. As of recent updates, service is generally required to be made by email, unless otherwise stipulated. The email must be sent directly to the opposing counsel or pro se party, using the address of record. Simply relying on the USPTO’s notification system—or expecting opposing counsel to notice your filing—is not enough.
A complete certificate of service must accompany your filing. This certificate should include the name of the person served, the method of service, and the date it was completed. Failing to include a certificate of service can result in the Board rejecting or ignoring your filing. Worse, if opposing counsel isn’t properly notified, your case may suffer procedural delays or even sanctions.
Where Practitioners Go Wrong
One of the most common mistakes TTAB practitioners make is assuming that if something is filed via ESTTA, then it has been “seen” or “served.” This is especially problematic for motions—such as motions to compel, to strike, or to amend—where service is crucial for triggering response deadlines.
Another frequent misstep is sending documents to an outdated email address or to an attorney who is no longer counsel of record. The TTAB does not manage this communication for you. It’s the filing party’s responsibility to ensure that service is made to the correct and current representative of record. If the opposing party is represented by an attorney, the service must go to that attorney—not the party directly.
Pro se parties create their own challenges. If you are dealing with a party that does not have legal representation, you still must serve them by email unless they’ve explicitly requested another method and the Board has approved it. Ignoring this can invalidate your service and create ethical complications.
Service and the First Filing: A Special Case
There’s one key exception to consider: service of the initial complaint in a TTAB proceeding—such as a Notice of Opposition or Petition to Cancel. In these cases, the Board itself handles service by notifying the defendant (or registrant) of the proceeding and providing the deadline to respond. After that, the burden shifts to the parties.
Once the answer is filed, every subsequent submission must be served directly between the parties. TTAB Tips make it clear that parties should not rely on Board notifications or assume “everyone saw it on TTABVUE.”
Strategic Implications of Proper Service
Proper service isn’t just about compliance—it’s a strategic tool. Serving documents promptly ensures the clock starts ticking on your adversary’s response time. If your certificate of service is defective or missing, you may not be able to hold the opposing party to the expected timeline. This can delay motions, discovery responses, or trial testimony periods.
Moreover, inadequate service opens the door for disputes that distract from the merits of your case. Instead of focusing on likelihood of confusion or nonuse, you could find yourself debating whether an email was sent or received—a waste of resources for both parties and the Board.
In some cases, failure to serve can even result in motions being summarily denied. The Board may disregard your filing entirely if there’s no certificate of service or if you failed to notify the other side. Worse yet, if the Board believes you’re trying to avoid fair notice or prejudice the opposing party, sanctions are not off the table.
TTAB Tips: Getting It Right Every Time
The best way to avoid service missteps is to make it a part of your filing checklist. Review the contact information for opposing counsel before sending anything. Always attach a complete certificate of service with every ESTTA filing, clearly identifying the email address used, the date of service, and the name of the recipient.
For firms with multiple attorneys on a case, designate a point person for outgoing service communications. And whenever there’s a change in your own contact information, notify both the Board and opposing counsel immediately to prevent reciprocal issues.
It’s also a good idea to agree to service protocols early in the case. During the discovery conference, parties can stipulate to preferred methods of service, acceptable formats, and backup contacts. Taking advantage of this procedural flexibility can reduce confusion later on.
The Future of TTAB Service
As TTAB practice becomes increasingly digital, there’s a temptation to let automation take over. But even the most modern legal systems still rely on one ancient principle: fairness through proper notice. That’s what service is. The Board doesn’t ask much—it simply wants each party to notify the other and confirm that it did.
Looking ahead, the TTAB may expand its technological offerings to streamline service notifications. But until then, the responsibility remains with the parties. Filing is a record. Service is a right. Knowing the difference is not just a procedural detail—it’s a professional duty.