In proceedings before the Trademark Trial and Appeal Board (TTAB), motions play a significant role in shaping the trajectory of a case. While many practitioners are familiar with motions to dismiss or motions to compel, one tool that is sometimes overlooked is the motion to strike. Used correctly, a motion to strike can narrow the issues in dispute, remove irrelevant or improper content from the record, and keep the focus on the legal questions that truly matter. Used incorrectly, however, it can waste time, increase costs, and even undermine your credibility with the Board.

This guide explores when and how to file a motion to strike, the rules that govern it, and practical TTAB tips to ensure your motion has the best chance of success.

Understanding the Purpose of a Motion to Strike

A motion to strike is designed to remove specific material from a pleading because it is improper, immaterial, or beyond the Trademark Trial and Appeal Board’s limited jurisdiction. The TTAB’s role is narrowly focused on determining whether a mark should be registered, not on adjudicating trademark infringement or awarding damages. This means that pleadings that stray into infringement allegations, unfair competition claims, or other matters reserved for federal district courts are fair game for a motion to strike.

The underlying goal is efficiency. By removing unnecessary or legally irrelevant claims, the TTAB can resolve disputes more quickly and avoid wasting resources on arguments that it has no authority to decide.

Common Grounds for a Motion to Strike in TTAB Proceedings

One of the most common grounds for filing a motion to strike is when a pleading contains allegations that go beyond the TTAB’s authority. For example, the Board has consistently held that it cannot decide cases under Section 43(a) of the Lanham Act because such claims fall outside its jurisdiction. If an opposition or cancellation petition includes a Section 43(a) claim disguised as a likelihood of confusion argument, a motion to strike is likely warranted.

Another frequent scenario is the inclusion of “boilerplate” affirmative defenses that lack factual support. Defenses such as “failure to state a claim,” “laches,” or “acquiescence” are often included reflexively but may be subject to removal if they do not apply to the specific circumstances of the case. For example, laches is generally not available as a defense in opposition proceedings, because the statute of limitations begins only when the registration issues is not when the application is filed.

Timing Your Motion to Strike

The timing of a motion to strike is critical. TTAB practice generally requires such motions to be filed before trial, often soon after the offending pleading is served. In fact, the earlier the motion is filed, the better the chances of success, as the Board prefers to resolve procedural issues at the outset rather than midstream.

Waiting too long to raise an objection can lead to waiver, meaning the improper allegations will remain part of the case. This can force you to spend time and resources addressing irrelevant claims in discovery or at trial.

A good rule of thumb is to review every pleading as soon as it is received and evaluate whether any allegations or defenses are objectionable. If so, prepare and file the motion promptly and ideally before the deadline for your responsive pleading.

Drafting an Effective Motion to Strike

When drafting a motion to strike before the Trademark Trial and Appeal Board, clarity is paramount. The Board is not interested in lengthy recitations of general legal principles; it wants to see a concise explanation of why the material should be removed and how its presence could prejudice the proceedings.

Begin by identifying the specific portions of the pleading you are challenging. Quote them directly so there is no ambiguity about what you want removed. Then, explain the legal basis for striking them, citing relevant sections of the Trademark Rules, the TBMP (Trademark Trial and Appeal Board Manual of Procedure), and applicable case law.

Finally, address why the objectionable material matters. The TTAB will be more inclined to strike content that is not only improper but also potentially confusing, misleading, or prejudicial to the fair resolution of the case.

Strategic Considerations

Although a motion to strike can be a valuable tool, it should not be used indiscriminately. Filing such a motion over minor or inconsequential allegations can irritate both the Board and your opposing counsel, making cooperation in later stages more difficult.

Instead, reserve motions to strike for situations where the benefit clearly outweighs the cost. For example, removing an inapplicable defense early on can save months of unnecessary discovery and motion practice. Similarly, striking allegations that go beyond the TTAB’s jurisdiction can keep the proceeding focused on registrability—the issue the Board is actually empowered to decide.

It’s also worth considering whether the Board might grant the opposing party leave to amend the defective pleading. Often, even if a motion to strike is granted, the other side will be given an opportunity to cure the defect. This means your motion may not eliminate the issue entirely, but it can still force your opponent to sharpen their pleadings, which may work in your favor.

TTAB Tips for Success

Based on practical experience and the Board’s procedural guidance, several strategies can improve your chances of success with a motion to strike:

1. Know the TTAB’s jurisdictional limits – Before you draft your motion, make sure the objectionable content truly falls outside the Board’s authority.

2. Act promptly – File your motion as soon as possible to avoid claims of waiver.

3. Be specific and concise – Identify the exact language you want stricken and explain why it is improper.

4. Avoid overuse – Only file a motion to strike when there is a clear strategic benefit.

5. Anticipate amendments – Be prepared for the opposing party to revise their pleading if your motion is granted.

By following these TTAB tips, you can ensure that your motion is both persuasive and procedurally sound.

Conclusion

A motion to strike is not the most glamorous tool in TTAB litigation, but it is often one of the most effective for keeping a case on track. By removing irrelevant or improper allegations early in the process, you can streamline discovery, reduce costs, and improve your overall litigation posture.

The Trademark Trial and Appeal Board rewards practitioners who focus on the real issues in dispute and respect its limited jurisdiction. With a well-timed, well-drafted motion to strike and a strategic understanding of when it is truly worth filing. You can position your case for a more efficient and favorable outcome.

 

In TTAB practice, procedural mastery often determines the difference between winning and losing. Knowing how to wield a motion to strike effectively is just one more way to strengthen your toolkit.