If you are an entrepreneur or startup founder navigating a trademark opposition or cancellation before the Trademark Trial and Appeal Board (TTAB), one of the most important steps in your journey is understanding pretrial disclosures. These disclosures might sound technical, but they are absolutely essential to ensuring fairness, transparency, and efficiency in TTAB proceedings.
At Cohn Legal, PLLC, we often remind clients that your brand is everything. Protect it forever and always. That means not only registering trademarks but also defending them when challenged. Pretrial disclosures are a key part of that defense. Let’s break down what they are, why they matter, and how you can approach them strategically.
What Are Pretrial Disclosures?
In TTAB inter partes proceedings oppositions and cancellations pretrial disclosures are mandatory statements that each party must serve before the trial phase begins. They give the opposing party notice of the witnesses you plan to call, the subjects those witnesses will testify about, and the types of documents or things you may use as evidence .
Specifically, each party must submit these disclosures 15 days prior to the opening of its testimony period. Even if you don’t intend to call witnesses, you must file a disclosure stating that you plan to rely solely on documentary evidence, such as notices of reliance .
The purpose is simple: the TTAB wants to avoid “trial by ambush.” By sharing this information in advance, both sides have the chance to prepare, reducing surprises and streamlining the trial process.
Why Pretrial Disclosures Matter
1. They Keep Your Evidence Admissible
Failure to make proper disclosures can lead to serious consequences. For example, if you try to call a witness who wasn’t included in your pretrial disclosures, the TTAB may strike that testimony entirely . Imagine investing time and money into a survey expert or brand consultant, only to have their testimony excluded because of a procedural oversight.
2. They Help Frame Your Case Strategy
Think of pretrial disclosures as the blueprint for your trial. By carefully planning and identifying your witnesses and documents, you’re clarifying your overall litigation strategy. This step forces you to think critically about what facts truly matter and what evidence best supports your position.
3. They Level the Playing Field
The TTAB’s entire structure is designed to ensure fairness. Unlike federal litigation, TTAB cases don’t involve jury trials or damages. Instead, the Board decides purely on the right to federal registration. Pretrial disclosures help balance the scales by ensuring that both parties have notice of what’s coming and can prepare accordingly .
What Must Be Included in Pretrial Disclosures?
According to the TTAB’s rules and the Trademark Board Manual of Procedure (TBMP), a proper pretrial disclosure includes:
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Witness Information: The names, addresses, and identifying details of each witness you expect to call or may call.
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Topics of Testimony: A general summary of what each witness is expected to cover (e.g., “Mr. Smith will testify regarding sales figures and advertising expenditures for the mark XYZ since 2010”).
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Types of Exhibits: A summary of the documents, records, or tangible items you may introduce during the witness’s testimony (e.g., sales reports, marketing materials, or product packaging).
These disclosures are not the same as the actual notice of testimony deposition that must be served later. Instead, they are a preview of what’s coming, designed to provide notice rather than full detail .
Common Pitfalls and How to Avoid Them
Failing to Disclose a Witness
If you fail to disclose a witness in your pretrial disclosures, the Board may exclude their testimony. This mistake can be fatal to your case. Always include every potential witness, even if you’re unsure whether you’ll use them.
Providing Vague Descriptions
Listing a witness without explaining what they’ll testify about is not enough. The TTAB expects a clear summary of subject matter. Vague disclosures can be challenged by your opponent, leading to delays or motions to strike.
Forgetting to Disclose When You Have No Witnesses
Even if you don’t intend to call any witnesses, you still must serve a pretrial disclosure stating that fact. Skipping the disclosure entirely may result in penalties.
Overloading With Irrelevant Information
Pretrial disclosures should focus on witnesses and evidence relevant to your claims or defenses. Including extraneous material can backfire, as it may invite unnecessary challenges from the opposing party.
Strategic Tips for Entrepreneurs and Startups
For business owners facing their first TTAB proceeding, pretrial disclosures may feel intimidating. Here’s how to simplify the process and keep your brand protected:
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Plan Early: As soon as discovery ends, begin mapping out your potential witnesses and exhibits. This proactive step ensures you won’t be scrambling as deadlines approach.
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Think Like a Storyteller: Every case tells a story. Your disclosures should reflect the narrative you want the Board to hear. For example, if you’re defending your brand against a likelihood-of-confusion claim, your disclosures might highlight testimony about your mark’s distinctiveness and market recognition.
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Coordinate With Counsel: TTAB proceedings are highly procedural. Even experienced entrepreneurs should work with a trademark attorney to ensure compliance. At Cohn Legal, we help clients craft disclosures that not only meet the rules but also position them strategically for trial.
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Use Disclosures as Leverage: Sometimes, seeing the strength of your disclosed witnesses or evidence may encourage your opponent to settle. Strategic disclosures can serve as a subtle negotiation tool.
Case Examples That Highlight the Importance of Pretrial Disclosures
The TTAB has repeatedly emphasized the importance of pretrial disclosures in published decisions. In Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., for example, the Board struck testimony when it was not properly disclosed in advance . Similarly, in Great Seats Inc. v. Great Seats Ltd., the TTAB excluded numerous witnesses for being identified only at the last minute .
These cases serve as cautionary tales: even strong evidence can be wasted if it isn’t disclosed correctly.
Why Work With an Experienced Trademark Attorney?
Pretrial disclosures are not simply administrative hurdles; they are integral to your overall litigation strategy. While entrepreneurs are incredibly resourceful, TTAB litigation requires careful attention to detail. A missed disclosure or poorly prepared witness summary can undermine an otherwise strong case.
That’s where our team at Cohn Legal, PLLC comes in. We act as your legal consigliere, guiding you through each stage of TTAB practice with clarity and confidence. We’ll help you prepare precise, compliant disclosures while also ensuring your trial story is strong and persuasive.
Conclusion
Pretrial disclosures may seem like just another procedural step, but they can determine whether your evidence makes it into the record and whether your brand stands strong in a TTAB opposition or cancellation. By planning early, being strategic, and working with experienced trademark counsel, you can ensure that your pretrial disclosures support and not sabotage your case.
Your brand is everything. Protect it forever and always. If you are facing a TTAB proceeding, let’s simplify the process together. Reach out to Cohn Legal, PLLC today for a free consultation and start building the strongest defense for your brand.