Proceedings before the Trademark Trial and Appeal Board (TTAB) can be procedurally demanding and strategically complex. Whether you’re pursuing an ex parte appeal or engaged in an inter partes dispute, even experienced practitioners are susceptible to pitfalls that can significantly impact the outcome of a case. Fortunately, the TTAB has provided a wealth of guidance to help attorneys and parties avoid these common missteps.
Drawing from the “TTAB Tips July 2020” document authored by TTAB judges and attorneys, this article identifies the most frequent and costly mistakes made in TTAB proceedings—and explains how to avoid them or correct course before it’s too late.
Mistake 1: Improperly Introducing Evidence
The Problem
One of the most consistent and damaging mistakes parties make is submitting evidence in a format that the Board does not accept. Examples include:
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Citing to hyperlinks or web addresses without URLs and access dates
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Submitting lists or summaries of third-party registrations instead of copies or proper TESS/TSDR printouts
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Attempting to introduce evidence for the first time in an appeal brief
These mistakes often result in the evidence being disregarded entirely.
The Fix
Always submit full, accessible copies of relevant evidence and ensure the proper foundation is laid. For internet evidence, include both the URL and the date the material was accessed or printed. For third-party registrations, use TESS or TSDR printouts—not summaries, search reports, or charts.
Avoid attaching evidence to briefs. Instead, cite to where the evidence appears in the official record (e.g., “March 5, 2020 Response to Office Action, TSDR p. 7”).
Mistake 2: Filing Outside of ESTTA Without Justification
The Problem
ESTTA (Electronic System for Trademark Trials and Appeals) is the required platform for virtually all TTAB filings. Parties sometimes file documents on paper without providing a valid reason, such as system outages or extraordinary circumstances, leading to rejection or procedural complications.
The Fix
Always file through ESTTA unless the system is down and no other option exists. In those rare instances, consult the USPTO’s detailed guidance on alternative filing procedures during an ESTTA outage, and document your attempt to file electronically.
Keep records of ESTTA tracking numbers for all submissions. If a filing doesn’t appear in TTABVUE, promptly contact the Board with the tracking number.
Mistake 3: Assuming the Board Knows or Will Find Your Evidence
The Problem
The Board does not take judicial notice of USPTO database contents—not even the file of a cited registration. Many practitioners mistakenly believe that referencing a record that exists somewhere in the USPTO system (such as a pending application or third-party registration) is enough.
The Fix
You must make every piece of evidence part of the record. If you’re citing a registration, you need to file a complete copy from TESS or TSDR. If you’re referencing the file of a cited registration, include it explicitly in your submission. Never assume the TTAB will go looking for your evidence.
Mistake 4: Failing to Properly Serve or Communicate with Opposing Parties
The Problem
Despite the shift to electronic systems, TTAB still requires parties to properly serve documents on each other—especially outside of the initial complaint, which the Board serves. Failing to serve a motion or brief via email can lead to sanctions or delays.
The Fix
Serve all documents (other than the complaint) via email, unless otherwise stipulated. The ESTTA-generated confirmation is not a substitute for service. If technical issues prevent email service, provide a written explanation and demonstrate good faith efforts to serve the opposing party.
Update your contact information regularly to avoid missing communications.
Mistake 5: Mismanaging Filing Deadlines
The Problem
Missing deadlines is one of the quickest ways to lose a case. Whether it’s a late answer, untimely discovery requests, or an overdue brief, the Board has little tolerance for dilatory practices—especially when no good cause is shown.
The Fix
Docket all deadlines early and allow buffer time for filing. Be aware of the strict standards:
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To extend a deadline that hasn’t passed, show good cause.
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To reopen a deadline that has passed, you must show excusable neglect—a much higher standard.
If you need more time, file a motion for extension in advance, not after the fact. Don’t rely on informal agreements—formalize all extensions in writing and file them with the Board.
Mistake 6: Attaching New Evidence to Appeal Briefs
The Problem
Practitioners sometimes attempt to bolster their argument by attaching new exhibits to their appeal briefs. This is not allowed. The TTAB requires that the evidentiary record be complete before the appeal is filed.
The Fix
Complete the record during prosecution or through a request for remand before the Board issues a decision. If you need to supplement the record after an appeal has been filed, submit a request for remand under Trademark Rule 2.142(d) explaining why the new evidence is necessary.
Even if the evidence is already part of the record, do not attach it again to your brief—just cite it properly using TTABVUE or TSDR page references.
Mistake 7: Poorly Drafted or Overreaching Pleadings
The Problem
A poorly drafted Notice of Opposition or Petition to Cancel can sink your case from the outset. This includes missing key elements of a claim (e.g., failing to allege fame for dilution) or improperly asserting claims like infringement, which are outside the Board’s jurisdiction.
The Fix
Use the statutory language to clearly and separately plead each claim. For dilution, allege that the mark became famous before the other party’s first use. For abandonment or fraud claims, include all necessary elements.
Avoid including common law infringement claims, which belong in federal court. Focus only on grounds relevant to registration.
Also, include proper evidence of standing, such as a TSDR printout showing ownership of a registered mark or application.
Mistake 8: Ignoring Discovery Limits and Procedures
The Problem
Practitioners may exceed the limits on discovery requests, serve discovery too late, or fail to properly respond—resulting in waived objections, admissions, or discovery sanctions.
The Fix
Respect the TTAB’s discovery rules:
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Serve discovery with enough time to receive responses before the close of the discovery period.
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Limit interrogatories, document requests, and admissions to 75 each.
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Respond within 30 days or risk waiver of objections and admission of facts.
Be detailed and transparent in responses. If asserting privilege, provide a privilege log. If withholding documents, specify the basis.
Never rely on mailing discovery—service must be by email unless stipulated otherwise.
Mistake 9: Filing Unnecessary Motions or Embedding Them in Other Documents
The Problem
Embedding a motion to dismiss or other procedural motion inside an answer is ineffective. Board attorneys often don’t review pleadings unless prompted by a motion, so your embedded motion may be overlooked entirely.
The Fix
File standalone motions when needed. For example, if challenging the sufficiency of a complaint, file a proper motion to dismiss under Rule 12(b)(6). Avoid boilerplate defenses like “failure to state a claim.”
Don’t file motions unnecessarily—especially if the issue could be resolved through a phone call or stipulation.
Mistake 10: Mishandling Settlement and Suspension Requests
The Problem
Parties often file multiple extensions for settlement talks without showing any progress. Worse, some parties try to extend deadlines instead of requesting suspension, or miss the deadline for the discovery conference while negotiating.
The Fix
Use suspension—not extension—for ongoing settlement discussions. If multiple suspensions are needed, be prepared to show what progress has been made.
Don’t request extension or suspension after pleadings close but before the discovery conference—unless for reasons unrelated to settlement. The discovery conference is the time to discuss settlement; delaying it undermines that purpose.
Mistake 11: Forgetting About Initial Disclosures
The Problem
Some parties jump into discovery without serving initial disclosures, or fail to update them, which can result in barred evidence and even sanctions.
The Fix
Serve initial disclosures on time—within 30 days of the opening of discovery. Include:
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Names and contact info for witnesses
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Categories and locations of documents
Update disclosures as needed. Failure to disclose information or witnesses may prevent you from using them at trial.
Mistake 12: Overlooking Accelerated Case Resolution (ACR)
The Problem
Parties miss the opportunity to streamline proceedings through ACR, even when the case is suitable for it. This leads to unnecessary costs and delays.
The Fix
Discuss ACR during the discovery conference. The earlier ACR is adopted, the more efficient the process. Consider stipulating to facts, limiting discovery, and using briefs with attached evidence in lieu of a full trial.
Even if full ACR isn’t feasible, parties can still enter into agreements to simplify procedures and limit issues.
Mistake 13: Improper Use of Motions for Summary Judgment
The Problem
Practitioners sometimes file premature summary judgment motions before serving initial disclosures or treat them like motions to dismiss by including extra-record material.
The Fix
You can’t file a motion for summary judgment until you’ve served initial disclosures (unless based on preclusion or jurisdiction). Avoid submitting evidence outside the record. If you do, the Board will exclude it rather than convert the motion into summary judgment.
Make sure your motion complies with page limits (25 pages max for main briefs) and avoid surreplies, which won’t be considered.
Mistake 14: Failing to Request Remand for Amendments
The Problem
Applicants often express willingness to amend their applications in an appeal brief if the Board remains unpersuaded—this is procedurally improper.
The Fix
If you want to amend your application (e.g., limiting goods or changing to the Supplemental Register), file a proper motion to remand before the Board issues a decision. The Examining Attorney must review and approve the amendment before the Board can consider it.
Mistake 15: Mismanaging Default and Late Answers
The Problem
Some defendants miss the answer deadline and assume they can fix it with a phone call or an informal note to the Board.
The Fix
If the deadline is missed, first seek the opposing party’s consent to a late answer. If not granted, file the answer along with a motion to cure default. The Board is generally lenient but requires a proper explanation and procedural compliance.
Plaintiffs are encouraged to consent to late answers to avoid unnecessary litigation over defaults.
Final Thoughts
Practicing before the TTAB requires not only a command of trademark law but also procedural discipline. By avoiding these common mistakes and following the Board’s guidance, practitioners can present stronger cases, maintain credibility with the Board, and ultimately improve their chances of success.
For those new to TTAB proceedings—or even seasoned pros—it’s worth revisiting the TBMP regularly, staying up to date with rule changes, and consulting official TTAB tips and decisions. Avoiding simple errors can be the difference between a favorable outcome and a procedural setback that derails your case entirely.