What Happens in a TTAB Trademark Opposition

Oppositions surprise people on both sides. Applicants often learn about one only when the Board's notice arrives, and brand owners who file one are sometimes surprised by how much it resembles a lawsuit. This page explains how an opposition at the Trademark Trial and Appeal Board (TTAB) moves from filing to decision, with the deadlines the USPTO's rules set. It sits under our main copyright and trademark law page. If you are still deciding whether to oppose, start with what to do when someone files for your brand name.

How a TTAB opposition runs, step by step

Notice of opposition. The opposer files through ESTTA, the Board's filing system, within 30 days after publication or within an extension.
Institution. The Board sends a notice of institution that serves the applicant, sets the answer date and includes the trial order with the discovery and disclosure deadlines (37 CFR 2.105(a), 2.120(a)(1)).
Answer. The applicant admits or denies each allegation and pleads any defenses or counterclaim.
Discovery. The parties hold a discovery conference, exchange initial disclosures within 30 days after discovery opens, then have 180 days for discovery (37 CFR 2.120(a)(2)).
Motions. Either side may move for summary judgment after making its initial disclosures and before the pretrial disclosure deadline for the first testimony period (37 CFR 2.127(e)(1)).
Trial on a written record. Each side has a testimony period to file declarations, depositions and other evidence, followed by the opposer's rebuttal (37 CFR 2.121(b), (c)).
Briefs, hearing and decision. The parties file briefs, may request an oral hearing, and the Board issues a final decision that can be reconsidered or appealed.

What can the Board decide, and what can it not?

The Board is an administrative tribunal inside the USPTO. Its manual says it is empowered to determine only the right to register, and that it is not authorized to decide the right to use a mark or broader questions of infringement or unfair competition (TBMP 102.01). The USPTO's own description adds that the Board does not issue injunctions halting use.

That shapes strategy. Winning an opposition keeps a mark off the federal register. It does not, by itself, stop anyone from using a name. If use is the real problem, a court case may be needed, and the opposition record can still matter there.

The most common ground is likelihood of confusion. Unlike an examining attorney, who can only cite registrations and earlier applications, an opposer can rely on a mark or trade name "previously used in the United States by another and not abandoned" (15 U.S.C. 1052(d)). That is why an opposition is the usual home for prior-use arguments. The statute also allows oppositions based on likely dilution of a famous mark (15 U.S.C. 1063(a)).

How does an opposition start?

The opposer pays $600 per class opposed (37 CFR 2.101). The Board then issues a notice of institution, which serves the applicant and sets the deadline to answer. By rule that deadline is at least 30 days from the notice (37 CFR 2.105(a)). The current Board manual describes a long-standing practice of allowing 40 days and says the practice is changing to 60 days (TBMP 310.03(a)), so the date that counts is the one printed in your institution order.

An applicant who does not answer in time risks losing by default (37 CFR 2.106(a)). The answer admits or denies each allegation and states any defenses. If the applicant has grounds to cancel a registration the opposer relies on, that claim generally must be raised as a counterclaim with the answer (37 CFR 2.106(b)(3)). The opposer can withdraw without prejudice before the answer is filed; after that, withdrawal without prejudice needs the applicant's written consent (37 CFR 2.106(c)).

What are the stages, and how long does each take?

Board cases follow a schedule the Board sets in its orders, built from the periods below. Parties can agree to reset many of these dates with the Board's approval (37 CFR 2.121(a), (d)), so a case can run longer than the periods alone suggest.

Stages of a TTAB opposition under the USPTO rules
Stage	What happens	Period set by rule
Pleadings	Notice of opposition, institution order, answer and any counterclaim	Answer due on the date in the order, at least 30 days out (37 CFR 2.105(a))
Discovery conference	Parties discuss settlement and a discovery plan; a Board attorney joins on request	No later than the opening of discovery (37 CFR 2.120(a)(2))
Initial disclosures	Each side identifies its witnesses and documents	Within 30 days after discovery opens (37 CFR 2.120(a)(2)(ii))
Discovery	Written questions, document requests, requests for admission, depositions	180 days (37 CFR 2.120(a)(2)(i))
Trial	Opposer's case, applicant's case, opposer's rebuttal; pretrial disclosures before each	30 days each, rebuttal 15 days; disclosures 15 days before each period (37 CFR 2.121(c), (e))
Briefs	Opposer's brief, applicant's brief, opposer's reply	60 days after rebuttal closes, then 30 days, then 15 days (37 CFR 2.128(a)(1))
Oral hearing (optional)	Argument before at least three judges; $500 request fee	Request within 10 days after the last reply brief is due (37 CFR 2.129(a))

How is a Board case different from court?

The Board's rules borrow heavily from the Federal Rules of Civil Procedure, with changes that reflect its administrative nature. Evidence comes in only during the assigned testimony periods, unless the parties stipulate or the Board orders otherwise (37 CFR 2.121(a)). The Board can sanction a party that ignores discovery orders, but it will not hold anyone in contempt or award expenses (37 CFR 2.120(h)). And because the question is registrability, the analysis turns heavily on the goods and services as written in the application and in any registration involved (TMEP 1207.01(a)(iii)).

Discovery is also capped. Each party may serve no more than 75 interrogatories, 75 requests for production and 75 requests for admission, counting subparts, unless the Board allows more (37 CFR 2.120(d), (e), (i)). Witness testimony can come in by affidavit or declaration, and the other side may elect to cross-examine the witness orally (37 CFR 2.123(a)(1)).

Can an opposition settle?

Yes, and the Board encourages parties to consider settlement and alternative dispute resolution. According to the USPTO, settlement discussions usually result in withdrawal of the proceeding, withdrawal of the application or registration, or an amendment to it. While talks are under way, parties can file a consent motion to extend deadlines. They can also agree to Accelerated Case Resolution, which lets the Board decide the case on a streamlined record.

A common settlement tool is narrowing the application. An applicant may amend its description of goods or services to clarify or limit it, but never to broaden it (37 CFR 2.71(a)), so a careful first description leaves more room to negotiate. Many disputes over similar marks are also handled with a written agreement on how both names will be used, a subject covered in our guide to likelihood-of-confusion refusals.

What happens after the Board decides?

If the opposition fails, an application based on use proceeds to registration, and an intent-to-use application receives a notice of allowance (15 U.S.C. 1063(b)). A party unhappy with the decision can appeal to the U.S. Court of Appeals for the Federal Circuit, with a notice of appeal due within the time the USPTO sets, never less than 60 days, or instead bring a civil action in federal district court (15 U.S.C. 1071).

The USPTO's rule sets both deadlines at 63 days from the final decision (37 CFR 2.145(d)). A request for rehearing or reconsideration must be filed within one month of the decision (37 CFR 2.129(c)).

Do you need a lawyer for a TTAB case?

A party domiciled in the United States is not required to hire a lawyer, though the USPTO suggests considering one. A party without a domicile in the United States must be represented by a U.S.-licensed attorney (37 CFR 2.11(a)); our page on foreign companies and U.S. trademark attorneys explains that rule. Either way, the Board treats procedural deadlines seriously, and a missed answer or a missed testimony period can decide a case.

For how oppositions fit into the life of an application, see our post on how to register a trademark in 8 steps. For problems raised earlier by the examining attorney, read our guide to USPTO office actions.

What changes the answer

Whether the opposer pleads a registration. Priority is not in issue when the opposer pleads and proves a registration it owns, unless the applicant counterclaims or petitions to cancel it (TBMP 309.03(c)(2)).
Whether the pleaded registration is vulnerable. A counterclaim known at the time of the answer must be filed with it (37 CFR 2.106(b)(3)). Abandonment is one ground that can be raised at any age, as our page on losing a trademark through nonuse explains (15 U.S.C. 1064(3)).
A Madrid-based application. An opposition to a Section 66(a) application is limited to the goods, services and grounds on the ESTTA cover sheet and cannot be amended to add grounds (37 CFR 2.107(b)). Our page on protecting a trademark through the Madrid Protocol explains how those filings reach the USPTO.
A court case between the same parties. The Board may suspend the opposition until a civil action that may bear on it ends, including any appeal (37 CFR 2.117(a)). If infringement is the real fight, our page on trademark lawsuits in Atlanta federal court covers that route.
Settlement talks. Parties can suspend or extend by stipulation or consent motion, and the Board may ask about the status of talks before approving (37 CFR 2.117(c)).

A worked example

For example, suppose a small Atlanta hot sauce maker applied to register its brand for "sauces." After publication, a larger company files a notice of opposition claiming likelihood of confusion with a name it says it has used for barbecue sauce, without pleading any registration. The hot sauce maker receives a notice of institution with an answer date and a trial order.

It files its answer through ESTTA before the date in the order, denying the key allegations. Relying on use alone, the opposer must prove its rights came first (TBMP 309.03(c)(2)). The parties hold their discovery conference before discovery opens and exchange initial disclosures within 30 days after it opens. The discovery period then runs 180 days, and each side may serve up to 75 interrogatories.

Midway through, the parties discuss narrowing the application from "sauces" to "hot sauces," an amendment that limits rather than broadens the description (37 CFR 2.71(a)). They file a consent motion to extend the remaining dates while they talk. If talks fail, the trial runs: the opposer's 30-day testimony period, the applicant's 30 days, then a 15-day rebuttal, followed by briefs due 60, 30 and 15 days apart. Whoever loses has 63 days to appeal or to file a civil action (37 CFR 2.145(d)).

Common mistakes

Missing the answer date in the institution order. The case may then be decided by default (37 CFR 2.106(a)).
Holding back a challenge to the opposer's registration. A counterclaim whose grounds are known when the answer is filed must be pleaded with the answer (37 CFR 2.106(b)(3)).
Moving for summary judgment too early or too late: not before your own initial disclosures, and not after the first pretrial disclosure deadline (37 CFR 2.127(e)(1)).
Serving 90 interrogatories. The cap is 75, counting subparts, unless the Board allows more (37 CFR 2.120(d)).
Filing evidence outside your testimony period. Testimony and evidence come in only during the assigned periods unless the parties stipulate or the Board orders otherwise (37 CFR 2.121(a)).
As the opposer, letting your testimony period pass without evidence. The Board may enter judgment for the applicant (37 CFR 2.132(a)).

What to do this week

Open the proceeding in TTABVUE, the USPTO's public docket for Board cases, download the notice of institution and calendar the answer date and the discovery conference deadline.
If your business is domiciled outside the United States, arrange U.S. counsel before the answer date (37 CFR 2.11(a)).
Pull each registration the opposer pleads in TSDR and check its dates, status and maintenance filings; our page on trademark maintenance deadlines explains what a lapsed filing means.
Gather dated evidence of your first use, sales, advertising and the channels where you sell.
Keep every document and message about the mark, since discovery will reach them.
Reread your description of goods or services and note how far it could be narrowed if settlement becomes realistic.

Frequently asked questions

How long does a TTAB opposition take?

Added together, the periods in the rules (the answer, 180 days of discovery, three testimony periods with pretrial disclosures, and briefs due 60, 30 and 15 days apart) come to more than a year. Extensions, suspensions and motions can add time.

Do witnesses have to appear in person?

No. Testimony may be filed as an affidavit or declaration during your testimony period, subject to the other side's right to cross-examine the witness orally, or in writing if the witness is outside the United States (37 CFR 2.123(a)(1)). Depositions are also allowed.

Will your business information become public?

The Board's standard protective order applies automatically in every case, but material filed with the Board is shielded from public view only if a party designates it as protected under that order or an approved alternative (37 CFR 2.116(g)).

Can the winner recover attorney's fees?

No. The Board will not award attorneys' fees or other expenses to any party (37 CFR 2.127(f)), and the USPTO says it does not award money damages.

Can the opposer add new claims later?

For applications filed under Section 1 or 44, pleadings can be amended much as in federal court, but after the opposition period closes the opposer cannot add goods or services or a joint opposer (37 CFR 2.107(a)). Against a Madrid-based application, no new grounds can be added at all.

Zala IP Law handles trademark proceedings for applicants and brand owners across the United States and internationally. If you have received a notice of institution, or want to oppose a published mark, request a consultation or call 404-313-1701 with the proceeding or serial number.

What happens in a TTAB trademark opposition?