TTAB Facts and Questions
Q: The parties have agreed to settle the case by amending the identification of goods in the involved application. Do I file it directly with the trademark examining attorney or do I need to request remand to the examining attorney?
A: You can call the TTAB Customer Service Center at (571) 272-8500. The Contact Representatives are available to:
A: In most cases, the Contact Representatives can answer your questions, or can refer you to the appropriate person to handle your concern. However, if you need additional help, you may ask the Contact Representative to refer your call to the appropriate TTAB supervisor.
Trademark-related mail to be delivered by hand or other private courier or delivery service (e.g. UPS, Federal Express) to the Trademark Trial and Appeal Board, must be delivered to:The Trademark Assistance Center Madison East, Concourse level Room C55 600 Dulany Street Alexandria, VA 22314
A: No, except for the Notice of Appeal in an ex-parte appeal proceeding. United States Patent and Trademark Office Rule 1.6(d)(8) bars facsimile transmission of papers to be filed with the TTAB. The Trademark Trial and Appeal Board Manual of Procedure notes that if other papers are filed with the TTAB by fax transmission, they will not receive a filing date. TBMP Section 107.
A: Case files are public records and are open to the public for review, except for certain documents filed under a claim of confidentiality. To look at a file, you can come to the TTAB's offices, or hire someone to copy a file for you. The TTAB Customer Service Center makes every effort to provide public access to application files, opposition files, cancellation files and concurrent use files immediately upon request for access.
A: Unfortunately, we can't fax papers to parties under most circumstances. We have an extremely heavy workload, and if we were to make a practice of faxing papers, we would get little other work done. You can come to the TTAB yourself or hire someone to copy any papers you need.
A: You can refer to the TTAB Manual of Procedure (TBMP) . The TTAB also follows the Federal Rules of Civil Procedure.
A: On our website, you can access TTAB decisions from 1997 to the present. You can access these decisions through the TTAB homepage, or by clicking this link: TTAB decisions link .
A: There are several organizations you can contact regarding ADR .
A: Depending on the type of proceeding, fees vary. To see a complete list of TTAB Fees, select the current Fee Schedule from the USPTO Fees page , then scroll to Trademark Processing Fees 6403/7403.
A: You can call the TTAB Contact Reps. at 571.272.8500 to request information on the status of your case. However, you should be aware that the TTAB has a heavy caseload and cases are handled in the order in which they are received. Please allow a reasonable period of time to pass before calling to check status. It may take some time for newly filed papers to reach the TTAB and be processed.
You can call the Customer Service Center and ask that they check the status of your case in our computer system. If the paper has not been entered, you can ask to speak to the legal assistant assigned to the case, who can tell you if he/she has received the paper. Please remember that it may take some time for a paper to reach the TTAB and be entered. You might wish to keep the legal assistant's name and number in your file so you can call the legal assistant directly on status questions
A: Check with the TTAB to see whether an answer has been entered in the file. If not, we will pull the file for entry of a notice of default. You will receive a copy. If an answer has been filed, we will fax a copy to you.
A: It is currently taking us approximately 3 months to decide contested motions. Your case will be decided in turn. If you have not received something from us after 4 months, you may choose to call and check the status of your motion.
A: Presently, the TTAB is rendering decisions in ex-parte appeals approximately 10 weeks after all briefs have been submitted or after a hearing date.
A: Presently, the TTAB is rendering decisions in these proceedings approximately 10 weeks after the case is ready for decision.
A: An opposition is a proceeding in which one party is seeking to prevent registration of another party's trademark. Under the law, if a party believes that he will be damaged by the registration of a mark, he can file an opposition. For more information, see TBMP Section. 102.02.
A: No, written disclosures or disclosed documents, requests for discovery, and materials or depositions obtained through the discovery process should not be filed with the Board except when submitted with a motion relating to disclosure or discovery, or in support of or response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party's testimony period.
A: A cancellation is a proceeding in which a party seeks to cancel an existing registration of a mark. Under the law, a person who believes he will be damaged by the registration may file a petition to cancel. For more information, see TBMP Section. 102.02.
A: You can file an appeal to the TTAB. You must file the appeal within six months of the mailing date of the final refusal to register. For more information, see TBMP Chapter 1200.
A: While you can represent yourself in a TTAB proceeding, you might wish to consider hiring an attorney to represent you. An opposition proceeding is just like a case in court. Even if you do not have an attorney, you will be expected to follow the Rules of Practice for the TTAB and the Federal Rules of Evidence, which are followed by the TTAB. You may find it difficult to properly conduct your case without legal counsel.
A: Unfortunately, the TTAB cannot recommend an attorney to you. Any attorney licensed to practice in the United States may represent you before the TTAB. However, intellectual property law (which includes trademark law) is a specialized area of the law. You may wish to keep this in mind as you choose an attorney.
A: No. The TTAB is the administrative body that decides ex-parte appeals, oppositions, cancellations and concurrent use proceedings. For this reason, we must remain impartial. We can offer general factual information about TTAB procedure, but no TTAB employee may advise you on your case. We cannot discuss how the rules and law apply to your individual circumstances, cannot recommend a course of legal action, and cannot comment on how your case may be decided.
A: You can refer to the TTAB Manual of Procedure (TBMP). The TTAB also follows the Federal Rules of Civil Procedure.
A: First, you will need to file an answer within the time stated in the order you received from the TTAB. In your answer, for each numbered paragraph you see in the notice of opposition, you should indicate the number and then admit or deny the statement, or state you are without enough information to admit or deny the statements made in these numbered paragraphs. It is possible that you may have certain defenses that should be stated as well, but we cannot give you any advice on those, which is why we recommend that you obtain the advice of an attorney. It may be helpful for you to read the TTAB Manual of Board Procedure (TBMP) .
A: You must file a motion to the TTAB asking that the TTAB accept a late-filed answer. In your motion, you must to set forth the reasons why the filing is late. The TTAB will consider whether you have shown good cause to set aside the default. Don't forget to serve a copy on the other side. You may also want to confirm that your mailing address is correct.
A: To get an extension of time, you must file a motion. Your motion may be contested. If it is not contested, it will be granted as conceded. Your motion may be denied if it is contested, so you may wish to get the consent of the other side and file the motion with their consent. See TBMP Section 509.
A: Time limits for filing Notices of Opposition or Requests for Extensions of Time to Oppose are strictly enforced. Unfortunately, you have missed your opportunity to file an opposition. You may file a petition to cancel, after the trademark registers. It takes about 3 months from the close of the opposition period (including extensions) until a registration issues if the case is not an Intent to Use case. It may take much longer for an Intent to Use case to mature to registration. Check the TM web site or status line to see if it has registered.
A: You must to file a document stating what you wish to do. If you want the matter dismissed without prejudice (which means that you would be free to come back at a later date and file another application to register your trademark), you will need to obtain the written consent of the other side; and, of course, you need to serve the other party to the proceeding with a copy of anything you file. If you do not obtain written consent, the proceeding will be dismissed with prejudice (which means you could not file again to register your mark).
Q13: The parties have agreed to settle the case by amending the identification of goods in the involved application. Do I file it directly with the trademark examining attorney or do I need to request remand to the examining attorney?
A: If a proceeding has been commenced and is still pending at the TTAB, you or your counsel must file the amendment with the TTAB. The Examining Attorney does not have jurisdiction over the case while a proceeding is pending at the TTAB. The TTAB will take the proper steps to have the amendment considered and, if appropriate, entered. See TBMP Section 514. However, if an opposition is not yet pending, and the application is only under threat of an opposition because of the filing of an extension of time to oppose, you or your attorney may file a post publication amendment. If you wish to file such an amendment, you may do so by using the post publication amendment form available on-line at http://www.uspto.gov/trademarks/teas/index.jsp In the latter circumstance, you and the potential opposer should note that the Board will not suspend the running of the extended opposition period to accommodate processing of the post publication amendment.
A: Every paper filed in an opposition, cancellation, concurrent use or interference case must be served on the other party or parties to the proceeding. This means a copy of the filing must be mailed to or delivered to the other party. Proof of service must be attached to the paper you file with the TTAB. This is a statement signed by the attorney or other authorized representative, stating the date of service and the manner in which service was made. See TBMP Section 113 for a complete explanation of service requirements.