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The Trademark Trial and Appeal Board is the administrative arm of the United States Patent and Trademark Office that resolves legal issues involving trademarks6 min read
2. Procedure for the Most Common TTAB Cases
3. Rules Governing the TTAB
4. Options if The TTAB Rules Against You
5. Frequently Asked Questions
Updated November 26, 2020:
What Is the Trademark Trial and Appeal Board?
The Trademark Trial and Appeal Board is the administrative arm of the United States Patent and Trademark Office (USPTO) responsible for resolving a variety of legal issues surrounding a trademark's approval or continuing registration. This tribunal is referred to colloquially as the Board or by the acronym TTAB.
- Trademark opposition proceedings: Business owners who think a potential new trademark could damage their business can file an opposition proceeding within the proper timeframe. This is a type of inter partes proceeding. Only a person with a reasonable stake in the case and reason to believe the allegations can start trademark opposition proceedings. These cases happen during the trademark registration process. They are some of the most common cases the TTAB hears.
- Cancellation proceedings: These cases occur when someone challenges a trademark after it's registered. This is a type of inter partes proceeding. The challenger must feel the trademark's registration would damage his or her brand. If the challenge is successful, the USPTO cancels the trademark's registration. Cancellation proceedings are also very common.
- Concurrent use proceedings: These cases decide if an applicant with a trademark similar to one already registered deserves concurrent trademark registration. This is a type of inter partes proceeding. Concurrent registration has limited usage. For example, it might only be valid in certain locations or for the trademark's use on certain products. Concurrent use proceedings typically concern business owners trading in different parts of the country.
- Interference proceedings: These cases occur when two or more parties have the same or similar trademarks. The TTAB determines which party used the trademark first and who rightly owns its registration. Interference proceedings arise when there are conflicts between registration applications or one or more applications and a previous registration. They are also a type of inter partes proceeding.
- Trademark appeals: Trademark applicants may file a trademark appeal after receiving an examining attorney's second and final refusal. These cases are sometimes called ex parte appeals. Applicants file after paying the prescribed fee for each class they're appealing in their registration application. Applicants can appeal for some classes but not others, provided they specify which classes they're appealing to. Through an appeal, the applicant aims to get trademark registration. All appeals must be filed within six months of the examining attorney's final refusal.
During trademark cases, trademark attorneys present legal arguments to convince the TTAB to support their clients. TTAB proceedings can be confusing, but a good trademark attorney will make the process clearer and offer their clients peace of mind.
Procedure for the Most Common TTAB Cases
- The applicant pays the appeal fee for each disputed trademark class. This first step needs to occur within the six-month statutory filing period. Otherwise, the application is abandoned. Applicants can appeal one or several trademark classes. All disputed classes must be specified unless the multi-class application and appeal fee covers all classes. If the applicant doesn't specify disputed classes and doesn't pay the fee to cover all classes, the TTAB issues a written notice that the applicant must pay more fees or specify disputed classes within a set time. If this period passes with no further word from the applicant, the TTAB applies the fees to classes in ascending order, starting with the lowest numbered class.
The case goes before the TTAB. The TTAB's opposition and cancellation cases are settled with procedures similar to those in any courtroom. Common elements include:
- Trial briefs
- Oral hearings, in some cases
However, unlike civil litigation cases, proceedings before the TTAB are usually conducted in writing. The TTAB makes its final decisions based on written records of its cases.
Rules Governing the TTAB
While the TTAB is an official body, it is still governed by a variety of rules.
- Rules of Practice in trademark cases: Found in Title 37 of the Code of Federal Regulations, sometimes called the Trademark Rules. These rules were originally taken from the Federal Rules of Civil Procedure and the Federal Rules of Evidence.
- The Federal Rules of Evidence
- The Federal Rules of Civil Procedure govern the handling of evidence
- Certain provisions of Title 28 of the Code of Federal Regulations govern the handling of evidence
- Case law governs TTAB procedures. Case law comes from TTAB decisions, the United States Court of Appeals for the Federal Circuit and its predecessor, the Court of Customers and Patent Appeals, and the Director of the USPTO.
Options if The TTAB Rules Against You
You have several options for appealing. First, if you think the TTAB's made an error, you can file a Petition to the Director of the USPTO. A petition may be a good course of action if:
- Your request for more time to file the Notice of Opposition was denied.
- You were not happy with a non-final TTAB order.
- You want to have the demands of certain trademark rules waived or lifted.
You can also file an action in the U.S. District Court. The Court reviews your case and any new evidence either party presents.
You could also appeal to the United States Court of Appeals for the Federal Circuit. You cannot present any new evidence in this appeal. The Court simply reviews your case as it was presented to the TTAB. The TTAB must accept any decision made by either of these courts.
Frequently Asked Questions
- Does the TTAB handle all trademark issues?
No. The TTAB is only responsible for resolving issues related to trademark registration. It does not settle matters concerning trademark use.
- Can I just take my trademark registration to a court instead?
The U.S. court system does not deal with trademark registration matters. They should all go through the TTAB.
- I want to take a trademark opposition case to the TTAB. How long do I have?
An opposition should be filed within 30 days of the mark's publication in the weekly USPTO Official Gazette. Alternatively, you can file a request to extend the time to file, but this should also be done within 30 days of the mark's publication.
- I want to have a trademark canceled. What grounds are acceptable for challenging a trademark?
You can typically file a petition for a trademark's cancellation if:
- The trademark is likely to be confused with your own trademark
- The trademark is very descriptive
- The trademark is deceptive or incorrectly described
- The trademark is very generic
- The trademark has been abandoned
- The trademark was obtained fraudulently
If a trademark has incontestable status, you can only petition for its cancellation due to the final three points.
- I heard the TTAB's Rules of Practice changed on 14 January 2017. What were the changes?
The new changes looked to bring the TTAB's Rules of Practice in line with the Federal Rules of Civil Procedure. They include:
- No party can make more than 75 requests for documents and admission during the 6-month discovery.
- Discovery must be served early enough so that responses can be received by the end of discovery.
- The deadline for filing motions to compel discovery is now earlier than the deadline for the plaintiff's pretrial disclosures.
- Live witness testimony is prohibited. All witness testimony should come in the form of written affidavits.
- In-person depositions may be made if the opposing party wants a witness affidavit cross-examined.
- All filings must be made online through the Electronic System for Trademark Trials and Appeals (ESTTA). This system handles all notices of opposition, answers, and other filings. Exceptions may be granted if ESTTA is unavailable or a party has special circumstances.
- The TTAB serves the defendant electronically. The defendant receives a link to the Trademark Trial and Appeal Board Inquiry System via email.
- Parties should serve all filings, including disclosures and discovery, via email.
- The response period for motions is now 20 days. Since correspondence occurs online, there is no more 5-day extended response period for mailed service. The response period for summary judgement motions remains at 30 days.
- Proceedings are suspended if potentially dispositive motions are filed.
- TTAB's standard protective order applies to all trademark appeals (inter partes) cases.
- Pleaded registrations are made record through a notice of reliance and copy of the relevant details from the USPTO database.
- Internet materials can be submitted using a notice of reliance.
Litigation is costly and there's no guarantee the result will go your way. Settling the matter with an opposing party and not in the courtroom is always the best possible option. If you're unsure whether you should go ahead with your case, post your legal need to get free custom quotes from the top 5% of trademark attorneys listed on the UpCounsel website.