Introduction

Trademark litigation at the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) can often stretch over months or even years. During that time, it is not uncommon for ownership of the trademark at issue to change hands. A business may sell its portfolio of marks, merge with another company, or transfer a registration to a new entity. When that happens, the TTAB must decide whether the new owner should be added to, or substituted for, the original party. This process, known as joinder and substitution, is critical to ensuring the case proceeds with the correct parties and that evidence and discovery remain valid.

For practitioners and businesses involved in oppositions or cancellations, understanding joinder and substitution is essential. Mishandling an assignment can create confusion, delay proceedings, or even jeopardize the enforceability of rights. The following guide provides an overview of how joinder and substitution are handled at the TTAB, with practical TTAB tips to help navigate the process smoothly.

What Do Joinder and Substitution Mean?

Joinder occurs when the TTAB adds a new party to an existing proceeding without removing the original party. Substitution, on the other hand, takes place when the new party replaces the original litigant.

Imagine that a company defending its application in an opposition sells the trademark to another entity. The TTAB may choose to join the new owner with the old owner, keeping both as parties, to ensure that discovery and testimony can still be obtained from the assignor. Substitution would occur only when the new owner steps directly into the shoes of the old owner and becomes the sole party.

The distinction matters because evidence collected during discovery often involves individuals or entities tied to the original owner. Keeping the assignor in the case allows both sides to complete the record without losing access to relevant information.

Why Assignments Complicate TTAB Proceedings

Assignments can create procedural challenges because the TTAB requires accurate party information in every filing. When a mark changes ownership during an opposition or cancellation, the correspondence address, service obligations, and representation may all shift. If not promptly updated, communications from the Board may be misdirected, deadlines missed, and filings rejected.

In addition, assignments sometimes trigger disputes about whether the assignee inherits all defenses or liabilities of the assignor. While the TTAB is primarily concerned with the right to register a mark, party changes can affect strategy, settlement, and even the availability of witnesses.

TTAB’s Approach to Joinder

The Trademark Trial and Appeal Board generally favors joinder when an assignment occurs during a pending case. By joining the assignee, the Board ensures that both the assignor and assignee are formally recognized. This approach makes it easier for the opposing party to conduct discovery against the original owner, while also allowing the assignee to defend its newly acquired rights.

For example, if an applicant sells its trademark during an opposition, the Board will usually issue an order joining the new owner. The original applicant remains a party, ensuring that testimony and documents remain accessible. This protects the integrity of the proceeding by preventing gaps in the evidentiary record.

When Substitution is Appropriate

Substitution is more straightforward than joinder but occurs less frequently. The TTAB may substitute a new owner when it is clear that the assignor has transferred all rights and interests in the mark and no further participation is required from the original party. Substitution is also more likely when the parties stipulate to it or when the Board determines that the assignor has no ongoing role.

However, substitution carries risks. If evidence or testimony is needed from the assignor, but the assignor is no longer a party, the opposing side may face obstacles in compelling that information. For this reason, practitioners often prefer joinder, at least until discovery and testimony have concluded.

Practical TTAB Tips for Handling Assignments

Successfully navigating joinder and substitution requires attention to detail and proactive communication with the Board. Here are some practical strategies to keep in mind:

First, always notify the Board of any assignment, merger, or acquisition affecting a party to a proceeding. Although the TTAB can order joinder on its own initiative, the burden is on the parties to file a motion requesting joinder or substitution. Filing early avoids confusion about who should receive correspondence or appear at hearings.

Second, update all correspondence addresses promptly. The Board will not conduct duplicate correspondence, meaning it will send communications to one attorney or firm per side. To avoid missed deadlines, the assignee should provide explicit instructions about future correspondence.

Third, include supporting documentation when requesting joinder or substitution. A copy of the assignment record from the USPTO or a merger agreement excerpt is often required to demonstrate the transfer of rights. Without evidence, the TTAB may delay action or deny the request.

Fourth, communicate clearly with co-counsel or multiple firms representing different parties. In consolidated proceedings with several plaintiffs or defendants, coordination is crucial. The Board allows parties to provide multiple email addresses, which can help ensure that all relevant attorneys remain informed.

Finally, consider the strategic implications of joinder versus substitution. If discovery against the assignor is critical, requesting joinder may be the better approach. If the case is at a late stage and the assignor’s role is minimal, substitution may simplify matters.

Common Pitfalls to Avoid

Practitioners frequently make the mistake of failing to alert the TTAB about an assignment, assuming that the change recorded at the USPTO will automatically flow into the Board’s docket. This is not the case. The TTAB maintains its own records, and unless a motion is filed, the assignee may not be recognized.

Another common pitfall is expecting the Board to correspond with both the assignor and assignee. As noted, the TTAB communicates with one representative per side, so clarity in correspondence instructions is vital.

Additionally, failing to file timely motions after an assignment can result in the Board continuing to treat the original party as the sole litigant. This can complicate settlement negotiations or even undermine the enforceability of the proceeding’s outcome.

Conclusion

Assignments and ownership changes are a normal part of business, but in the context of TTAB proceedings, they add layers of complexity. Understanding how joinder and substitution function ensures that the right parties remain accountable and that proceedings continue without unnecessary delay.

The Trademark Trial and Appeal Board has developed a practical framework to address these issues, generally favoring joinder to preserve access to evidence while allowing substitution when appropriate. For practitioners and businesses alike, the key is proactive communication, precise filings, and an awareness of how assignments impact strategy.

By following these TTAB tips, parties can avoid procedural missteps and keep their case on track, even when ownership of the mark changes midstream.