Filing a trademark opposition before the Trademark Trial and Appeal Board (TTAB) is a critical procedure that can directly affect the fate of a trademark application. Yet, many practitioners—both new and experienced—fall into the same traps that can lead to delays, adverse rulings, or even dismissal of the case. Understanding what these common pitfalls are and how to sidestep them can give you a stronger position from the outset.
In this article, we’ll break down the most frequent mistakes that occur during the opposition process before the TTAB and share actionable TTAB tips that can help you steer clear of them.
Misunderstanding the Scope of the TTAB’s Authority
One of the foundational errors is misunderstanding what the TTAB can and cannot decide. The Board’s jurisdiction is limited strictly to questions of federal registration—not use in commerce, infringement, or unfair competition. The TTAB does not issue injunctions or monetary damages. Therefore, inserting arguments or allegations better suited for a federal district court is not only irrelevant but can open your pleading up to a motion to strike.
When drafting a notice of opposition, focus on grounds that affect registrability, such as likelihood of confusion under Section 2(d), mere descriptiveness under Section 2(e), or priority and use. Including claims like trademark infringement under Section 43(a) of the Lanham Act is a common and critical misstep.
Filing Without Strong Grounds or Evidence
While the TTAB does not require you to present full evidence at the time of filing, your opposition must lay out plausible claims with factual underpinnings. Filing a vague or conclusory opposition based solely on the assertion that “the marks are similar” or “confusion is likely” won’t cut it. The Board expects more than just boilerplate. It needs to see a clear articulation of your standing to oppose and specific facts supporting your claims.
Providing evidence of your prior use, registrations, or harm from the applied-for mark can greatly strengthen your case. It’s also important to identify and limit your claims to those you can realistically prove through evidence during trial. Overloading your complaint with weak or unprovable claims dilutes the strength of your primary argument and can create procedural vulnerabilities.
Neglecting to Serve the Opposition Properly
One of the most avoidable yet frequent mistakes is failing to serve the notice of opposition properly. Under the rules, the opposer must serve the opposition on the applicant or the applicant’s attorney of record. While filing through ESTTA may feel like a complete submission, it does not serve the opposing party. TTAB tips emphasize that actual service—along with proper proof of service—is required at the time of filing.
If your service copy bounces back or is returned as undeliverable, the onus is on you to notify the Board and attempt alternative service promptly. A failure to do so can result in the opposition being dismissed as a nullity, especially in cases where timing is essential, such as with Madrid Protocol filings under Section 66(a).
Failing to Monitor Deadlines and Filing Periods
Timing is everything in TTAB proceedings. Missing the opposition deadline—even by one day—can bar you from filing entirely. One of the most essential TTAB tips is to calendar deadlines rigorously and plan ahead for potential technical issues with ESTTA.
It’s also important to remember that the TTAB will not suspend the opposition period to accommodate settlement discussions or pending amendments to the application. If you need more time, you must file for an extension of time to oppose—preferably electronically through ESTTA—to secure additional days or months.
Using the Wrong Filing Platform or Communication Channel
Even seasoned attorneys sometimes make the mistake of submitting TTAB documents through TEAS (Trademark Electronic Application System) or directing filings to the Examining Attorney. This detour can result in substantial delays or worse, an unprocessed filing. All oppositions and related filings must go through ESTTA, the Electronic System for Trademark Trials and Appeals. Submissions sent to other parts of the USPTO will not be redirected and may be ignored.
The TTAB has consistently emphasized that ESTTA is the only official and appropriate system for all filings in opposition and cancellation proceedings. For technical issues, parties should contact the TTAB’s IT staff directly at the ESTTA help email—not attempt to file by email or fax.
Overlooking the Limitations of Madrid Protocol Oppositions
Oppositions against applications filed under Section 66(a) via the Madrid Protocol come with strict limitations. For example, once filed, you cannot amend your notice of opposition to add new claims or grounds beyond those originally selected in the ESTTA cover form. No matter what’s written in your attached pleading, the scope of the case will be confined to what you checked off in that form.
Failing to understand this unique constraint can seriously undercut your opposition and leave you with fewer arguments than expected. Practitioners filing against Madrid Protocol-based applications should pay extra attention during the ESTTA submission process and double-check that the correct grounds are selected before filing.
Ignoring the Benefits of Early Strategic Planning
Many oppositions are rushed and reactive, filed in the final days of the opposition window without enough time to coordinate strategy. A thoughtful opposition is one that is preceded by early research, internal alignment with your client, and if applicable, an early communication attempt with the applicant to discuss resolution options. Relying solely on the opposition process without exploring other avenues can lead to unnecessary litigation costs and prolonged timelines.
Smart practitioners use early extensions of time to oppose not only to preserve their client’s rights but also to buy time for settlement talks, amendments to the application, or better pleadings. Filing the notice of opposition should be the result of deliberation—not desperation.
Final Thoughts: Learn from the TTAB’s Signals
The Trademark Trial and Appeal Board has provided ample guidance over the years on how to file oppositions correctly, through rules, decisions, and commentary. The most successful practitioners are those who treat each opposition as a strategic legal project, rather than a perfunctory filing.
From clearly articulated pleadings to precise service and accurate use of the TTAB’s systems, every detail matters. Avoiding these common mistakes can save time, reduce procedural hiccups, and improve your chances of success. And perhaps most importantly, it demonstrates to the Board that you respect the process—a subtle but powerful advantage in trademark litigation.