When it comes to trademark disputes, many business owners and even attorneys assume that the Trademark Trial and Appeal Board (TTAB) can resolve every issue tied to a trademark. While the TTAB is a critical forum for resolving conflicts over the registrability of marks, its jurisdiction is much narrower than most people realize. Failing to understand the TTAB’s limits often leads to unnecessary motion practice, wasted time, and disappointed clients.

This article will walk you through what the TTAB can and cannot decide, why its limited scope matters, and some essential TTAB tips to help you avoid common pitfalls.

What Is the TTAB’s Jurisdiction?

The TTAB is an administrative tribunal within the U.S. Patent and Trademark Office. Its authority extends exclusively to determining whether a trademark should be registered, maintained, or cancelled. This means that its role is confined to registration rights, not broader disputes over actual use of the mark in commerce.

For example, in an opposition proceeding, the TTAB may decide whether a pending application should move forward to registration. In a cancellation proceeding, the Board can rule on whether an existing registration should remain on the Principal or Supplemental Register. Similarly, in ex parte appeals, the TTAB reviews refusals issued by examining attorneys.

What the Board does not do, however, is decide issues of trademark infringement, unfair competition, or damages. Those disputes must be pursued in federal or state court.

What the TTAB Cannot Decide

A common mistake is to plead claims or defenses before the TTAB that are outside its jurisdiction. Parties sometimes attempt to turn TTAB cases into mini-litigation battles over infringement, only to see those arguments struck from the record.

The TTAB does not have jurisdiction over:

1. Trademark infringement claims. If your client believes a competitor’s use of a mark in commerce is causing confusion, the TTAB is not the place to seek injunctive relief or monetary damages. Only a federal court can decide infringement.

2. Unfair competition. The TTAB cannot address business torts like passing off or trade dress misappropriation.

3. Contract disputes. Issues involving licensing agreements, coexistence agreements, or settlement enforcement must be taken to a court of law.

4. Use in commerce. While the TTAB can evaluate priority of use when necessary for registration decisions, it does not issue binding rulings on the scope of rights in the marketplace.

In short, if the issue is about how trademarks are being used in the real world rather than whether they can or should be registered, it is beyond the TTAB’s reach.

Why Misunderstanding Jurisdiction Leads to Problems

Filing allegations that belong in court rather than before the TTAB does more than confuse the issues. It can waste your client’s money, delay the proceeding, and damage your credibility with the Board. Motions to strike improper claims are routinely granted, and time spent briefing those motions is time that could have been used building a stronger registration-based case.

Consider the example of pleading trademark infringement under Section 43(a) of the Lanham Act. Because the TTAB’s jurisdiction is limited to registration, such claims are nonstarters. Defendants can move to strike them immediately, and the Board has little patience for attempts to repackage infringement claims as false suggestion or dilution arguments.

TTAB Tips: Staying Within the Lines

One of the most practical TTAB tips is to draft your pleadings with the Board’s jurisdiction in mind. Ask yourself: is this claim about the right to register a trademark, or is it about something else? If it falls into the “something else” category, it doesn’t belong before the TTAB.

For plaintiffs, this means focusing on valid statutory grounds for opposition or cancellation, such as likelihood of confusion under Section 2(d), descriptiveness under Section 2(e), or dilution under Section 43(c). If a registration is over five years old, make sure to tailor claims accordingly, since certain grounds are no longer available.

For defendants, it means resisting the temptation to throw in boilerplate defenses like laches or estoppel without careful consideration. These defenses are often inapplicable before the TTAB and may invite motions to strike.

Another tip is to remember the evidentiary scope. The TTAB operates under the Federal Rules of Evidence, but evidence must be relevant to registration issues. Extensive inquiries into marketplace confusion or damages will be rejected. Instead, keep your discovery requests and testimony focused on matters like priority of use, channels of trade, or fame of a mark.

When to Go Beyond the TTAB

There are times when pursuing relief in federal court, either in conjunction with or instead of a TTAB proceeding, is the better strategy. If your client needs injunctive relief to stop a competitor from using a mark, the TTAB cannot help. If damages are sought, only a court can provide them.

However, a TTAB proceeding can complement litigation. For instance, a party may oppose a pending application at the TTAB while simultaneously pursuing infringement claims in federal court. The TTAB may suspend its case pending the outcome of the court action, recognizing that courts can resolve issues outside its jurisdiction.

The Value of a Clear Strategy

Understanding what belongs in a TTAB case and what does not is more than a procedural nicety, it is a matter of strategy. Clients are better served when their attorneys recognize the boundaries of the TTAB and allocate resources accordingly.

An opposition or cancellation that sticks to jurisdictional limits can proceed more smoothly, with fewer detours into unnecessary motion practice. Conversely, filings cluttered with overreaching claims signal inexperience and risk undermining the client’s position.

The TTAB itself has cautioned practitioners against expanding its jurisdiction through creative pleading. Attempting to disguise infringement claims as false suggestion of a connection, for instance, is an approach that will almost always fail.

Conclusion

The Trademark Trial and Appeal Board plays a vital role in shaping the federal trademark register, but it is not a substitute for court. Recognizing its limited jurisdiction and respecting those boundaries is one of the most important TTAB tips for practitioners and brand owners alike. By staying focused on registration issues, you reduce wasted time, avoid costly missteps, and increase the chances of success for your client’s case.

When in doubt, ask yourself: am I arguing about registration, or about real-world marketplace disputes? If it’s the latter, the TTAB is not the right forum. Knowing that distinction is the foundation of effective trademark litigation strategy.