Settlement negotiations are an essential part of almost every legal dispute, and proceedings before the Trademark Trial and Appeal Board (TTAB) are no exception. In fact, the TTAB encourages parties to explore settlement before pouring time and money into trial. But while compromise may be the ultimate goal, practitioners often make a costly mistake: they delay discovery in hopes that the case will settle. Unfortunately, settlement discussions rarely suspend obligations automatically. Without careful planning, a party may discover too late that it has missed critical deadlines or lost strategic opportunities.

This article explores the pitfalls of delaying discovery while negotiating settlement, and offers practical TTAB tips to help attorneys and business owners navigate this tricky balance.

Settlement Is Encouraged, But Deadlines Still Matter

The TTAB recognizes that most trademark disputes should be resolved through business solutions rather than drawn-out litigation. To that end, the Board liberally grants motions to suspend proceedings while parties are engaged in genuine settlement negotiations. The key, however, is that such suspension must be requested. Simply engaging in settlement talks does not pause discovery obligations.

Many practitioners assume that informal discussions with opposing counsel are enough to preserve deadlines. This is where mistakes occur. Discovery may close, testimony periods may pass, and deadlines for filings may expire, all while the parties are trading draft agreements. Once the deadlines are gone, a party cannot simply explain that it was “busy negotiating” and expect relief.

One of the most important TTAB tips is to file a formal motion to suspend if settlement talks are underway. Doing so preserves both sides’ resources and prevents the risk of defaulting on procedural obligations.

The Consequences of Delaying Discovery

Delaying discovery in the hope of settlement comes with real risks that can undermine a case. First, postponing discovery until the last days of the period compresses the schedule and reduces the opportunity to follow up on incomplete responses. If an opposing party provides evasive answers or withholds documents, there may not be enough time left to file a motion to compel before discovery closes.

Second, postponement creates evidentiary gaps. Discovery is the foundation of a TTAB trial record, and unlike federal court, the TTAB has no mechanism for late supplementation without Board approval. Waiting too long can leave a party unable to introduce key documents or testimony. Worse, an adversary may object to late-filed evidence, leaving the record incomplete.

Finally, delays can weaken settlement leverage. The party who is unprepared for trial is more likely to accept unfavorable terms simply to avoid the risk of losing at the Board. Settlement discussions should strengthen, not undermine, a party’s bargaining position.

Balancing Settlement Talks With Discovery

So how can practitioners balance the dual goals of settlement and discovery? The first step is to recognize that settlement negotiations and discovery are not mutually exclusive. Parties can and should pursue both simultaneously until the TTAB formally suspends the case.

For example, if the discovery period is open, an opposer can serve interrogatories or document requests while continuing to discuss settlement. Doing so ensures that, if negotiations collapse, the party will not be scrambling to obtain evidence at the last minute. Moreover, the process of exchanging discovery often clarifies the strength of each side’s case, which can drive settlement discussions toward a realistic resolution.

Another effective practice is to agree in writing with opposing counsel to request suspension for settlement. When the Board grants the motion, the case deadlines freeze, and neither side risks default. Importantly, the request should be filed before any discovery deadlines expire. Waiting until after a deadline passes can force a party into the difficult position of seeking relief based on “excusable neglect”, a standard that is rarely satisfied.

Strategic Use of Motions to Suspend

The TTAB’s willingness to grant suspensions is one of the most overlooked tools available to litigants. Unlike federal courts, where obtaining stays can be challenging, the Board routinely approves suspensions for settlement if both parties consent. In fact, the Board may even suspend sua sponte if it notices multiple consented extensions citing settlement discussions.

However, parties should not abuse this flexibility. The TTAB has a strong interest in moving cases forward, and it will require evidence of progress in long-pending cases. Simply repeating “settlement discussions are ongoing” without specifics can result in denial. Attorneys should be prepared to explain what steps have been taken, such as exchanging draft agreements or resolving specific business terms.

The key takeaway is simple: always request a suspension rather than assuming informal negotiations will suffice. This is one of the most practical TTAB tips for avoiding costly mistakes.

Practical Lessons From Experience

Seasoned practitioners often share cautionary tales of settlement talks gone wrong. One common scenario involves a client who spends months negotiating coexistence terms, only for talks to collapse days before discovery closes. Without prior discovery requests, the attorney is left with no evidence to present at trial. The case is either dismissed for failure to prosecute or lost on the merits due to lack of proof.

Another scenario involves parties who verbally agree to extend deadlines while negotiating, but fail to file a written stipulation. When the relationship sours, one side insists on strict enforcement of deadlines. The other side, having relied on the handshake agreement, suddenly finds itself in default.

Both situations illustrate why written stipulations and formal Board filings are critical. No matter how cordial negotiations may seem, relying on trust rather than procedure is a dangerous gamble in TTAB practice.

Final Thoughts

Settlement is a valuable goal in any TTAB dispute, but it should never come at the expense of procedural diligence. Delaying discovery in hopes of compromise can backfire, leaving a party without the evidence it needs to succeed. The best approach is to pursue discovery and settlement in parallel, filing timely motions to suspend when appropriate, and keeping a careful eye on deadlines.

The Trademark Trial and Appeal Board is not forgiving of parties who miss deadlines due to informal understandings. By following these TTAB tips, practitioners can protect their clients’ interests, preserve bargaining power, and avoid the harsh consequences of procedural missteps. In short, never let settlement optimism blind you to the realities of TTAB practice: deadlines matter, and discovery delayed is often discovery denied.