When parties find themselves in a contested case before the Trademark Trial and Appeal Board (TTAB)—whether it’s an opposition or a cancellation proceeding—confidential business information often becomes part of the discovery process. Sensitive sales data, marketing strategies, licensing agreements, and product development plans may be relevant to the dispute, yet disclosure without safeguards could harm a party’s competitive position.

To address this concern, the TTAB has implemented a standard protective order that applies automatically to all inter partes proceedings, unless the parties agree to an alternative arrangement approved by the Board. While many practitioners are aware of its existence, not everyone understands how to use it effectively to protect their client’s interests. The following TTAB tips will help you navigate and apply the standard protective order in a way that balances discovery obligations with the need for confidentiality.

Understanding the Purpose of the Standard Protective Order

The TTAB’s standard protective order is designed to give parties confidence that sensitive information disclosed during discovery will not be misused. It provides a formal framework that restricts how confidential material can be accessed, shared, and used throughout the proceeding.

Importantly, this order applies automatically—there’s no need to file a motion to have it entered into effect. However, this does not mean that confidential treatment is automatic for every document. Parties must actively designate the materials they want protected and follow the procedures outlined in the order.

Categories of Protected Information

The standard protective order allows parties to designate information as either Confidential or Highly Confidential – Attorneys’ Eyes Only. This distinction matters because it determines who can see the information.

Confidential information may be viewed by the parties themselves, their attorneys, and approved experts. By contrast, Attorneys’ Eyes Only material is typically limited to outside counsel and approved experts, and is withheld from the parties themselves to avoid competitive harm. For example, a company might be willing to show its general sales numbers to the opposing party under a Confidential designation, but keep detailed customer lists restricted to Attorneys’ Eyes Only.

Steps for Invoking the Standard Protective Order

While the protective order is in place from the outset of a TTAB proceeding, it’s up to each party to invoke its protections for specific materials. This usually happens during discovery when producing documents, answering interrogatories, or providing deposition testimony. Parties should clearly mark the information as “Confidential” or “Attorneys’ Eyes Only” and, if necessary, follow up with written explanations to clarify the designation.

One important TTAB tip is to be consistent with your confidentiality markings. If a party inconsistently labels similar documents or fails to mark a confidential document at all, it may lose the right to enforce confidentiality later. Likewise, over-designating information can undermine credibility, especially if it appears that the designations are being used to obstruct rather than protect.

Modifying the Standard Protective Order

Although the TTAB’s standard protective order is comprehensive, it is not rigid. Parties may agree to modify it to address the particular needs of their case, provided the Board approves the changes. For example, in a case involving highly technical product designs, the parties might agree to add specific provisions on how to handle physical samples or proprietary manufacturing processes.

When seeking modifications, it’s best to outline the specific risks or practical issues you’re trying to address, rather than making vague assertions about needing “extra protection.” A well-reasoned proposal is more likely to gain the Board’s approval.

Enforcement and Remedies

If a party believes that the protective order has been violated—for example, if confidential information is disclosed to an unauthorized person—it can seek relief from the Board. Remedies may include orders to retrieve or destroy the improperly disclosed material, sanctions against the offending party, or, in severe cases, evidentiary consequences.

Because the TTAB takes confidentiality seriously, parties should act quickly if they suspect a breach. Waiting too long can weaken the argument that the information was truly sensitive.

Balancing Confidentiality with the TTAB’s Public Record

One of the unique aspects of TTAB proceedings is that most filings become part of the public record in TTABVUE. This means that even if information is marked confidential during discovery, care must be taken when introducing it into evidence. The standard protective order addresses this by allowing parties to file confidential versions of documents under seal, along with a redacted public version.

For example, if a party introduces sales figures as evidence, it can redact the actual numbers from the public version while still allowing the Board to review the full figures in the sealed version. This dual-filing approach ensures that the record remains transparent to the extent possible while still protecting trade secrets and sensitive data.

Strategic Use of the Protective Order in Discovery

Beyond simply safeguarding secrets, the protective order can play a role in encouraging more open discovery. Parties may be more willing to produce relevant but sensitive materials if they know that protections are in place. This, in turn, can lead to a more complete evidentiary record and reduce disputes over withholding documents.

However, relying on the protective order is not a substitute for good discovery strategy. Parties should still consider whether information is truly relevant before producing it, and they should be prepared to justify their confidentiality designations if challenged.

Common Pitfalls to Avoid

A recurring issue in TTAB practice is the assumption that everything produced in discovery is automatically confidential. In reality, protections apply only when the party producing the information takes the necessary steps to invoke them. Another pitfall is failing to follow through when confidential information is used in depositions or trial testimony—if it’s not properly designated and filed under seal, the confidentiality may be lost.

Overuse of the Attorneys’ Eyes Only designation can also backfire. While it may seem safer to limit access as much as possible, excessive restrictions can frustrate the opposing party and invite motions to downgrade the designation. The TTAB generally expects designations to be made in good faith, with a clear justification.

Why Mastering the Standard Protective Order Matters

In many TTAB proceedings, the outcome can hinge on evidence that a party is reluctant to disclose. Mastering the standard protective order gives practitioners the tools to ensure that sensitive information is available for the case without causing collateral business damage.

From an advocacy standpoint, demonstrating that you understand and respect the rules around confidentiality can also enhance credibility before the Board. This is especially true when disputes arise over discovery—Board attorneys are more likely to view a cooperative and well-prepared practitioner favorably.

Final TTAB Tip

Think of the TTAB’s standard protective order not as a bureaucratic formality, but as a strategic asset. When used thoughtfully, it can protect your client’s business interests, facilitate smoother discovery, and help build a stronger case. By marking confidential material accurately, considering reasonable modifications, and balancing openness with discretion, you can make the most of this important procedural safeguard.