When practicing before the Trademark Trial and Appeal Board (TTAB), attorneys and trademark owners quickly realize that procedure is just as important as substance. Even the strongest arguments can falter if evidence is not presented correctly. One of the most important aspects of trial practice before the Board is understanding how to handle electronic evidence and file a proper Notice of Reliance. These steps often determine whether critical documents are admitted into the record or excluded entirely. Below, we’ll break down why electronic evidence management matters, how Notices of Reliance function, and offer TTAB tips to help practitioners navigate this stage of litigation effectively.
Why Evidence Management Matters at the Trademark Trial and Appeal Board
The TTAB functions differently from federal courts. It does not decide trademark infringement disputes or award damages. Its primary role is to determine whether a mark is entitled to federal registration. Because of this narrow scope, evidence before the TTAB is carefully confined to issues of registrability.
Electronic evidence has become central in proving claims or defenses. Parties regularly rely on website captures, social media posts, online articles, and digital advertising to demonstrate consumer perception, priority of use, or the strength of a mark. However, submitting this evidence is not as simple as attaching a screenshot. The TTAB has strict rules regarding how electronic materials are authenticated, introduced, and preserved in the record. Mismanaging this process can result in exclusion, leaving a party unable to prove its case.
The Role of a Notice of Reliance
A Notice of Reliance is one of the procedural tools that allows a party to introduce certain types of evidence without testimony. It essentially acts as a cover sheet that identifies the documents being submitted, states their relevance, and makes them part of the official record.
For example, Notices of Reliance are commonly used to introduce printed publications, official records, discovery responses, or internet materials that qualify as self-authenticating. By contrast, testimony depositions require live questioning and transcripts, but a Notice of Reliance allows the evidence to “speak for itself” without needing a witness.
Despite sounding straightforward, many Notices of Reliance are rejected or partially stricken because they fail to follow TTAB requirements. Practitioners must be meticulous about identifying the material, explaining its purpose, and ensuring that it falls within the categories permitted by the Board.
TTAB Tips for Managing Electronic Evidence
1. Authenticate Online Evidence Correctly
The TTAB permits the introduction of web pages, social media posts, and online articles through a Notice of Reliance, provided they clearly show the URL and the date of access or publication. A simple screenshot without identifying information is not enough. To strengthen admissibility, practitioners should capture full-page printouts or PDFs that contain the required metadata.
2. Explain Relevance in the Notice of Reliance
A Notice of Reliance is not a dumping ground for documents. Each submission must include a clear explanation of why the evidence is relevant to the issues at hand. For example, if an opposer introduces online advertisements to prove the fame of its mark, the Notice should explicitly connect those materials to consumer exposure and brand recognition. The Board is not obligated to guess at a party’s theory.
3. Organize Submissions Logically
Large electronic records can overwhelm the Board if not presented clearly. When filing hundreds of pages of exhibits, consider breaking them into smaller, logically grouped submissions. Indexes, tables of exhibits, and labeled attachments go a long way in making your evidence digestible for judges. This also reduces the risk of clerical errors when the record is reviewed later.
4. Avoid Overloading the Record
Quality outweighs quantity. Flooding the TTAB with unnecessary documents does not increase your chances of success and may frustrate the panel. Focus instead on curated, highly relevant evidence that supports your claims. A smaller, well-organized record is often more persuasive than thousands of pages of tangential material.
5. File Early and Double-Check Formatting
Technical errors can derail an otherwise strong filing. ESTTA, the Board’s electronic filing system, may reject oversized documents or improperly formatted PDFs. Practitioners should plan ahead by breaking down bulky filings into smaller parts and ensuring all documents comply with Board requirements. Submitting close to the deadline is risky because technical glitches cannot always be resolved in time.
Common Pitfalls to Avoid
One frequent mistake is assuming that attaching documents to a pleading automatically makes them part of the record. Unless properly introduced through testimony or a Notice of Reliance, such attachments carry no evidentiary weight. Another misstep is relying on discovery responses without filing them correctly. Written discovery cannot simply be referenced; it must be submitted during the appropriate testimony period, typically through a Notice of Reliance.
Additionally, parties sometimes attempt to introduce materials that go beyond the TTAB’s limited jurisdiction, such as evidence of trademark infringement or damages. Since the Board cannot decide those issues, such evidence will be disregarded, and the effort wasted.
Strategic Use of Notices of Reliance
A well-crafted Notice of Reliance can give a party a procedural advantage. For instance, requests for admissions and responses can be filed this way, which may lock the opposing party into factual concessions. Publicly available records from the USPTO or other government agencies can also be introduced efficiently through this method.
Because Notices of Reliance do not allow for cross-examination, they should be used strategically to admit documents that speak for themselves. When testimony or explanation is required, depositions remain the stronger route. Successful practitioners strike the right balance between these two methods to build a persuasive record.
Why TTAB Tips on Evidence Management Matter
At its core, TTAB litigation is about creating a clean and complete record for decision. The judges reviewing the case cannot consider evidence that is not properly introduced. Poor management of electronic evidence or defective Notices of Reliance can mean the difference between winning and losing a proceeding, regardless of the underlying merits.
For attorneys, mastering these procedures is not only about compliance but also about advocacy. Well-presented evidence demonstrates professionalism and respect for the tribunal. It also strengthens the credibility of arguments at both the briefing stage and during oral hearings.
Final Thoughts
Navigating the rules of the Trademark Trial and Appeal Board requires more than substantive knowledge of trademark law. It demands careful procedural strategy, particularly when it comes to managing electronic evidence and filing Notices of Reliance. By authenticating documents properly, explaining their relevance, organizing submissions, and avoiding common pitfalls, practitioners can ensure their evidence is considered by the Board.
These TTAB tips are not just technicalities, they are essential tools for building a compelling record and protecting your client’s trademark rights. In the end, success before the TTAB often comes down to the lawyer who knows not only what to prove, but how to prove it.