Navigating proceedings before the Trademark Trial and Appeal Board (TTAB) can be complicated enough without the added wrinkle of assignments, mergers, or acquisitions happening midstream. Yet, in today’s fast-moving commercial world, such changes in ownership or corporate structure are common. Whether you’re representing an assignor, an assignee, or trying to consolidate brand portfolios post-merger, understanding how to manage these events during ongoing TTAB proceedings is crucial for avoiding delays, miscommunication, or adverse rulings. This article offers key TTAB tips for managing assignments and mergers effectively and in compliance with the Board’s expectations.

Understanding the Role of the TTAB in Ownership Changes

The Trademark Trial and Appeal Board handles disputes over the right to register trademarks. When a company undergoes a merger or assigns its trademark rights to another entity during an opposition or cancellation proceeding, this affects who the proper party is before the Board. However, the TTAB does not automatically track changes in ownership unless they are formally brought to its attention. Even if an assignment is recorded with the USPTO Assignment Recordation Branch, that does not automatically substitute the assignee as a party to the proceeding. Instead, a formal motion to join or substitute the new party must be filed with the Board.

Many practitioners underestimate the need for this procedural step. It’s not enough to merely assume the assignee or acquiring party will step into the shoes of the assignor without notification. The Board generally requires a motion and supporting evidence demonstrating the change in ownership and explaining how the new party is affected by or entitled to participate in the pending case.

Assignor Still a Party? Yes, Often.

One of the most overlooked TTAB tips concerns the status of the assignor after an assignment has been filed. When the TTAB becomes aware of an assignment or merger during a proceeding, it typically allows the assignee to be joined rather than substituted. This means both the assignor and assignee remain parties to the case unless a specific request for substitution is made and granted.

This procedural nuance is deliberate. Retaining both parties allows the Board to ensure all relevant evidence and testimony, especially from the assignor, remain part of the record. It also avoids disruption where the assignor has been the active participant in discovery or settlement negotiations. This is especially true if the assignor retains information or access to witnesses necessary for trial.

Legal representatives must be vigilant in communicating to the TTAB how the parties wish to proceed, particularly when the assignor and assignee are represented by different counsel. If the Board is not informed, it will continue to direct correspondence and decisions based on the original party’s information, which can lead to critical deadlines being missed or communications going to the wrong firm.

Avoiding Double Correspondence and Communication Gaps

The TTAB has a strict policy against “double correspondence,” meaning it will not send orders and notifications to multiple representatives for the same party. If both the assignor and assignee want to be actively involved or are represented by different law firms, they must inform the Board of their desired communication protocol.

To avoid gaps, TTAB tips from seasoned practitioners recommend including multiple authorized email addresses in filings to ensure all interested parties receive updates. This is particularly helpful in cases involving consolidated proceedings or complex corporate changes. If there’s any ambiguity about who should receive service, it should be clarified through a formal filing—ideally included in the motion to join or substitute.

When the Board is properly notified, it can issue an order joining or substituting the assignee and update correspondence information accordingly. The more transparent and proactive parties are, the smoother the transition.

Timing and Docket Management Considerations

Timing is everything in TTAB litigation. If an assignment or merger takes place during a critical phase—such as discovery, briefing, or pre-trial disclosures—the risk of missteps increases. One common pitfall is failing to update the TTAB before deadlines expire, which can lead to an unintended default or waiver of rights.

Best practice is to notify the TTAB as soon as the assignment or corporate change is finalized, rather than waiting for the public recordation to appear in USPTO systems. Including the executed assignment agreement or a certified recordation notice as an exhibit to your motion can help expedite the Board’s action.

In some cases, the Board may act on its own (sua sponte) when it notices an assignment in the USPTO database, but this is not guaranteed and should not be relied upon. Instead, the responsibility lies with counsel to take initiative and keep the proceeding on track.

Assignment Doesn’t Excuse Prior Discovery Obligations

An important reminder for practitioners is that a change in ownership does not wipe the slate clean with respect to prior discovery obligations. If an assignor was served with interrogatories, document requests, or deposition notices before the assignment, the assignee typically inherits these responsibilities.

In fact, the assignor’s cooperation may still be required even after the assignee is joined. This makes coordination between the parties and their attorneys critical. When planning an assignment or merger during a TTAB case, factor in how ongoing obligations will be met, who controls the records, and whether any stipulations need to be filed with the Board to reflect these changes.

The Board’s preference is that parties work out practical solutions and file any necessary stipulations or consented motions to extend deadlines. If an assignee intends to introduce new counsel or modify the litigation strategy, it should take into account the status of the proceeding and any prior commitments made on the record.

Final Thoughts: Stay Proactive, Stay in Control

Among the most valuable TTAB tips for managing assignments and mergers is this: be proactive. The Trademark Trial and Appeal Board operates under strict procedural rules, and its goal is to keep cases moving efficiently toward resolution. Surprising the Board with last-minute ownership changes or expecting it to untangle party identity without guidance will rarely work in your favor.

A clearly presented motion to join or substitute, with supporting documentation and updated correspondence information, helps prevent delays and keeps the proceeding in compliance. Most importantly, it positions your client to assert or defend its rights without procedural confusion or risk of waiver.

Whether you’re handling a single opposition or a complex portfolio merger, being strategic and timely with your TTAB filings can mean the difference between a smooth transition and an avoidable setback.