Understanding TTAB Oppositions and Cancellations: A Complete Guide

When it comes to protecting your trademark rights, disputes don’t always happen in federal court. Many trademark conflicts are decided before the Trademark Trial and Appeal Board (TTAB), a branch of the U.S. Patent and Trademark Office (USPTO) that handles oppositions and cancellations.

If you’re a business owner, entrepreneur, or brand manager, understanding the TTAB process, including timelines, grounds for filing, and what to do if you find yourself on the receiving end, is critical. This guide breaks it all down.

What Is the TTAB?

The Trademark Trial and Appeal Board (TTAB) is an administrative tribunal within the USPTO. In addition to reviewing appeals, it decides cases involving:

• Trademark oppositions – Challenges by a third party to pending trademark applications before registration.
• Trademark cancellations – Challenges by a third party to existing trademark registrations.

The TTAB does not decide questions of infringement, damages, or injunctions. Instead, it decides only whether a mark can or should be registered. Their power is limited to to granting, refusing or rescinding a USPTO Trademark registration.

TTAB Oppositions

When Do Oppositions Arise?

Once a trademark application passes USPTO examination, it’s published in the Official Gazette. At that point, any third party who believes they would be harmed if that application registers, has 30 days to file a Notice of Opposition, or to request an extension of time. Opposition’s cannot be filed by just anyone, they have to have a specific reason.

Common Grounds for Opposition

• Likelihood of confusion with an existing registered or prior-used mark.
• Descriptiveness, where the applied-for mark is too descriptive or generic.
• Dilution of a famous trademark because the mark would dilute the distinctiveness of a famous trademark.
• Fraud in acquiring the application, because the applicant knowingly made false statements to the USPTO.

TTAB Cancellations

When Can a Registration Be Challenged?

A petition to cancel may be filed against an existing trademark registration. Similar to Oppositions, there are certain timeline limitations for cancellations as well.

• Within 5 years of registration: A mark may be challenged on most grounds, including likelihood of confusion, descriptiveness, and more.
• After 5 years: The mark becomes incontestable for many grounds, but cancellation is still possible for limited reasons, such as abandonment, genericness, or fraud.

Common Grounds for Cancellation

To file a cancellation, someone needs to have a reason, such as:

• Abandonment, if the registrant stopped using the mark with no intent to resume.
• Genericness, if the registered mark has become a common name for the goods/services.
• Fraud on the USPTO.
• Likelihood of confusion with earlier rights, if filed within five years.

The TTAB Process: Timeline & Expectations

While every case is unique, the TTAB follows a structured litigation-like process. Here’s a typical timeline:

1. The pleading stage: Once an opposition is filed, the TTAB will issue a scheduling order. It usually sets out the entire timeline of the proceeding. This Order will have a deadline by which the application or registrant must respond, which is usually about 40 days. Here, an answer can also include a counter-claim. The TTAB will also require both parties to have an initial telephone conference to discuss how the next stage will unfold.
2. Discovery Phase: Each side gathers evidence to support its claims, requests information from the other side, and each side prepares answers and documents to share with the other. Depositions are also scheduled during this time. This phase lasts about 6-9 months. Generally, this is where the process becomes costly, and most cases will settle via agreement.
3. Expert phase: not everyone hires an expert,
4. Trial Phase: Parties submit testimony and evidence in written form.
5. Briefing & Decision: Each side files brief and the TTAB issues a written decision.

Duration

Most cases take 18 months to 3 years to resolve, depending on extensions and motions. Many parties will file requests for the TTAB to “suspend” or extend the case while they discuss settlement or catch up on document exchange.

Why File an Opposition or Cancellation?

Business owners may pursue TTAB proceedings to:

• Protect brand identity from confusingly similar marks.
• Clear the register of blocking marks that are abandoned or invalid, where it might block the registration of your similar trademark application.
• Avoid costly infringement litigation by stopping a problem early at the USPTO, or creating leverage over a competitor.

What If Someone Files Against You?

If you receive a Notice of Opposition or Petition to Cancel, don’t panic, but don’t ignore it either.

• Assess the strength of the claim, remembering that not all oppositions are equally strong. You might be in a strong position to fight back.
• Note the deadlines. Regardless of the strength of the case, failing to respond results in a default judgment against you.
• Consider settlement. Many TTAB cases resolve through agreements such as coexistence, consent, or narrowing the scope of goods/services. Even if you are in the right, it can be more cost-effective to reach an agreement.
• Considering hiring an intellectual property attorney specialized in trademark litigation. Navigating TTAB rules and deadlines without an experienced attorney can be costly. A good attorney will give you an honest assessment of your case and try to resolve it in a way that limits sacrifices on your end.

Practical Tips for Businesses

• Monitor the Official Gazette and trademark filings to spot potential conflicts early. Many intellectual property law firms such as Stemer Law offer monitoring subscriptions.
• Weigh costs if you are considering filing. TTAB cases can be less expensive than federal litigation, but they still require resources. However, they can be an excellent path forward if you have a brand you need.
• Act quickly if you believe a pending application or existing application threatens your rights. You have a 30 day window to file an Opposition. As for registrations, once that 5 years passes, you will have fewer grounds to cancel someone else’s trademark registration
• Use it or lose it! Be sure to use your logo or brand name in US commerce. Maintain records of the use too (advertising, sales, product photos) to defend against challenges.

Final Thoughts

The TTAB opposition and cancellation process is a powerful tool in protecting your trademark rights and defending your registrations. While the process resembles litigation, it is specialized and highly procedural. A knowledgeable trademark attorney can help you evaluate whether to file, defend, or settle a case.

At Stemer Law, we’ve guided clients through both sides of TTAB proceedings. Whether you’re looking to challenge a mark or defend your brand, understanding the TTAB process is the first step in protecting your business identity.

Have questions about TTAB actions? Stemer Law (Stemer, P.A.) is a Denver trademark law firm serving clients across the U.S. and abroad. With 1,000+ trademarks filed, we make brand protection simple, affordable, and effective. To speak with a trademark attorney contact us at hello@stemerlaw.com or (303) 928-1094