Trademark law seems simple at first, but it gets very complex very quickly. This becomes very clear if you face or want to launch a trademark opposition or cancellation proceeding at the Trademark Trial and Appeal Board (TTAB). These proceedings are also known as inter partes proceedings, because the dispute is between the parties involved, with the TTAB in the role of the court.
This article is designed as comprehensive client’s guide to give you what you need to know about these proceedings to start the conversation with your attorney.
Take a Deep Breath
The first step for either the plaintiff or defendant in a TTAB proceeding is to take a deep breath. As the plaintiff, you might feel like the defendant has stepped on your brand and is trying to capitalize on the goodwill you’ve worked so hard to build. As the defendant, you may feel like the plaintiff is accusing you of doing something wrong, the name of your company is on the line, and you never thought a trademark application could put you in this position. So, start with a deep breath. Like most things in life, you have the best shot at accomplishing your goals with a cool head.
We’ll start off with going over the mechanics of an opposition or cancellation itself, and then we’ll get into the numbers of how to budget for one of these proceedings.
This Covers TTAB Trademark Oppositions and Cancellations
Trademark Oppositions and Cancellations proceed similarly so much of what’s here will apply to either of these TTAB proceedings. There are a few differences, some of which I will highlight throughout the article.
You’ll hear some terms used by this article or by your attorney, even interchangeably, but it is sometimes helpful to understand the analogues to a normal lawsuit:
| Civil Lawsuit Terminology | Opposition Terminology | Cancellation Terminology |
| Plaintiff | Opposer | Petitioner |
| Defendant | Applicant | Registrant |
| Complaint | Notice of Opposition | Petition for Cancellation |
| The Court | The Board / The TTAB | The Board / The TTAB |
Many of the remaining terms will be similar to what are used in a typical federal lawsuit. We’ll use these interchangeably throughout, so keep this table as a reference.
What is a TTAB Opposition?
Whenever a business applies for a federal trademark registration, the application will go through a series of phases including examination, publication, and finalization. Read this article for more on those phases and how to budget for them.
Once the trademark clears examination, it is published for opposition for 30 days. Any member of the public who believes they could be damaged by the registration of your trademark can at this point initiate an opposition proceeding against your trademark. That same member of the public can also file an extension of time to have more than 30 days to file their notice of opposition. Such an extension can be a precursor or even a first salvo in a dispute, so it’s important to watch out for and review them carefully.
Now, an opposition is far more than a simple notice saying something to the effect of “I oppose registering this trademark.” It’s actually more akin to a federal civil lawsuit, and it’s started by filing a Notice of Opposition, which can be viewed similarly to a formal complaint like what would be filed in a federal district court to start a lawsuit.
What is a TTAB Cancellation?
When a business is the holder of a federal trademark registration, another member of the public with standing to challenge the registration can petition to cancel that registration. For example, if it becomes clear that a trademark should never have been registered in the first place, a party can attempt to cancel it. Like an opposition, a cancellation is a formal proceeding akin to a federal civil lawsuit that is started with a Petition to Cancel rather than a notice of opposition.
A Mini-Lawsuit with Very Specific Outcome Possibilities
That brings us to how a TTAB opposition or cancellation is handled: like a mini-lawsuit. The proceeding is subject to the Federal Rules of Civil Procedure and the Federal Rules of Evidence, with slight modifications by Trademark-specific laws and regulations. For example, the trial looks quite different. More on that in the next section.
Stages of a Trademark Opposition or Cancellation
A TTAB proceeding, if taken all of the way through, will unfold in six distinct phases. These are:
- Pleadings. The Plaintiff will first file their Notice of Opposition or Petition for Cancellation, as the case may be. Following this, the Defendant will have a set period of time to respond to this initial pleading with a pleading of their own or a motion to dismiss. In any event, once an answer is filed, the pleadings stage concludes, though it can be reopened later in the proceeding if either party gains leave to amend their pleadings.
- Discovery. Similar to federal lawsuits, this stage involves exchanging information via interrogatories, document requests, requests for admission, and depositions to discover evidence that could be used in the case. Certain evidence may be protected as confidential or in some cases, for Attorneys’ Eyes Only (AEO).
- Summary Judgment. If a party thinks the evidence is in their favor, even if construed favorably to the other party, they may move for summary judgment. If granted, the motion resolves the dispute without the need to proceed further.
- Trial. TTAB trials proceed quite differently than federal trials. There is no jury, evidence is submitted electronically via the TTAB’s ESTTA portal, and the trial is conducted asynchronously over several months (i.e., the parties aren’t all in the room at the same time, though, of course, all parties are served with the other parties’ evidentiary submissions). The plaintiff is first permitted to submit evidence for their case-in-chief, then the defendant submits their evidence, then the plaintiff is allowed to submit rebuttal evidence.
- Briefing. Here, parties present their written arguments based on the evidence submitted at trial. The plaintiff leads with their brief, followed by the defendant’s response, and lastly, an optional rebuttal from the plaintiff. The parties may request an oral argument in front of the TTAB, though, this is not required.
- Post-Trial (Decision and Appeal). Post-briefing, a decision will be issued in due course by the TTAB. If the proceeding is sustained, the plaintiff wins. If the proceeding is dismissed, the defendant wins. Occasionally, there will be an outcome in between. Any party unhappy with the decision can appeal it to the Court of Appeals for the Federal Circuit or start an action in Federal District Court. If appeal is sought in the Court of Appeals for the Federal Circuit, the non-appealing party has a window of time to elect action in Federal District Court instead.
Timeline of a Trademark Opposition or Cancellation
Every TTAB proceeding could see a different timeline, since they all vary. Initially, when a complaint is filed, the timeline could look as follows:
| Milestone | Approx. Time from Start |
| Notice of Opposition / Petition for Cancellation Filed | Filing Date |
| Answer Due | 1.3 months (40 days) |
| Discovery Conference & Discovery Opens | 2.3 months |
| Initial Disclosures Due | 3.3 months |
| Expert Disclosures Due | 7.3 months |
| Discovery Closes | 8.3 months |
| Plaintiff’s Pre-Trial Disclosures Due | 9.8 months |
| Plaintiff’s 30-Day Trial Period Ends | 11.3 months |
| Defendant’s Pretrial Disclosures Due | 11.8 months |
| Defendant’s 30-day Trial Period Ends | 13.3 months |
| Plaintiff’s Rebuttal Disclosures Due | 13.8 months |
| Plaintiff’s 15-day Rebuttal Period Ends | 14.8 months |
| Plaintiff’s Opening Brief Due | 16.8 months |
| Defendant’s Brief Due | 17.8 months |
| Plaintiff’s Reply Brief Due | 18.3 months |
| Oral Argument Request Due | 18.6 months |
| Oral Argument (if requested) | 22 months |
| Final Decision | 21-26 months |
When a notice of opposition or petition for cancellation is filed, the parties will typically receive a scheduling order along the above lines, with additional dates included. It is common for some or all of these deadlines to be extended for a variety of reasons by the mutual consent of the parties (for example if working out a settlement) or pausing of the schedule due to a pending contested motion.
Outcomes, Remedies, & Damages for a Trademark Opposition or Cancellation
Even if the proceeding rules are complex and take a while to play out, the questions and possible remedies in both of these types of proceedings are fairly straightforward:
- A TTAB opposition proceeding asks whether a trademark application should be allowed to register, be refused, or be amended.
- A TTAB cancellation proceeding asks whether a trademark registration should remain alive, be canceled, or be amended.
There are no monetary (incl. attorney fees) damages in these proceedings.
Crafting an Effective Strategy
Because TTAB proceedings function similar to court cases, you need a strategy and a plan right from the start. Things that need to go into your strategy and plan include, among others:
- Your ideal outcome;
- Your business goals relative to the case;
- Resources can you commit to the case;
- Alternate options (e.g., rebranding) and their costs;
- Your theory of the case; and
- Evidence do you need to collect to prove your case.
Consult an Experienced Attorney
Engage an attorney familiar with TTAB proceedings. Discuss potential strategies early on, align them with your business goals, and decide on your end objectives. If you’re the defendant, you have to perform an honest review of the plaintiff’s case early, as this may affect your case strategy. Whether to fight the opposition or consider options like rebranding should be evaluated based on multiple factors including your resources and those of the opposer.
Keep the Settlement Option in Mind
As you bridge each phase, give due consideration to settling the case. Natural opportunities present themselves, such as during the pleading stage or after discovery when the parties are generally aware of the corpus of evidence available for the case. A pre-trial—or even pre-discovery—settlement might be better for your business than pursuing a prolonged battle. However, if you’ve built significant brand equity and the costs for rebranding are high, it may be to your advantage to prosecute or defend the case, even through to final decision.
Know Your Deadlines
You have to pay attention to the deadlines in the case. In our legal system, a blown deadline can be just as bad, if not worse, for a case than unfavorable evidence. Additionally, having a grasp on the deadlines can improve your plans for the case, as the imminence of certain deadlines may encourage the other side to work with you.
How Much Does a Trademark Opposition or Trademark Cancellation Cost?
Let’s look at an example budget for an opposition or cancellation proceeding. For the sake of this budget, we’ll assume this proceeding is being run by a law firm and it’s prosecuted and defended through final decision.
A Quick Primer on Law Firm Pricing
You’ll see most legal matters billed on one of three different bases: contingency billing, hourly billing, and flat fee billing.
- Contingency billing is where the law firm is paid a percentage of damages awarded in a case. No law firm will offer a TTAB proceeding on contingency because there are no monetary damages involved.
- Hourly billing is where the law firm is paid based on an hourly rate, per attorney or a blended rate, multiplied by the number of hours worked (usually measured in 1/10th of an hour increments). This is the most common form of legal billing.
- Flat fee billing is where the law firm charges a set price for a set scope of work, or a phase of a scope of work. They are best used for projects where the process is definable, like flat fee IP prosecution.
Check out this video if you want to learn more about these and when they’re used broadly for IP legal services. Now, let’s get into what drives cost of a TTAB proceeding up and down.
Example Budget for a TTAB Proceeding
While every proceeding is different, it’s helpful to understand the costs involved both with prosecuting a defending a TTAB proceeding in each phase.
| Phase | Activity | Cost† |
| Pleadings | Notice of Opposition / Petition to Cancel (Plaintiff only) | $1500–$2500 |
| Motion to Dismiss (Make/Respond) | $2500–$5000 | |
| Answer (Defendant only) | $1500–$2000 | |
| Discovery | Discovery Conference | $900–$1400 |
| Initial Disclosures | $500–$900 | |
| Propounding Discovery Requests | $1800–$2500 | |
| Discovery Responses (Preparing/Reviewing) | $3000–$9000 | |
| Deposition (Take/Defend) | $5000–$10,000 | |
| Expert Disclosures (If needed) | $2500–$7500 | |
| Motion for Summary Judgment (Make/Respond) | $5000–$20,000 | |
| Other Motion (Make/Respond) | $2500–$5000 | |
| Total Through Summary Judgment | $24,200–$65,800 | |
| Trial | Pretrial/Rebuttal Disclosures | $2500–$7500 |
| Trial Period | $5000–$12,000 | |
| Rebuttal Trial Period (plaintiff only) | $2500–$7500 | |
| Hearing (if requested) | $5000–$15000 | |
| Post-Trial | Review of Final Decision | $1000–$1500 |
| Total Through Final Decision | $40,200–$109,300 |
For tactical reasons, more exact numbers are not included here. The real costs of any one of these activities might be lower or higher than the ranges given. At Stake, we can discuss budgets more particularly if you decide to engage us as counsel in your TTAB proceeding and we have an opportunity to review the trademark and context.
Now, these costs do vary, so it’s helpful to understand what drives cost up or down.
What Drives Cost of a Trademark Opposition or Cancellation Up?
Several factors can increase the cost of a trademark opposition or cancellation proceeding:
- Complexity of the Case: More complex cases require detailed legal arguments and extensive evidence, which can increase legal fees. For example, complex cases can cost between $70,000 and $110,000 if taken all of the way through to final decision.
- Legal Fees: Hiring an experienced attorney or agent to lead the case is the greatest driver of cost, even though most parties may find it well worth it. Legal fees must be weighed against the value-add of having an experienced and licensed professional quarterbacking the case.
- Being the Plaintiff: The United States Patent and Trademark Office (USPTO) charges fees for filing a notice of opposition or petition for cancellation. The fee for filing a notice of opposition or a petition for cancellation is $600 per class.
- Discovery Costs: If the case goes to discovery, costs can increase due to the need for depositions, interrogatories, and document production.
- Expert Witnesses: In some cases, expert witnesses may be required to provide testimony or evidence, which can significantly increase costs.
- Trial: If the opposition proceeds to trial, costs can escalate due to the need for extensive preparation and presentation of evidence both in the trial periods and in the briefs.
What Drives Cost of a Trademark Opposition or Cancellation Down?
Conversely, several factors can help reduce the cost of a trademark opposition or cancellation proceeding:
- Simpler Cases: Cases with straightforward legal issues and minimal evidence have reduced overall legal fees. Simpler cases may cost between $40,000 and $50,000 if taken all of the way through to final decision.
- Settlement: Settling the case early can significantly reduce costs by avoiding prolonged legal proceedings. A case resolved before an answer is even filed can cost as little as $2,500.
- Limited Discovery: If both parties agree to limit the scope of discovery, costs can be reduced.
- Accelerated Case Resolution: Both parties can agree to Accelerated Case Resolution (ACR), which is a streamlined and expedited route provided by the TTAB for resolving inter partes trademark cases.
Knowing these factors is helpful both for budgeting purposes and for tactical purposes. Understanding what things cost may help you design your own plan and give you insight as to what the drivers of the other party may include.
Final Thoughts
A trademark is not automatically doomed by an opposition or a cancellation proceeding. But these do take some work no matter which side you’re on. Understanding the process and costs involved with a TTAB proceeding will both help you and your trademark attorney work more strategically and make your conversations far more productive and efficient.
Keep in mind, your legal strategy should be driven by your business strategy. Not the other way around. So, keep in mind it’s well worth it to take the time to make sure your attorney understands the business context of any TTAB proceeding.