Why Boilerplate Affirmative Defenses Fail at the Trademark Trial and Appeal Board (TTAB)

When defending against a Notice of Opposition or a Petition for Cancellation before the Trademark Trial and Appeal Board (TTAB), it’s tempting for attorneys to fall back on familiar templates and standard affirmative defenses. However, the TTAB has consistently shown little tolerance for generic, unsupported defenses that serve no real strategic function. These so-called boilerplate affirmative defenses are not just ineffective—they can undermine your credibility and create unnecessary motion practice.

Understanding why boilerplate defenses often fail and how to craft appropriate, fact-specific responses is crucial for any practitioner navigating inter partes proceedings. This article outlines the pitfalls of boilerplate pleadings and provides actionable TTAB tips for strengthening your defense strategy.

What Are Boilerplate Affirmative Defenses?

Boilerplate affirmative defenses are prewritten, generalized defenses included as a matter of habit rather than necessity. They often include vague statements such as:

“The complaint fails to state a claim upon which relief can be granted.”
“Opposer’s claims are barred by laches, estoppel, or acquiescence.”
“Opposer lacks standing.”

These may sound legally sound at first glance, but when filed without specific facts or contextual support, they quickly become vulnerable to motions to strike. The TTAB expects parties to tailor their defenses to the unique facts of each case—anything less may result in wasted time, increased costs, and procedural setbacks.

Why the TTAB Disfavors Boilerplate Defenses

The Trademark Trial and Appeal Board is not a traditional trial court. Its jurisdiction is limited to determining whether a party is entitled to federal registration of a trademark. Unlike federal courts, the TTAB does not handle claims of trademark infringement, unfair competition, or damages. Many affirmative defenses common in federal litigation simply don’t apply in TTAB proceedings.

One of the most common errors is asserting a failure to state a claim as an affirmative defense. Under federal and Board precedent, this is a defect in pleading—not a true affirmative defense—and should be raised through a motion to dismiss under Rule 12(b)(6) instead. Including it in your answer only opens the door for the opposer to file a motion to strike, which the Board frequently grants in such circumstances.

Similarly, defenses like laches and acquiescence often have limited relevance in opposition proceedings. Since the opposition is usually filed before the applicant’s mark has matured to registration, there is often insufficient time for these defenses to accrue. Unless there’s a demonstrable delay tied to an earlier registration or other unique circumstance, these defenses are likely to be dismissed.

TTAB Tips: How to Plead Affirmative Defenses Effectively

To avoid these pitfalls, consider the following TTAB tips for crafting your affirmative defenses with care and precision:

1. Understand the TTAB’s Jurisdiction.
Before asserting any defense, ensure it aligns with the TTAB’s authority. The Board adjudicates registration rights—not market-based infringement claims. This means defenses tied to confusion in the marketplace, actual damages, or commercial harm are misplaced.

2. Tie Every Defense to Specific Facts.
If you plan to assert estoppel, laches, or unclean hands, you must allege detailed facts that support those defenses. For example, if asserting laches, show that the opposer delayed objecting to your use of the mark over an extended period and that the delay resulted in prejudice.

3. Avoid Pro Forma Language.
Don’t include a defense simply because it appears in a template. Every line of your pleading should serve a defined purpose. The TTAB expects practitioners to be deliberate and thoughtful—not to recycle defenses blindly from prior cases.

4. Review the TBMP.
The Trademark Trial and Appeal Board Manual of Procedure (TBMP) offers clear guidance on proper pleading practices. For instance, TBMP § 311.02(b) explains what does and does not constitute an affirmative defense and warns against raising improper or inapplicable defenses.

5. Anticipate Motions to Strike.
A vague or unsupported defense may prompt the opposing party to file a motion to strike under Rule 12(f). Not only can this delay the proceeding, but it may also make your client appear less credible if the defense is clearly inapplicable. Avoid giving the opposing party this opportunity.

Real-World Consequences of Boilerplate Defenses

Practitioners who rely on canned affirmative defenses may find themselves in an unfavorable position. In Schering-Plough Animal Health Corp. v. Aqua Gen AS, the TTAB reprimanded an applicant for filing a legally untenable motion to dismiss, highlighting that motions must have a sound basis in law and fact. The same principle applies to affirmative defenses—if a defense lacks merit or is unrelated to the Board’s limited scope, it may result in sanctions or, at minimum, wasted resources.

Another case, CTRL Sys. Inc. v. Ultraphonics of N. Am., Inc., emphasized the importance of clear and prompt communication with the Board, especially when it comes to matters like representation and responsibility. This reinforces the idea that practitioners should approach every aspect of a TTAB case—including their affirmative defenses—with diligence and precision.

Strengthening Your Strategy Through Thoughtful Pleading

The lesson is clear: affirmative defenses in TTAB cases must be factually grounded and procedurally appropriate. Not every “defense” belongs in your answer. The TTAB views its docket as a place for resolving specific, registration-based disputes—not for airing broader marketplace grievances.

Moreover, the Board’s preference for efficiency and clarity means that thoughtful, well-drafted pleadings stand out. An applicant who can articulate a compelling, legally viable defense not only avoids unnecessary motion practice but also earns the respect of the Board and the opposing party.

If you’re unsure whether a particular defense is appropriate, consult the TBMP, review relevant case law, or consider whether a motion is a more suitable vehicle. The TTAB’s guidance is designed to reward clarity and discourage clutter. Adhering to those standards is one of the most effective ways to strengthen your position in any inter partes proceeding.

Final Thoughts

The use of boilerplate affirmative defenses before the Trademark Trial and Appeal Board is not just outdated—it’s risky. The TTAB has made clear through its rulings and procedural guidelines that defenses must be legally relevant and fact-specific. Relying on cut-and-paste defenses may invite motions to strike, procedural delays, or worse.

Savvy practitioners should take the time to assess each defense for its relevance, plead with precision, and always keep in mind the TTAB’s narrow jurisdictional scope. With the right approach, your answer won’t just pass muster—it will set the tone for a successful defense.