Trademark Opposition and Cancellation Procedure

Inter parte proceedings before the Trademark Trial and Appeal Board largely consist of trademark opposition and cancellation proceedings. These proceedings are similar to federal civil lawsuits, but the procedure is different. For an explanation of the process, continue reading.

What Happens After a Notice of Opposition or Petition to Cancel is Filed?

After the Notice of Opposition or Petition to Cancel is served on the Applicant or Registrant, the Applicant or Registrant has 40 days to file an Answer or otherwise defend, including filing a Motion to Dismiss. The Notice of Opposition, Petition to Cancel, and respective Answers, and all other pleadings must comply with Fed. R. Civ. P. 8.

After the Answer is filed, the parties conduct the remainder of litigation pursuant to the scheduling order issued by the Interlocutory Attorney. This will involve conducting discovery, including interrogatories, requests to admit, requests for production of documents, and depositions (usually on written questions). One difference between traditional federal actions and TTAB proceedings is that the TTAB permits 75 interrogatories rather than 25.

TTAB “Trials”

Unlike civil court, there is no trial with the presentation of witnesses and evidence in the TTAB. Instead, there are “testimony periods” in which each side is permitted 30-days to submit its trial evidence, which the opposer being granted an additional 15-days to submit rebuttal evidence. During these stages, the parties introducing direct examination evidence through depositions or sworn statements of its clients.

Further, the parties are permitted to submit a “Notice of Reliance” and submit further documentary evidence in support of its claims.

After the above evidence is submitted, the parties submit written briefs. The Board decides the case on the written record, but either party may submit a request for an oral hearing before a panel of three Board members decided the case. The Board then decides the case within the following 4-8 months.

Appeal TTAB Decision

The losing party has the option to file an appeal of the Board’s decision to the United States Court of Appeals for the Federal Circuit or to a U.S. District Court within two months from the Board’s decision. The decision on whether to file the Federal Circuit or a District Court is an important decision. While appealing to the Federal Circuit is considered a traditional appeal, the District Court option provides the opportunity to introduce new evidence and assert claims and counterclaims for infringement, dilution, or other claims.

The Scheduling Order and Key Deadlines

Once an Answer is filed, the TTAB’s Interlocutory Attorney issues an institution order and a detailed scheduling order setting out all critical deadlines. These include the discovery period, the testimony periods for each side, the briefing schedule, and the date by which a request for oral argument must be filed. Missing any of these deadlines can have serious consequences—from losing the right to introduce particular evidence to entry of default judgment against a non-participating party.

The discovery period typically runs for approximately four to six months, though the parties may stipulate to extensions. The TTAB’s rules on discovery extensions are set forth in 37 C.F.R. § 2.120 and the TBMP. Extensions require either a stipulation signed by both parties or a showing of good cause. The Interlocutory Attorney has broad discretion to grant or deny extension requests and will not look favorably on requests made at the last minute without good cause.

Discovery in TTAB Proceedings

Discovery in TTAB proceedings is governed by 37 C.F.R. § 2.120, which incorporates—with modifications—the Federal Rules of Civil Procedure. The key tools available to parties include:

• Interrogatories: Each party may serve up to 75 interrogatories (compared to 25 in federal district court under Fed. R. Civ. P. 33). Responses are due within 30 days.
• Requests for Production of Documents: Documents relevant to the claims and defenses must be produced within 30 days of the request. The TTAB follows the broad relevance standard of Fed. R. Civ. P. 26(b)(1).
• Requests for Admission: Parties may use requests for admission to establish undisputed facts and narrow the issues for trial. Failure to respond within 30 days results in the matter being admitted.
• Depositions: Oral depositions may be taken. However, most depositions in TTAB proceedings are conducted on written questions rather than in person, which is a notable procedural difference from federal court practice. Depositions on written questions are less expensive but do not allow real-time follow-up examination.

Discovery disputes are resolved through written motions. The TTAB’s Interlocutory Attorney may issue orders compelling discovery, imposing sanctions, or granting protective orders. Parties that fail to participate in discovery in good faith—by stonewalling responses, providing evasive answers, or refusing to produce responsive documents—risk adverse consequences including adverse inference instructions or entry of default judgment.

The Testimony Periods and Notice of Reliance

After discovery closes, the proceeding moves into the testimony phase. Testimony in TTAB proceedings is submitted in writing—through affidavits, declarations, and transcripts of oral or written depositions—rather than presented live before a panel. This is one of the most significant procedural differences between TTAB practice and federal court trial practice.

Each side has a 30-day testimony period to submit its direct evidence. The opposer (or petitioner in a cancellation) goes first; the applicant (or registrant) submits its testimony second; and the opposer/petitioner may submit rebuttal testimony during a final 15-day period. Evidence submitted after the applicable testimony period closes is not considered by the Board.

In addition to testimony affidavits and depositions, parties may submit a Notice of Reliance to introduce documentary evidence such as printed publications, official records, prior registrations, Internet printouts, and excerpts from the applicant’s or registrant’s own website. The Notice of Reliance procedure allows parties to build their evidentiary records efficiently without requiring live witnesses for every document.

Post-Briefing Options and the Appeal Decision

After briefing closes, either party may request an oral argument before a panel of three TTAB administrative trademark judges. Oral argument is not a matter of right—the Board must grant the request—but it is routinely allowed when the parties have identified specific issues they wish to address verbally. The argument is typically 30 minutes per side and is held in Alexandria, Virginia, or by videoconference. The Board then deliberates and issues a written decision, typically within four to eight months.

The appeal options following a TTAB decision deserve careful consideration. An appeal to the Federal Circuit is confined to the record before the TTAB; no new evidence may be introduced. An appeal to a U.S. District Court under 15 U.S.C. § 1071(b) permits the introduction of new evidence and allows the district court to conduct a de novo review of all factual issues—but it also opens the door to counterclaims for infringement and dilution, which can significantly expand the scope and cost of the litigation. The choice between these two appeal routes is one of the most important strategic decisions in post-TTAB litigation.

Revision Legal’s trademark attorneys handle all phases of TTAB inter partes proceedings, from initial filings through appeal. Contact us at 855-473-8474 or through the contact form on this page.

Default Judgment and Sanctions in TTAB Proceedings

The TTAB has authority to impose sanctions, including entry of default judgment, when a party fails to comply with the Board’s rules or orders. The most common trigger for default judgment is a respondent’s failure to file a timely Answer to a Notice of Opposition or Petition to Cancel. The 40-day deadline for filing an Answer is strictly enforced. If the Answer is not filed, the Board will enter default and sustain the opposition or grant the cancellation without reviewing the merits. This means a registrant can lose its federal trademark registration—potentially representing years of investment in brand development—simply by missing a deadline.

Sanctions short of default can also be significant. Parties that fail to participate in discovery in good faith, that ignore Board orders compelling discovery responses, or that engage in dilatory tactics face adverse inference rulings, exclusion of evidence, and ultimately dismissal or default. The TTAB’s interlocutory attorneys are active in managing discovery disputes and will not tolerate non-participation. Any party served with a Notice of Opposition or Petition to Cancel should immediately retain trademark counsel and put critical deadlines on a closely monitored calendar.