Navigating a dispute before the Trademark Trial and Appeal Board (TTAB) is not unlike preparing for trial in federal court. While TTAB proceedings are administrative in nature and focus solely on the right to register a mark, the procedural demands and strategic decisions you make before trial can significantly impact the outcome. Too often, parties underestimate the importance of the pre-trial phase, leading to missteps that weaken their case or cause unnecessary delays. By understanding and implementing best practices early on, practitioners can lay the groundwork for a smooth and compelling presentation of their client’s position.

This article outlines key TTAB tips and best practices to follow during the pre-trial phase of inter partes proceedings.

Understand the Pre-Trial Framework

Before anything else, it is critical to appreciate the structure of TTAB inter partes proceedings. These include oppositions, cancellations, and concurrent use proceedings. While TTAB does not hear claims of trademark infringement or award damages, it does evaluate the registrability of marks based on grounds like likelihood of confusion, descriptiveness, or fraud.

The pre-trial phase involves the period between the institution of the proceeding and the start of the testimony periods. During this window, parties engage in a range of activities, including pleadings, discovery, motions, and settlement discussions. Each stage requires careful planning and procedural discipline.

File Clear, Statutory-Based Pleadings

Every TTAB case begins with the filing of a notice of opposition or petition for cancellation, and the quality of this initial pleading matters more than many realize. It should clearly state the legal grounds under the Trademark Act and set forth the factual basis for the claim.

For example, if alleging likelihood of confusion under Section 2(d), the complaint should include the plaintiff’s trademark rights (such as a valid registration or prior common-law use) and how the defendant’s mark is likely to cause confusion among consumers. Avoid blending claims or invoking irrelevant doctrines such as Section 43(a), which the Board does not adjudicate. Also, resist the urge to attach exhibits unless they are critical; they will not be part of the trial record unless formally introduced during the testimony period.

One TTAB tip that seasoned practitioners follow: break out multiple claims under separate headings for clarity. This not only helps the Board but also prevents unnecessary motion practice by the opposing party.

Observe Service Requirements Diligently

Proper service of the notice of opposition or petition for cancellation is essential to initiate a TTAB proceeding. The TTAB does not serve the complaint for you; the plaintiff must serve it directly on the applicant or registrant, and proof of service must accompany the filing. Failure to include proper service details can result in dismissal or delays.

Take care to identify the correct correspondence address in the USPTO records. If there is an appointed attorney or domestic representative, service must go to that individual. For foreign parties with no U.S. counsel or domestic representative, service must be made abroad, which may affect timing. Document every step and keep a clear record of your efforts in case service is later challenged.

Communicate and Negotiate in Good Faith

Many inter partes disputes resolve before reaching the trial phase, but poor communication can derail even promising settlement talks. While TTAB allows parties to request extensions and suspensions to facilitate negotiations, those requests must be filed timely and reflect actual progress.

A common TTAB tip is to memorialize every conversation or agreement in writing, preferably as a stipulation filed with the Board. Misunderstandings about whether a case is “on hold” for settlement can lead to missed deadlines and default judgments. Remember: a suspension is not automatically granted just because both parties are talking. A formal request must be filed through ESTTA, the TTAB’s electronic filing system.

Master the Discovery Conference

Following the close of pleadings, parties must engage in a mandatory discovery planning conference under Rule 26(f). This meeting is not just a formality. It is the cornerstone for setting the tone of the litigation and for planning the exchange of disclosures and discovery. Topics discussed must include the possibility of settlement, the scope of discovery, and the use of expert testimony.

If either party feels that the conference would benefit from TTAB guidance, a request can be filed via ESTTA to have a Board interlocutory attorney participate. Involving the Board can help neutralize tension or provide clarity on procedural matters, particularly in contentious disputes.

Make Initial Disclosures Early

The discovery phase cannot proceed until each party has served their initial disclosures, which include the identities of individuals with knowledge of relevant facts and categories of documents the party may use to support its claims or defenses. These disclosures are mandatory and must be served within 30 days after the opening of the discovery period.

Practitioners should prepare these disclosures during the pre-trial phase and serve them early to begin meaningful discovery immediately. Waiting too long risks running out of time for follow-up requests or motion practice. TTAB tips often recommend delivering initial disclosures during the discovery planning conference itself, saving time and positioning the party to serve discovery requests the moment the period opens.

Use ESTTA Strategically

The TTAB strongly encourages all filings to be made electronically through the Electronic System for Trademark Trials and Appeals (ESTTA). Not only does this ensure faster processing, but it also eliminates many clerical delays and routing errors. Practitioners should become fluent with ESTTA’s interface and know which forms are available for consent motions, oppositions, and extensions.

Pay attention to system announcements and tips posted on the TTAB homepage. These often include valuable insights about filing bulky documents, tracking errors, or upcoming changes in procedure. For example, one tip is to break up large filings (over 300 pages) into logical segments to ensure smooth upload and docketing.

Avoid Unauthorized Filings and Misrouting

One of the most easily avoidable errors is filing papers in the wrong USPTO division. Do not submit opposition-related documents via TEAS or to examining attorneys. All filings for TTAB proceedings must go through ESTTA or be addressed directly to the Board. Misrouted filings can delay your case or, worse, fail to be considered at all.

Additionally, avoid contacting Board attorneys by email unless invited to do so. The TTAB prefers procedural inquiries to be handled by phone and filings to be made through the proper channels.

Conclusion

The pre-trial phase in TTAB proceedings is a critical period that can shape the direction and ultimate success of your case. From filing precise pleadings to observing service requirements, communicating effectively with opposing counsel, and leveraging the tools available through ESTTA, each step is an opportunity to position your client for success.

By integrating these TTAB tips and understanding the expectations of the Trademark Trial and Appeal Board, attorneys can avoid common pitfalls and demonstrate the diligence and professionalism that TTAB proceedings demand. The key is preparation, precision, and proactive communication—principles that not only apply in TTAB practice, but in all areas of trademark litigation.