Introduction: Why Proper Service Matters
When you’re involved in a trademark opposition or cancellation proceeding before the Trademark Trial and Appeal Board (TTAB), the way you serve and respond is not just a formality, it can make or break your case. Many entrepreneurs and startups underestimate how strict the TTAB is about service requirements and response deadlines. Failing to follow the rules can result in your case being dismissed before it ever gets heard on the merits.
At Cohn Legal, PLLC, we often tell clients: “Your brand is everything. Protect it forever and always.” That begins with respecting the TTAB’s procedural rules. Let’s walk through what proper service looks like, what’s required of the responding party, and how to avoid common pitfalls.
Serving a Notice of Opposition or Petition for Cancellation
When a party (the plaintiff) files a Notice of Opposition or a Petition for Cancellation, it is their responsibility to serve a copy of the pleading including any exhibits on the other party (the applicant or registrant). The TTAB itself does not serve these documents for you .
Under Trademark Rules 2.101(b) and 2.111(b), the service must be made on the attorney of record, the appointed domestic representative, or the party directly if no representative is listed. Proof of service must be included with the filing .
If service is defective, the proceeding may not be properly commenced, which can delay or even derail the case. The TTAB has dismissed cases where proof of service was missing or service was made incorrectly .
Pro tip: If you’re uncertain about which address to use, you can serve multiple addresses. It is always better to overserve than risk improper service.
What Counts as Acceptable Service?
The TTAB allows service through a variety of methods, including first-class mail, overnight courier, or electronic transmission when both parties agree. However, if you rely solely on electronic service without prior consent, it may not count .
It’s also important to note that the TTAB considers the attorney’s role in prosecution to end once a registration is issued. In cancellation proceedings, you may have to serve the registrant directly unless a domestic representative has been appointed .
Responding to a Notice of Opposition or Petition for Cancellation
If you are the defendant (the applicant or registrant), your first obligation is to file an Answer with the TTAB and serve a copy on the plaintiff .
Your Answer must:
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Admit or deny each allegation in the complaint.
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Raise any affirmative defenses you plan to rely upon.
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Include any compulsory counterclaims, such as a request to restrict the plaintiff’s registration under Section 18 of the Trademark Act.
Failure to file a timely Answer can result in default judgment, which means you automatically lose the case .
Timing Is Everything
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Oppositions: Must be filed within 30 days of publication of the mark in the USPTO’s Official Gazette, though extensions are available.
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Cancellations: Can be filed any time after registration, but the grounds for cancellation depend on how long the mark has been registered.
Once served, you generally have 40 days to respond to a Notice of Opposition or Petition for Cancellation. Extensions may be available, but it’s critical not to wait until the last minute.
What Happens If Service Is Defective?
If the plaintiff fails to properly serve the pleading, the TTAB may dismiss the case as a nullity. On the other hand, if you receive defective service but are still clearly on notice of the case, the TTAB may allow the case to move forward while correcting the defect .
The takeaway is this: don’t gamble with technicalities. Whether you are initiating or defending, make sure service is flawless and responses are timely.
Practical Tips to Stay Compliant
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File and serve simultaneously. When filing through ESTTA (the TTAB’s electronic system), immediately serve your opponent and include proof of service.
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Keep detailed records. Retain copies of your service documents, tracking receipts, or email confirmations.
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Don’t recycle boilerplate defenses. Avoid empty defenses like “failure to state a claim” unless you truly plan to pursue them .
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Seek extensions strategically. If you need more time, request an extension early rather than waiting until deadlines pass.
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Consider settlement talks. Many TTAB cases resolve through negotiation, and timely service and responses create goodwill for discussions.
Why Entrepreneurs and Startups Must Take This Seriously
For a startup, facing a TTAB opposition can feel overwhelming. But remember: the other side is often a larger company trying to protect its turf. If you miss deadlines or fail to serve properly, you hand them a win without ever getting to tell your side of the story.
Your brand is worth protecting. Filing accurate responses, serving correctly, and staying on top of deadlines ensures you remain in the fight. And if you’re the one filing an opposition or cancellation, it ensures your case will be heard on its merits.
How Cohn Legal, PLLC Can Help
At Cohn Legal, we live and breathe TTAB proceedings. From filing oppositions and cancellations to defending your mark, we simplify the process so you don’t have to worry about procedural missteps. Think of us as your legal consigliere, we make sure you stay compliant with every service requirement and never miss a crucial deadline.
Whether you’re an entrepreneur just starting out or a growing business protecting its global brand, our team is ready to guide you.
Conclusion: Protecting Your Brand Starts with the Basics
Proper service and timely responses in TTAB proceedings might sound like tedious procedural steps, but they are the foundation of protecting your trademark rights. A single misstep can cost you the ability to defend your brand.
At Cohn Legal, PLLC, we remind our clients: “Think big. Create and protect your dreams.” That protection begins with respecting TTAB procedure. If you’re facing an opposition or cancellation or thinking about filing one, schedule a free consultation with us today. Let’s simplify this process together.