When it comes to trademark disputes before the Trademark Trial and Appeal Board (TTAB), evidence is everything. The TTAB decides cases based on the record, not courtroom drama or emotional appeals. That’s where expert witnesses can be a game changer. While TTAB cases rarely require experts, there are strategic moments when expert analysis especially on consumer perception, market conditions, or survey evidence can be the deciding factor in a victory. For brand owners, startups, and legal practitioners, understanding how and when to use expert testimony can dramatically improve your odds of success.

The Role of Expert Witnesses in TTAB Proceedings

The TTAB is an administrative tribunal within the U.S. Patent and Trademark Office, and its role is to determine the right to federal registration of a trademark not to decide on infringement or award damages. Because of this, the use of expert witnesses is more limited than in federal court. However, when issues hinge on consumer understanding, marketplace evidence, or industry standards, expert testimony can add persuasive weight to your argument.

Experts are most commonly used in TTAB cases to conduct and interpret consumer surveys, to analyze marketing or industry practices, or to provide linguistic or psychological insights into how the public perceives certain marks. For example, in a likelihood of confusion case, a qualified survey expert might present data showing that consumers are indeed confused or not by similar marks in the marketplace. Such expert input transforms subjective impressions into measurable evidence, which the Board often finds compelling.

When to Bring in an Expert

Timing is crucial when incorporating experts into your TTAB strategy. The TTAB rules require parties to disclose any expert witnesses they plan to use no later than 30 days before the close of discovery. This gives the opposing side time to prepare its response, request depositions, or even retain a rebuttal expert.

If you decide to use an expert solely to contradict or rebut another party’s expert, you’ll have an additional opportunity to disclose after receiving the other side’s expert report. Failing to make timely disclosures can result in the Board excluding your expert entirely a devastating outcome when that testimony is central to your case.

The TTAB generally follows Federal Rule of Civil Procedure 26(a)(2), which outlines the requirements for expert disclosure. Each party must identify its expert witnesses and provide written reports detailing their opinions, qualifications, and the basis for their findings. These reports often include the data considered, methodologies used, and prior testimony, ensuring transparency and fairness in the proceedings.

How Expert Testimony Strengthens a Case

Expert testimony provides an analytical layer that helps the TTAB interpret complex or technical matters that go beyond common understanding. For example, in a dilution claim, an expert might demonstrate how extensive consumer exposure to a mark has made it famous prior to the defendant’s use. In a descriptiveness challenge, a linguistics expert might analyze how relevant consumers interpret certain words or phrases in context.

Survey experts are among the most influential witnesses in TTAB litigation. A well-constructed consumer survey, designed according to recognized scientific standards, can offer objective proof of consumer perception something the TTAB highly values. On the other hand, poorly designed surveys can backfire, leading the Board to disregard or even criticize the evidence entirely. Choosing a seasoned survey professional who understands TTAB standards is critical to ensuring that the results withstand scrutiny.

Practical Considerations and Cost-Benefit Analysis

It’s important to remember that expert witnesses can be costly, and not every TTAB case justifies the expense. Many oppositions and cancellations are resolved on the strength of documentary evidence, deposition testimony, and party admissions. Expert testimony should be reserved for cases where the value of the trademark at issue or the complexity of the consumer perception question justifies the investment.

Startups and smaller brands often hesitate to engage experts, fearing that doing so will drive up litigation costs. However, when the outcome of the proceeding could determine the future of your brand, expert testimony can be a wise investment. The key is to work closely with your trademark attorney to evaluate whether the expert’s contribution would meaningfully strengthen your position.

At Cohn Legal, PLLC, our attorneys often help clients weigh the strategic value of using experts early in the process. We collaborate with trusted survey professionals, economists, and branding specialists who understand TTAB procedures, ensuring the evidence we present is both credible and cost-effective.

Preparing and Managing Expert Testimony

Once you’ve decided to use an expert, preparation and communication are essential. Your legal team should ensure that the expert fully understands the factual and legal context of the case. The expert report should be clear, focused, and free from legal conclusions, as the TTAB expects experts to assist with factual interpretation, not to provide opinions on the ultimate legal issues.

When submitting expert testimony, it’s critical to follow procedural requirements for format, service, and timing. The TTAB can exclude testimony for even minor noncompliance. After disclosure, the opposing party has the right to depose your expert, allowing them to test the credibility of the methodology and conclusions. Your attorney should prepare the expert thoroughly for this stage, emphasizing consistency, confidence, and precision.

Additionally, when settlement is possible, expert analysis can sometimes drive resolution before trial. For example, if an expert report shows a low likelihood of confusion, it may persuade the opposing side to withdraw its opposition, saving both parties time and resources.

Common Pitfalls to Avoid

A frequent mistake in TTAB litigation is relying too heavily on expert opinions that stray into legal argument. The Board is highly experienced in trademark law and does not rely on experts to interpret statutes or legal standards. Instead, the focus should be on helping the Board understand factual questions that require specialized knowledge.

Another pitfall is failing to corroborate expert testimony with other evidence. The TTAB evaluates the entire record, and unsupported expert conclusions carry little weight. Combining expert analysis with concrete documentation such as advertising records, sales data, and third-party use examples makes the testimony more persuasive and credible.

Why Strategic Expertise Matters

The strategic use of expert witnesses demonstrates thorough preparation and professionalism. It signals to the TTAB that your case rests on solid evidence, not conjecture. More importantly, it shows that you understand the nuances of consumer behavior, industry practice, and trademark perception key areas that often determine whether a mark can be registered or maintained.

At Cohn Legal, PLLC, we view expert testimony as one component of a comprehensive brand protection strategy. Whether it’s defending your mark against opposition or challenging a competitor’s registration, we ensure that every piece of evidence supports your brand’s long-term strength. Your brand is everything, and when the stakes are high, expert insight can make all the difference.

Final Thoughts

Expert witnesses are not always necessary in TTAB proceedings, but when they are, their impact can be substantial. From consumer surveys to linguistic evaluations, their insights help translate complex marketplace realities into clear, credible evidence. To use them effectively, brand owners must plan early, comply with procedural rules, and work with attorneys who understand both the technical and strategic dimensions of TTAB litigation.

Your brand deserves every advantage in protecting its identity. At Cohn Legal, PLLC, our team of trademark attorneys helps entrepreneurs, startups, and established businesses navigate these complex proceedings with confidence and clarity. If you’re considering using an expert witness in your TTAB case or if you simply want to explore whether it’s the right move for your situation reach out for a free consultation. Let’s simplify the process together and give your brand the protection it truly deserves.