If your business is involved in a trademark opposition or cancellation before the Trademark Trial and Appeal Board (TTAB), understanding procedural strategy is essential. One of the earliest and most impactful tools available to trademark owners and applicants is the Motion to Dismiss. When used properly, it can eliminate weak or legally insufficient claims before the case progresses to the discovery stage.
At Cohn Legal, PLLC, we help entrepreneurs, startups, and established companies defend their brands effectively before the TTAB. Below, we explain what a Motion to Dismiss is, when it should be used, and how it can strategically position your case for success.
What Is a Motion to Dismiss?
A Motion to Dismiss asks the TTAB to throw out an opposition or cancellation proceeding because the complaint fails to state a legally valid claim. The motion operates under Federal Rule of Civil Procedure 12(b)(6), which applies to TTAB proceedings through the Board’s procedural rules.
This motion doesn’t challenge the facts of the case but instead focuses on the legal sufficiency of the complaint. Even if the opposing party’s allegations are true, a Motion to Dismiss argues that they still don’t present a valid legal claim under the Trademark Act.
For instance, if the opposer claims “likelihood of confusion” under Section 2(d) but doesn’t allege ownership of a prior mark or fails to explain how confusion would occur, the claim might be defective. In that situation, a Motion to Dismiss can end the case early and save valuable time and costs.
The Right Time to File
Timing is everything. A Motion to Dismiss must be filed before an answer is submitted. Once an answer is filed, the right to use this motion is generally waived.
You may want to consider filing a Motion to Dismiss when:
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The Opposer or Petitioner Fails to State a Legal Ground
If the other side doesn’t properly plead a statutory basis for their claim, such as likelihood of confusion or dilution, the TTAB can dismiss the case outright. -
Essential Facts Are Missing
A complaint must clearly allege standing and relevant facts to support the claim. Without these, the pleading is incomplete. -
The Pleading Is Confusing or Ambiguous
When the complaint is so unclear that you can’t prepare an adequate defense, a Motion to Dismiss can force clarification or amendment. -
Certain Claims Are Legally Improper
Sometimes, a party raises claims that are outside the TTAB’s jurisdiction such as trademark infringement or unfair competition. These are issues for federal court, not the TTAB, and can be dismissed.
What a Motion to Dismiss Does Not Do
A Motion to Dismiss doesn’t decide the facts of your case or determine who will win at trial. It doesn’t test the strength of your trademark or weigh evidence. Instead, it focuses only on whether the other side’s complaint includes the required legal elements.
If your goal is to challenge the facts or evidence, that’s what a Motion for Summary Judgment is for later in the process. A Motion to Dismiss is purely procedural and is best used to eliminate invalid or poorly pleaded claims early on.
Why Filing a Motion to Dismiss Can Be Strategic
When used correctly, a Motion to Dismiss can provide several key benefits:
1. It Can Save You Significant Time and Money
TTAB cases often take months or even years to resolve. By filing an early Motion to Dismiss, you can avoid the expense of discovery and trial preparation if the claims are weak or unsupported.
2. It Forces the Opposing Party to Refine Their Case
Even if the TTAB allows the other side to amend their complaint, they’ll be forced to fix the errors and clarify their arguments. This helps you better understand their legal theories and prepare an informed defense.
3. It Sets a Strong Procedural Tone
A well-prepared Motion to Dismiss demonstrates that your counsel understands TTAB procedure and is ready to challenge any misstep. It can shift the momentum in your favor from the very beginning of the case.
How the TTAB Reviews a Motion to Dismiss
When evaluating a Motion to Dismiss, the TTAB assumes that all properly pleaded allegations in the complaint are true. The question isn’t whether those facts can be proven, it’s whether, even if true, they establish a valid ground for opposition or cancellation under the Trademark Act.
If the pleading lacks sufficient detail or omits a required element, the TTAB can dismiss it. In most cases, however, the dismissal is “without prejudice,” which allows the plaintiff to file an amended complaint that corrects the errors.
The Board focuses strictly on the pleadings, not on external evidence or argument. That means your motion should emphasize procedural flaws and legal insufficiency, not factual disagreements.
Lessons from Past TTAB Decisions
The TTAB has a long history of rulings that clarify how Motions to Dismiss should be used. For example, in Petroleos Mexicanos v. Intermix S.A., the Board ruled that general allegations of trademark priority and likelihood of confusion were sufficient to survive a motion to dismiss. This case underscores that the TTAB gives plaintiffs the benefit of the doubt but also expects clear and specific pleadings.
On the other hand, in Schering-Plough Animal Health Corp. v. Aqua Gen AS, the TTAB sanctioned a party for filing a baseless motion, reminding practitioners that Motions to Dismiss must be supported by sound legal reasoning.
The takeaway? This motion is a powerful tool when used properly but misusing it can damage your credibility before the Board.
Common Mistakes to Avoid
While filing a Motion to Dismiss can be strategic, it must be done carefully. Here are frequent pitfalls that can weaken your case:
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Filing the motion after submitting an answer
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Arguing factual disputes rather than legal defects
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Using the motion to delay proceedings instead of to clarify them
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Ignoring the opportunity to amend your own pleadings if needed
Each TTAB case is unique, so understanding the correct timing and grounds for your motion is crucial.
Why Experienced TTAB Counsel Matters
Defending your trademark before the TTAB requires a detailed understanding of procedure, timing, and legal standards. At Cohn Legal, PLLC, our attorneys represent clients in oppositions, cancellations, and appeals, ensuring that every filing strengthens your position.
We evaluate whether a Motion to Dismiss will benefit your case or if another procedural route such as settlement discussions or summary judgment is a smarter move. Our goal is to protect your brand while keeping the process as efficient as possible.
Your brand is everything. Protect it forever and always.
Ready to discuss your TTAB strategy?
Let’s make trademark defense simple. Contact Cohn Legal, PLLC today to schedule your free consultation and explore your best next steps.