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If you own a trademark, are applying for a trademark, are challenging the registration of a trademark, are seeking to have a trademark canceled, or are otherwise involved in a dispute over or about a trademark, you have some options about where to litigate the issues. Most often, trademark disputes are handled in federal court. But one option is to have your trademark dispute heard by the Trademark Trial and Appeal Board (“TTAB”). The TTAB is authorized by the Lanham Act and is part of the US Patent and Trademark Office (“USPTO”). Proceedings before TTAB have some similarities to court proceedings. But there are some important differences. Here are some tips and tricks for dealing with the TTAB.
Paper Proceedings Only: Prepare Accordingly
TTAB proceedings are “paper only.” This means that there are no “trials” or “live” witnesses in the traditional sense. Thus, the most important tip for dealing with TTAB proceedings is this: Practitioners and pro se parties must plan for and prepare their documentary evidence carefully with an exacting “eye” for what will be needed for the final submissions. For example, every document necessary for success must be submitted. There is no trial where lack of evidence can be “fixed” or a “forgotten” document can be introduced. Likewise, all documents must have their proper foundation when submitted since there is no trial where witnesses can lay the proper foundation.
Witnesses by Deposition Only
Since TTAB proceedings are “paper only,” the corollary is that witnesses “appear” only via deposition transcripts. This means that EVERYTHING a witness needs to say must be said during the deposition. Further, if the witness is laying evidentiary foundations for various needed documents, that must be done at the deposition. In addition, properly detailed objections to any evidence must be made at the depositions since there is no later opportunity. In effect, TTAB depositions should be treated as “evidence depositions” as those are used in court proceedings. Mostly, the TTAB has adopted the Federal Rules of Civil Procedure and Rules of Evidence with respect to discovery and admissibility of evidence.
Limited Depositions
Unlike court proceedings, witness depositions are limited to those who have signed written declarations — affidavits — related to the issues in the proceeding. Note also that, absent agreement, oral depositions are not allowed for witnesses that are not physically present in the US.
Limited Schedule Changes
Unlike court proceedings, the scheduling Order issued by the TTAB is set by rules and statutes. Thus, there are only very limited opportunities to modify the schedule. Thus, practitioners and pro se parties must plan ahead and meet their deadlines.
Other Discovery is Allowed, but Different
Other types of discovery — document requests, interrogatories and requests to admit — are allowed in much the same manner as for federal court proceedings (with some differences). Initial required disclosures are also used by the TTAB, but are more limited. Since the TTAB has no authority to award damages, there are no required disclosures or discovery allowed with respect to damages, insurance coverage and the like.
Documents Produced are Not Automatically Admissible
The TTAB allows a party to file what is called a “Notice of Reliance” which allows certain documents to be automatically admissible. Answers to interrogatories and deposition transcripts can be admitted in this manner. But documents produced pursuant to document requests cannot be admitted in this manner. Thus, a proper evidentiary foundation must be laid for such documents. Thus, complete document production is needed before depositions are scheduled and, for key documents, practitioners and pro se parties must choose the correct deposition witnesses and make careful plans for laying evidentiary foundations prior to and during the depositions.
Contact Revision Legal For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.
The TTAB exercises jurisdiction over two primary proceeding types: inter partes (opposition and cancellation) and ex parte appeals. It does not have jurisdiction over infringement claims, unfair competition claims, or damages. However, the Supreme Court confirmed in B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015), that TTAB likelihood-of-confusion rulings can have preclusive effect in later federal court litigation under the doctrine of issue preclusion. That means a loss at the TTAB can foreclose infringement arguments in subsequent district court proceedings—making TTAB strategy consequential well beyond the registration question.
TTAB proceedings follow a structured schedule: pleadings, discovery, testimony periods, and briefing. Discovery opens roughly 40 days after the pleadings close. Unlike federal court, TTAB proceedings are entirely document and deposition-based with no live hearings. Strategic priorities during discovery include:
In opposition and cancellation proceedings, likelihood of confusion under Section 2(d) of the Lanham Act (15 U.S.C. § 1052(d)) is typically the central legal issue. The TTAB applies the thirteen factors from In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). The two most heavily weighted factors are (1) similarity of the marks in appearance, sound, connotation, and commercial impression, and (2) relatedness of the goods or services.
Parties often over-invest in those two factors while underinvesting in equally important considerations: the strength of the cited mark, the sophistication of the relevant purchasers, the number of similar marks in the field, and the length of concurrent use without actual confusion. A comprehensive evidentiary record addressing all thirteen factors strengthens the final brief and positions the party favorably if the matter is appealed to the Federal Circuit.
The testimony period is functionally your trial. Each party has an opening testimony period to introduce affirmative evidence, followed by a rebuttal period. All testimony is submitted via affidavit or deposition transcript with accompanying exhibits. Because there is no live trial, every document the witness authenticates must be introduced at the deposition; every foundation must be laid on the record; and every objection not raised at deposition is generally waived.
Experienced TTAB practitioners approach each deposition with a complete exhibit list and a transcript outline—not merely a list of questions. The goal is to create a self-contained record that can stand alone when the Board reads the transcript months later.
A party dissatisfied with a TTAB decision has two appellate routes. First, an appeal to the U.S. Court of Appeals for the Federal Circuit, which reviews the TTAB record as a whole. Second, a civil action in federal district court under 15 U.S.C. § 1071(b), which permits introduction of new evidence. The civil action is almost always preferable when additional evidence exists that would have strengthened the case. Choose this route if the TTAB record is incomplete or if new evidence has emerged since the Board’s ruling.
If you have questions about the issues discussed in this article, contact the experienced attorneys at Revision Legal. We handle intellectual property, internet law, and business law matters for clients across the country. Contact us online or call us at 1-855-RL-LEGAL.
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