TTAB Proceedings
Like any other legal proceeding, actions heard by the TTAB (Trademark Trial and Appeal Board) have requirements based on USPTO TTAB rules and procedures. Such actions generally involve one party filing a Trademark Opposition to a pending trademark application or the filing of a Trademark Cancellation an existing trademark registration. In either situation, including if you need to file an answer in the TTAB, it is imperative that you adhere to the deadlines and other requirements of the process set out by the TTAB. Many TTAB decisions are defaults because an answer is not filed.
We are highly experienced in handling Trademark Trial and Appeal Board cases. Our extensive experience in TTAB cases has allowed us to perfect strategies that win TTAB cases quickly. As a result, we have a very high win percentage in TTAB cases. To view the over 400 Trademark Trial and Appeal Board cases that we have handled, you may click here.
The following is a brief overview of the chronology of a TTAB case.
Step 1 – A Notice of Opposition or Petition to Cancel Is Filed
The party opposing the trademark initiates the case by filing a Notice of Opposition or a Petition to Cancel —similar to a complaint—with the TTAB, stating the grounds for its opposition.
Step 2 – Answer Is Filed
After approximately 40 days have passed from receiving notice of the complaint, the trademark applicant or owner must file a response—an answer—refuting the claims in the complaint. Failing to file an answer means that the applicant risks losing the trademark registration in a default judgment.
Step 3 – Discovery Period
A TTAB discovery conference among trademark attorneys to discuss discovery calendars, stipulations, and a possible settlement agreement is scheduled shortly after an answer is filed. The discovery process first involves each party serving initial disclosures to the other in accordance with the Federal Rules of Civil Procedure and as set out in the Trademark Trial and Appeal Board Manual of Procedure.
Then, the discovery period begins and the parties may request and exchange information including interrogatories, requests for documents, requests for admissions, and depositions. Disclosure of intended expert testimony is also typically due 30 days before the discovery period closes.
Step 4 – Testimony Period
Similar to a live civil trial, parties will take turns submitting testimony. However, the TTAB does not sit for a live trial, and instead, testimony is given by each party during alternating testimony periods. First, the party opposing the trademark will submit pretrial disclosures, witness testimony, documents, and other supporting evidence during its 30-day testimony period. Then, the applicant has a 30-day testimony period to submit evidence in its defense. Finally the opposer has a final 15-day period to rebut.
Step 5 – Trial Briefs
After receiving all testimony, the opposer must file its Trial Brief to the Board, followed by the applicant’s brief, and then followed again by the opposer’s rebuttal brief.
Step 6 – Oral Arguments (optional)
Either party may request oral argument to the Board to be considered in addition to the written record already amassed. These are similar to oral arguments in civil appellate cases and will take place before a panel of three TTAB members.
Step 7 – TTAB Decision
After examining the written record and oral arguments (if applicable), the TTAB usually takes about six months to issue its written decision on whether to uphold the trademark. There are additional deadlines and procedures that the losing party must follow if it wishes to file an appeal of the decision.
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If you are considering initiating a Notice of Opposition or Petition to Cancel or if one has been filed against you, please contact us to discuss your situation.
The results mentioned above were dependent on the facts of the case, and results of such cases differ if based on different facts, thus the above statements do not constitute guarantees‚ warranties‚ or predictions regarding the outcome of your legal matter.
