Trademark litigation doesn’t always play out in federal courtrooms. Often, disputes over registration are resolved through a specialized forum within the U.S. Patent and Trademark Office: the Trademark Trial and Appeal Board, commonly known as the TTAB. This quasi-judicial body handles cases involving oppositions, cancellations, and appeals of examiner refusals.
For attorneys, businesses, and brand owners alike, understanding how TTAB proceedings unfold is critical. Each stage—from the initial filing to the final ruling—comes with its own procedures, pitfalls, and strategic considerations. Drawing from official TTAB guidance, particularly the July 2020 TTAB Tips publication, this guide outlines how to successfully navigate the TTAB process from beginning to end.
The Foundation of a TTAB Case: Filing a Complaint
TTAB proceedings begin when a party initiates an action by filing either a notice of opposition (to challenge a pending application) or a petition to cancel (to challenge an existing registration). These pleadings are submitted electronically through the TTAB’s ESTTA filing system.
Success in these early stages hinges on clarity. A strong complaint clearly states the legal basis for the challenge—such as likelihood of confusion, descriptiveness, or abandonment—and includes factual support. Using the appropriate statutory language and organizing claims under separate headings helps ensure the Board and the other party understand the nature of the dispute.
In cases involving registered marks, it’s also important to include documentation showing the current status and ownership of the cited registration. This information can be pulled directly from USPTO records and attached to the complaint for automatic inclusion in the case record.
Once filed, the Board issues a notice of institution, assigns a proceeding number, and sets the litigation schedule.
Responding to the Complaint: The Answer Phase
The party on the receiving end of the complaint—typically the applicant or registrant—must file a formal response, or answer, within 40 days. The answer should address each allegation specifically, stating whether it is admitted, denied, or lacks sufficient knowledge to admit or deny.
General denials or unsupported affirmative defenses are discouraged. In particular, defenses like “failure to state a claim” are rarely useful and can be challenged by motion. Instead, if the complaint is deficient, the proper response is a motion to dismiss.
If the respondent wishes to challenge the complainant’s registration or application in return, this must be raised through a counterclaim. These counterclaims must be timely and based on grounds such as abandonment, fraud, or nonuse.
Meeting of the Minds: The Discovery Conference
Before discovery officially begins, the parties are required to hold a discovery conference. During this meeting, they must discuss the claims and defenses, exchange basic information, consider settlement possibilities, and set parameters for the discovery process.
This conference can occur via phone, video call, or in person. In cases where one side is self-represented or when disputes arise, the Board can participate in the conference upon request. The TTAB encourages early cooperation to reduce unnecessary motion practice later.
Importantly, this is the point where parties can also discuss whether to pursue Accelerated Case Resolution (ACR), a faster and more streamlined alternative to traditional litigation.
Sharing the Basics: Initial Disclosures
Thirty days after the opening of discovery, each side must provide initial disclosures. These include the names of witnesses and a summary of the documents and information they intend to rely on during trial. These disclosures set the stage for more detailed information exchanges later.
Without completing this step, a party cannot serve formal discovery requests. This procedural gatekeeping ensures a level playing field and prevents premature or excessive discovery tactics.
In many cases, parties agree to produce the relevant documents up front, which can significantly reduce the need for formal discovery down the line.
Digging Deeper: Discovery and Evidence Gathering
Discovery is the period when each side investigates the strengths and weaknesses of the other’s position. Parties may serve interrogatories, requests for documents, and requests for admissions—each capped at 75 unless the Board approves more. Depositions may also be conducted, although each side is limited to 10.
The Board’s rules require that discovery requests be served early enough to allow responses before the close of the discovery period. Late-served requests that require responses after the deadline are generally invalid unless both sides agree otherwise.
Careful planning is essential. If discovery responses are vague, incomplete, or missing altogether, a party can file a motion to compel. However, before involving the Board, parties must first try to resolve disputes themselves in good faith.
Another key TTAB tip: parties should not ignore or delay discovery responses. Failing to respond on time may result in waived objections—or worse, the automatic admission of facts.
Strategic Motions and Procedural Pivots
TTAB litigation often includes procedural motions. Common examples include motions to extend deadlines, motions to strike improper defenses, or motions to compel discovery responses.
If a deadline has not yet passed, a party can ask for more time by showing good cause. If the deadline has already lapsed, the standard becomes “excusable neglect”—a much higher bar.
When it comes to motions, timing matters. Filing a motion automatically pauses the case schedule on all matters unrelated to the motion, so parties must plan carefully to avoid disruption.
Another critical procedural safeguard is the Board’s stance on communication. Service of papers must be made by email, and parties are responsible for maintaining up-to-date contact details and checking for all Board correspondence.
Getting to the Point: Trial Procedures
Unlike a courtroom trial, a TTAB “trial” takes place entirely in writing. Each party is assigned a testimony period to submit evidence, including declarations, deposition transcripts, and exhibits. This is followed by briefing periods where parties argue their case based on the record.
Pretrial disclosures must be filed before the testimony period begins. These disclosures identify the witnesses a party intends to use and the general subject matter of their testimony. Failing to disclose a witness or document can result in it being excluded from the record.
Once the plaintiff’s testimony period ends, the defendant has their opportunity, followed by a rebuttal period for the plaintiff. The trial schedule is strict, and the Board rarely grants extensions without a strong justification.
It’s worth noting that any evidence submitted outside the designated testimony periods—such as new documents attached to final briefs—will likely be disregarded.
Wrapping It Up: Briefing and Final Arguments
After the testimony periods conclude, both sides submit final briefs summarizing their positions. The plaintiff’s brief comes first, followed by the defendant’s, and then a final rebuttal brief from the plaintiff, if desired.
Briefs must be thorough but concise, typically limited to 25 pages. Every factual claim must be tied to evidence already in the record. Citing directly to TTABVUE or TSDR files strengthens credibility and makes it easier for the Board to locate the supporting material.
If requested, the Board may grant an oral hearing. This allows each party up to 30 minutes to present their case live before a panel of judges. While not required, oral hearings can provide a final opportunity to emphasize key arguments or clarify confusing aspects of the record.
Reaching the Finish Line: Final Decision and Aftermath
After reviewing all evidence and arguments, the Trademark Trial and Appeal Board issues a final decision. This written opinion determines whether the challenged mark may proceed to registration or whether an existing registration will be cancelled.
Decisions are either precedential or non-precedential. While only the former have binding authority on future cases, both provide insight into the Board’s reasoning.
If a party is dissatisfied with the outcome, options include requesting reconsideration, appealing to the U.S. Court of Appeals for the Federal Circuit, or seeking review in district court. However, no new evidence can be introduced during an appeal, making it essential to build a complete and persuasive record during the original proceeding.
Why Understanding TTAB Procedure Matters
Successfully litigating a case before the Trademark Trial and Appeal Board requires more than just a strong legal argument. It demands careful adherence to procedural rules, mastery of the filing systems, and a deep understanding of how the TTAB handles everything from discovery to evidence submission.
Many of the most avoidable mistakes—missed deadlines, improperly submitted evidence, or failure to respond to discovery—stem from procedural missteps rather than the merits of the case. The TTAB Tips shared by the Board help illuminate the expectations at every turn, allowing practitioners to focus on substance rather than scramble over process.
For those navigating trademark disputes—especially brand owners seeking to protect valuable marks or defend them against cancellation—understanding the ins and outs of TTAB litigation is more than just a professional advantage. It can be the deciding factor in whether a mark is protected or lost.