Before the Trademark Trial and Appeal Board (TTAB), the rules of engagement are clear, but too often misunderstood. A surprising number of trademark practitioners—especially those transitioning from federal court litigation—carry over habits that don’t align with TTAB procedure. One of the most common and damaging mistakes involves the improper fusion of motions and pleadings, particularly inserting a motion to dismiss within the answer. This practice, while not uncommon, is procedurally defective and can cost your client precious time and tactical advantage.

Understanding how to properly structure pleadings is more than a matter of style—it’s about safeguarding the integrity of your case under the TTAB’s strict procedural rules. The Board operates on a framework that differs substantially from traditional Article III courts, and applying courtroom habits without adapting them to TTAB practice can backfire. This is where TTAB Tips—become essential reading for every trademark litigator.

The Problem with Hybrid Filings

It might seem efficient to file an answer that includes a motion to dismiss, thinking that you’re streamlining the process. But under TTAB practice, this kind of hybrid filing is not just frowned upon—it’s functionally ignored. The TTAB expects motions and answers to be filed separately. Including a motion within an answer effectively waives the opportunity to have it heard in a timely and proper manner.

A motion to dismiss must be filed before the answer if the grounds for dismissal are procedural—such as failure to state a claim upon which relief can be granted. Once an answer is filed, you’ve accepted the proceeding as framed by the plaintiff’s complaint. Including a motion to dismiss within it signals procedural confusion and forces the Board (and your adversary) to sort through what is supposed to be a clean, responsive pleading.

This is not a harmless technicality. The TTAB does not strike improperly filed motions; it simply ignores them. That means your motion—no matter how strong on its merits—will not be considered if filed within the answer. Worse, you’ve lost credibility and possibly conceded claims that should have been challenged outright.

When and How to File a Motion to Dismiss

According to the Trademark Trial and Appeal Board Manual of Procedure (TBMP) and reinforced in the TTAB Tips, motions to dismiss should be used sparingly and precisely. The most appropriate timing is prior to filing an answer, and only when the complaint truly lacks the elements required to state a claim—such as priority, likelihood of confusion, standing, or factual plausibility.

For example, if the plaintiff alleges a vague legal conclusion without supporting facts, or pleads abandonment without referencing a nonuse period, a motion to dismiss may be appropriate. However, if the complaint provides enough detail to state a plausible claim, even if you believe the claim will ultimately fail, a motion to dismiss is unlikely to succeed and may only delay the inevitable.

Filing a motion to dismiss separately and in the correct sequence allows the Board to pause proceedings and assess the legal sufficiency of the case. This approach also avoids the confusion and procedural friction that often results from hybrid pleadings.

Counterclaims: Timing and Structure Matter

Another common area of hybrid pleading error involves counterclaims. Some respondents attempt to raise a counterclaim in a separate document after filing an answer, not realizing that counterclaims—especially those challenging the validity of the opposer’s registration—must be included within the answer. The TBMP is clear on this point, and the Board views attempts to add a counterclaim later as procedurally improper unless good cause is shown and permission is granted.

What further complicates matters is that counterclaims must also meet the standard for proper pleading. Vague accusations of fraud or abandonment without supporting facts will not survive a motion to dismiss. Just as with a petition for cancellation, a counterclaim must establish standing and allege a statutory basis for the challenge. Mixing a defective counterclaim with a weak answer is a fast track to sanctions or dismissal.

Amending Pleadings Without Confusion

Sometimes practitioners recognize pleading defects and seek to fix them—often too late, and in the wrong format. For example, they may file a “corrected” answer that includes substantive amendments but forget to seek the Board’s leave or fail to highlight what has changed. The Board expects amendments to be filed via motion and accompanied by both a clean and redlined version of the amended document. Without these, the filing may be rejected or simply ignored.

Moreover, amendments filed without consent after the trial period opens are subject to stricter standards, such as showing that justice requires the amendment or that the change is based on newly discovered facts. Trying to sneak in new claims or defenses through an amended answer without authorization is another procedural pitfall that TTAB practitioners must avoid.

Why TTAB Procedure Demands Discipline

One of the central messages in the TTAB Tips is that the Board values clarity, sequence, and compliance. Unlike federal courts where some procedural flexibility may be granted, TTAB proceedings move quickly and strictly within the confines of established timelines. Missteps like hybrid filings not only disrupt the opposing party’s ability to respond, but they also interfere with the Board’s ability to maintain orderly proceedings.

This procedural discipline is what makes the TTAB efficient—but it also makes it unforgiving. Pleadings are not the place to argue the case; they are meant to frame the issues. Motions are not evidence; they are tools to challenge defects in the pleadings or process. Mixing these categories is not just confusing—it’s procedurally hazardous.

Getting It Right from the Start

To succeed before the TTAB, attorneys must approach the early phases of a case—especially pleadings—with precision. Separate your answer from any motion practice. Use affirmative defenses wisely and only when supported by facts. Include counterclaims in the answer if known, and do not assume you’ll be able to add them later without consequence.

Follow the TBMP closely and consult the latest TTAB Tips for updates on how the Board expects filings to be presented. In every instance, structure and clarity will not only make your filings easier to digest—they may ultimately make the difference in how the case unfolds.