General

What the TTAB is (and isn’t)

If you’ve ever tried to register a trademark in the U.S. Patent & Trademark Office (USPTO) and hit a snag, you’ve likely brushed up against the TTAB—the Trademark Trial and Appeal Board. Think of the TTAB as the USPTO’s in-house tribunal for deciding cases about whether a trademark should become or remain registered. The TTAB (often referred to as the “Board”) uses procedures reminiscent of federal courts but different and more specialized in many ways. Also, unlike a federal court, the Board is governed by the U.S. Trademark Act and the Trademark Rules of Practice. The Board even has its own “TTAB Manual of Procedure,” known affectionately as the “T.B.M.P.”

The TTAB’s jurisdiction is very specific. It can decide who is entitled to a federal trademark registration, but it does not decide infringement, damages, or the right to use a mark in the marketplace.

How did I get here?

There are three common on-ramps to the TTAB:

• Opposition Proceedings: When you file a federal trademark application, a USPTO Examining Attorney has to decide whether they have grounds to refuse registration. If the Examining Attorney gives the all-clear, your application becomes “published for opposition,” meaning that third parties now have a finite window to speak up if they believe your application should be refused. Any third party that believes it would be damaged by the registration of your mark could file a Notice of Opposition in the TTAB. The opposer is often a competing business. Among the grounds for bringing an opposition are likelihood-of-confusion, abandonment, descriptiveness, genericness, or fraud on the USPTO.
• Cancellation Proceedings: If you file a federal trademark application that is granted registration, a third party that believes it is being damaged by that registration could attack it by filing a Petition for Cancellation in the TTAB. The types of grounds are often similar to those raised in an opposition.
• Ex Parte Appeals: If an Examining Attorney issues a final refusal against your trademark application, you could appeal that refusal to the TTAB. The Examining Attorney would then be analogous to a defendant, as they would have to answer your challenge to their adverse determination. Procedurally, an Ex Parte Appeal tends to be simpler than an Opposition or Cancellation Proceeding.

What happens next?

After an Opposition and Cancellation Proceeding is filed in the TTAB, the Board issues an order setting a schedule for each step from beginning to end. Among those steps are a deadline to file an Answer (and, if applicable, Counterclaims); a deadline to hold a Discovery Conference; a deadline to complete Discovery (including demands for disclosure of evidence by each side); a deadline to file Pretrial Disclosures; and sequential Testimony Periods for each litigant. The Board typically decides cases “on the papers.” An oral hearing before the Board is optional. Trial testimony is taken outside the Board and written transcripts are filed on the TTAB record. There is no jury. The Board issues written decisions. Each case has a public docket, freely accessible at https://ttabvue.uspto.gov/.

In Opposition and Cancellation Proceedings, it is not uncommon for the parties to reach a negotiated settlement somewhere along the journey. The Board has procedures whereby the parties can suspend the proceeding to open up time for discussing settlement.

If the Board issues a decision that a party disagrees with, the party can then seek review either by appeal to the U.S. Court of Appeals for the Federal Circuit or by filing a civil action in a U.S. district court.

Respect the difference

If you find yourself in a TTAB proceeding, it’s important to carefully navigate this specialized environment on its own terms. Pretending that it’s just another federal court will get you tripped up pretty quickly. The Board’s rules may not be as familiar as a federal court’s rules, but that doesn’t excuse anyone from knowing and following them.