In the complex world of trademark disputes, the U.S. Trademark Trial and Appeal Board (TTAB) stands as a vital forum for resolving conflicts over federal trademark rights. For practitioners representing clients in inter partes cases—oppositions and cancellations—understanding the Board’s processes and expectations is crucial. Success depends not only on knowledge of trademark law but also on procedural mastery, strategic planning, and efficient case management. Drawing from insider guidance provided in the TTAB Tips July 2020 document, this article outlines actionable strategies for building a strong TTAB case.
Begin with the End in Mind: Master the Board’s Jurisdiction
Before filing a Notice of Opposition or a Petition to Cancel, it is essential to understand the limited jurisdiction of the TTAB. The Board does not decide questions of trademark infringement or award damages. Its sole function is to determine whether a party is entitled to register a mark. All claims and evidence must be tailored to this narrow focus. Allegations of marketplace confusion or unfair competition, though relevant in court, are misplaced in TTAB pleadings and can detract from your case’s clarity and purpose
Lay a Solid Foundation with Well-Pleaded Claims
A TTAB case begins with pleadings. The strength of your case will often hinge on how clearly and thoroughly the complaint is drafted. Each claim should be distinctly articulated using statutory language where possible. For example, if claiming likelihood of confusion under Section 2(d) of the Lanham Act, the complaint should clearly identify the senior mark, state its ownership and registration details, and allege facts that support confusion. Pleading dilution requires even greater specificity, including an allegation that the mark became famous before the opposing party’s date of first use
Failure to include necessary elements or to support claims with appropriate facts can lead to motions to dismiss or difficulty at trial. Moreover, attaching exhibits to pleadings does not make them part of the record unless properly introduced later. The sole exception is federal trademark registrations pleaded by a plaintiff, which can be made of record by submitting appropriate USPTO documentation alongside the complaint
Prioritize Procedural Accuracy from the Start
Every inter partes proceeding is assigned to a TTAB staff attorney and a paralegal, who jointly manage the case’s flow and address various filings. These assignments are visible in TTABVUE, the public docket system. Understanding who oversees your case helps in anticipating how motions may be handled and in navigating procedural bottlenecks
Practitioners must use ESTTA (Electronic System for Trademark Trials and Appeals) for nearly all filings unless extraordinary circumstances justify paper submissions. Failures to use ESTTA properly or timely can result in missed deadlines, which the Board rarely excuses unless compelling good cause is shown
Serve and Communicate Strategically
Once the Board serves the notice of institution, the burden shifts to the plaintiff to ensure all subsequent filings are served via email, unless otherwise agreed. Relying solely on system-generated notices does not meet service requirements. Missteps in service can delay proceedings or, worse, compromise your client’s position. Keep service logs organized and email addresses current to avoid miscommunication with both the Board and opposing parties
Discovery: Be Prepared and Strategic
Discovery opens after the mandatory discovery conference. It begins with initial disclosures, which must include the names of likely witnesses, the subjects of their testimony, and relevant categories of documents. These disclosures should be comprehensive, as they limit the scope of what may later be introduced at trial. Parties may instead produce documents at the disclosure stage, a practice encouraged by the Board for its potential to streamline discovery and encourage settlement
Importantly, a party may not serve discovery until it has complied with its own disclosure obligations. Delays or incomplete disclosures can result in sanctions or the exclusion of evidence. Filing a motion to compel must occur within 30 days of the deadline for disclosures if an adverse party fails to comply
Use the Discovery Conference to Set the Tone
The discovery conference is more than a procedural formality. It is an opportunity to define the contours of the case, propose stipulations, and even explore settlement. When requested, a TTAB Interlocutory Attorney may participate, adding structure and legal insight to the conversation. Topics typically addressed include claims and defenses, the possibility of Accelerated Case Resolution (ACR), and any protective order issues. Making the most of this conference can reduce unnecessary motion practice and sharpen the parties’ understanding of the dispute
Discovery Efficiency is Key
The discovery process must be used judiciously. Parties are limited to 75 interrogatories, document requests, and admission requests, including subparts. Being strategic about what information is essential—and framing questions narrowly to avoid wasting “slots”—can give you an edge.
Evidence must be submitted with care. Only relevant responses to requests should be introduced at trial. General denials and responses indicating a lack of documentation are inadmissible and should not be submitted. If using third-party website evidence, ensure that both the URL and the access date are included. Failure to do so renders such evidence inadmissible under Board standards
Stipulate When You Can, But Stay Alert
The Board strongly encourages parties to resolve procedural issues through stipulation. Parties can agree to timelines, evidence submission procedures, or even facts to narrow the issues for trial. That said, parties must be cautious: settlements in progress do not excuse failure to meet deadlines. The prudent course is to file a motion to suspend proceedings, which the Board is usually willing to grant, especially if good-faith progress is being made
Manage Motions Thoughtfully
Motions can serve as powerful tools—or costly distractions. Dispositive motions such as summary judgment should be filed only when the record supports clear victory. Evidence of standing must be included with a motion for summary judgment, and all claims must be pleaded properly. Motions based on unpleaded claims will be dismissed unless accompanied by a motion to amend the pleadings
The Board discourages reply briefs on motions, viewing them as rarely persuasive unless they address new issues raised in opposition. Page limits are strictly enforced, and surreplies are never permitted. All this underscores the importance of careful briefing and attention to procedural rules.
Know What Constitutes the Record at Trial
One of the most common pitfalls in TTAB litigation is misunderstanding what evidence is part of the record. The file of the opposed application or the registration subject to cancellation is automatically of record, but statements within those files are not considered testimony. Copies of registrations pleaded in the complaint must be properly submitted again during the trial period if they were not accompanied by a status-and-title copy at the outset
Moreover, third-party registrations must be introduced via TSDR or TESS printouts. Lists or summaries from commercial search engines are not acceptable substitutes. And Internet materials must again include the appropriate URL and access date. Failing to follow these evidentiary rules can result in key facts being excluded from consideration at trial.
Briefing and Oral Argument: Finish Strong
Your trial brief should connect the dots between the evidence and the legal standards. The Board has set clear page limits and formatting requirements, including an alphabetical list of cited cases. Submitting evidence with the brief is prohibited. Instead, practitioners must cite to the TTABVUE record. Failure to do so undermines the brief’s credibility and may result in adverse outcomes
If an oral hearing is requested, it becomes your last and possibly most impactful opportunity to influence the Board. Focus on answering questions and clarifying the record, rather than repeating what’s in the brief. Avoid using PowerPoint, as the hearing’s interactive nature and remote participation by judges render it ineffective. Stick to substance, know the record cold, and be prepared to engage in legal dialogue with the panel
Appeals: Planning Beyond the TTAB
Once the Board renders a final decision, parties have two paths for appeal: to the U.S. Court of Appeals for the Federal Circuit or via a civil action in a U.S. District Court. The choice affects the scope of review and the ability to introduce new evidence. Practitioners should consider appellate strategy early, particularly in close cases, and advise clients accordingly. Timely filing and procedural compliance are essential, especially since missed deadlines cannot be cured by reconsideration requests or petitions to revive
Final Thoughts: Diligence Is Your Strongest Ally
The TTAB provides a robust forum for resolving trademark registration disputes. It is not, however, a venue that tolerates lax practice or procedural shortcuts. Success before the Board requires diligence, preparation, and a nuanced understanding of the rules and strategic considerations. From crafting precise pleadings to mastering discovery and delivering a persuasive trial brief, each phase of a TTAB case demands rigor and attention to detail. The tips shared by TTAB officials offer a rare behind-the-scenes look at what matters most. Practitioners who internalize this guidance will be better equipped to protect their clients’ trademark rights and present their cases with clarity, confidence, and credibility.