TTAB motion practice is the set of written requests a party files with the Trademark Trial and Appeal Board (TTAB) during an opposition or cancellation, asking the Board to rule on one issue before or apart from the final decision. The motions this page covers are a motion to dismiss, a motion for summary judgment, discovery motions, a motion to suspend, motions to amend, and the motions that come at trial and after the decision.
The rules are federal. The Lanham Act creates the Board, the U.S. Patent and Trademark Office (USPTO) sets its procedure in 37 C.F.R. Part 2, and those rules apply the Federal Rules of Civil Procedure “wherever applicable and appropriate,” except as the Part 2 rules otherwise provide. Minnesota has no statute on Board procedure. Its one rule that matters here is that an action to cancel a Minnesota state registration “shall be brought in the district court,” not at the Board. This page is written for Minnesota business owners whose company is a party to a TTAB case, and it is part of my material on trademark law for Minnesota businesses.
What Is Motion Practice at the TTAB?
A TTAB motion is a written request, filed with a brief, that asks the Board to decide one issue in an opposition or cancellation. The Board applies the Federal Rules of Civil Procedure where they fit, so many motions a business would see in federal court are available at the Board.
Under 15 U.S.C. § 1067(a), in an opposition or a cancellation “the Director shall give notice to all parties and shall direct a Trademark Trial and Appeal Board to determine and decide the respective rights of registration.” The procedure comes from 37 C.F.R. § 2.116(a): “Except as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.” Under 37 C.F.R. § 2.116(b), the opposer or petitioner is “in the position of plaintiff,” and the applicant or registrant is “in the position of defendant.”
The basic requirements are in 37 C.F.R. § 2.127(a): “Every motion must be submitted in written form,” it must meet the form rules of 37 C.F.R. § 2.126, and “It shall contain a full statement of the grounds, and shall embody or be accompanied by a brief.” Under 37 C.F.R. § 2.126(a), “Submissions must be made to the Trademark Trial and Appeal Board via ESTTA,” the Board’s electronic filing system. The steps of how a TTAB opposition runs, from the notice through trial, are covered separately.
How Does the Board Brief and Decide a Motion?
A motion is decided on paper: a motion with its brief, a response brief, and an optional reply, each with its own deadline and page limit. The Board holds no hearing on a motion unless it orders one, and a motion that goes unanswered can be granted as conceded.
The timing rules are in 37 C.F.R. § 2.127(a). Outside summary judgment, “a brief in response to a motion shall be filed within twenty days from the date of service of the motion unless another time is specified by the Trademark Trial and Appeal Board.” A reply follows the response, and the rule closes the briefing there: “The time for filing a reply brief will not be extended or reopened. The Board will consider no further papers in support of or in opposition to a motion.” I suggest checking the current text of the rule before relying on any period, because the USPTO amends its rules.
Length is capped. “Neither the brief in support of a motion nor the brief in response to a motion shall exceed twenty-five pages in length in its entirety,” and “A reply brief shall not exceed ten pages in length in its entirety.” The rule then states two consequences: “When a party fails to file a brief in response to a motion, the Board may treat the motion as conceded. An oral hearing will not be held on a motion except on order by the Board.”
Who decides matters too. Under 37 C.F.R. § 2.127(c), motions “not actually or potentially dispositive of a proceeding” may be decided by a single Administrative Trademark Judge, by an interlocutory attorney or paralegal with delegated authority, or by ESTTA itself. A request for reconsideration of a ruling “must be filed within one month from the date thereof” under 37 C.F.R. § 2.127(b). Every paper must also be served on the other side, on its attorney or other authorized representative if it has one. “Proof of such service must be made before the submission will be considered by the Office,” under 37 C.F.R. § 2.119(a). A signed statement “clearly stating the date and manner in which service was made will be accepted as prima facie proof of service,” under the same paragraph. Under 37 C.F.R. § 2.119(b), service “must be made by email, unless otherwise stipulated.” Absent a stipulation, another method is allowed only “if the serving party can show by written explanation accompanying the submission or paper, or in a subsequent amended certificate of service, that service by email was attempted but could not be made due to technical problems or extraordinary circumstances.”
How Does a Motion to Dismiss Work at the TTAB?
A motion to dismiss asks the Board to end a claim because the notice of opposition or petition to cancel, taken as true, does not state a valid claim. It is decided on the pleading alone, and a timely one suspends everything in the case not related to it until the Board rules. The motion “must be made before pleading if a responsive pleading is allowed,” under Rule 12(b). I suggest filing it within the time the Board’s notice sets for the answer, because under 37 C.F.R. § 2.106(a), “If no answer is filed within the time initially set, or as may later be reset by the Board, the opposition may be decided as in case of default,” and 37 C.F.R. § 2.114(a)(1) sets the same rule for a petition to cancel.
The ground is Federal Rule of Civil Procedure 12(b)(6), “failure to state a claim upon which relief can be granted,” applied through 37 C.F.R. § 2.116(a). In Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), the registrant moved to dismiss a cancellation petition, arguing the petitioner had no right to bring it. The Federal Circuit held that “the Lexmark analytical framework is the applicable standard for determining whether a person is eligible under § 1064 to bring a petition for the cancellation of a trademark” registration. That test asks whether the challenger’s interest falls within the zone of interests the statute protects and whether its claimed damage is proximately caused by the registration. The court accepted the petitioner’s well-pleaded allegations as true and held that its claim of likely confusion with its own mark was enough.
A denial at the pleading stage did not settle entitlement in one recent case. In Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359 (Fed. Cir. 2025), the Board had denied the applicant’s motions to dismiss earlier versions of a consumer’s opposition, then tried her entitlement to oppose as a separate first phase and dismissed. The Board explained that “[e]ntitlement to the statutory cause of action . . . is a requirement in every inter partes case.” The Federal Circuit affirmed: “Because the Board properly applied the Lexmark framework to conclude that Ms. Curtin was not entitled to bring her opposition under § 1063, we affirm.” The court also held that “the zone-of-interests test should be tailored based on the specific bases cited for opposing registration or seeking cancellation of the registration for a mark.”
Two procedural rules shape the motion. Under 37 C.F.R. § 2.127(d), when a party “timely files a potentially dispositive motion, including, but not limited to, a motion to dismiss, a motion for judgment on the pleadings, or a motion for summary judgment,” the case is suspended “with respect to all matters not germane to the motion.” While the motion is pending, “no party should file any paper which is not germane to the motion except as otherwise may be specified in a Board order,” under the same paragraph. Under Rule 12(d), “If, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings are presented to and not excluded by the court, the motion must be treated as one for summary judgment under Rule 56.” I suggest keeping a motion to dismiss to the pleading’s own words, because attaching evidence can turn it into a summary judgment motion with its own prerequisites.
What Are the Rules for Summary Judgment at the TTAB?
A summary judgment motion asks the Board to decide a claim without a trial because the material facts are not genuinely disputed. At the Board, it generally cannot be filed until the moving party has made its initial disclosures, and it must be filed before the day of the first pretrial-disclosure deadline, as originally set or as reset.
The standard is Rule 56(a): “The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” The Board’s timing rule is 37 C.F.R. § 2.127(e)(1): “A party may not file a motion for summary judgment until the party has made its initial disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction by the Trademark Trial and Appeal Board.” The same paragraph sets the outside limit: “A motion for summary judgment must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset.”
The responding party has a second option. Under Rule 56(d), “If a nonmovant shows by affidavit or declaration that, for specified reasons, it cannot present facts essential to justify its opposition, the court may” defer the motion, allow discovery, or issue another order. The Board’s rule sets a strict clock for that request: “A motion under Rule 56(d) of the Federal Rules of Civil Procedure, if filed in response to a motion for summary judgment, shall be filed within thirty days from the date of service of the summary judgment motion. The time for filing a motion under Rule 56(d) will not be extended or reopened.” The ordinary response has its own clock: “If no motion under Rule 56(d) is filed, a brief in response to the motion for summary judgment shall be filed within thirty days from the date of service of the motion unless the time is extended by stipulation of the parties approved by the Board, or upon motion granted by the Board, or upon order of the Board.” Under the same paragraph, “If a motion for an extension is denied, the time for responding to the motion for summary judgment may remain as specified under this section.”
The evidence does not have to be wasted if the motion fails. Under 37 C.F.R. § 2.127(e)(2), “If any motion for summary judgment is denied, the parties may stipulate that the materials submitted with briefs on the motion be considered at trial as trial evidence.” Denial happens. In Curtin, the opposer twice moved for partial summary judgment on claims that the applicant’s mark was generic, descriptive, and failed to function as a trademark, and the Board denied both motions. The records have to be in the motion papers. For summary judgment, the Board considers disclosures, discovery depositions, interrogatory answers, produced documents, and admissions “if a copy is provided with the party’s brief on the summary judgment motion,” under 37 C.F.R. § 2.127(e)(2). A supporting declaration “must be made on personal knowledge, set out facts that would be admissible in evidence, and show that the affiant or declarant is competent to testify on the matters stated,” under Rule 56(c)(4). I suggest moving for summary judgment on a question the documents settle, such as priority shown by dated records, because under Rule 56(a) a genuine dispute about a material fact defeats the motion.
How Do Discovery Motions Work Before the Board?
The main discovery motions are a motion to compel, a motion for a protective order, and a motion for sanctions. A motion to compel must show that the parties tried in good faith to resolve the dispute first. A motion to compel discovery must be filed before the day of the first pretrial-disclosure deadline, as originally set or as reset, and motions to compel initial or expert disclosures have earlier deadlines.
Under 37 C.F.R. § 2.120(f)(1), “A motion to compel discovery must be filed before the day of the deadline for pretrial disclosures for the first testimony period as originally set or as reset.” The same paragraph sets earlier limits for disclosures: “A motion to compel initial disclosures must be filed within thirty days after the deadline therefor and include a copy of the disclosure(s), if any, and a motion to compel an expert testimony disclosure must be filed prior to the close of the discovery period.” It must be supported by a showing that the moving party “has made a good faith effort, by conference or correspondence, to resolve with the other party or the attorney therefor the issues presented in the motion but the parties were unable to resolve their differences.” The motion must also attach the requests and responses in dispute. The Board suspends other matters while it decides, but under 37 C.F.R. § 2.120(f)(2), “The filing of a motion to compel any disclosure or discovery shall not toll the time for a party to comply with any disclosure requirement or to respond to any outstanding discovery requests or to appear for any noticed discovery deposition.”
A party resisting discovery moves for a protective order. Under 37 C.F.R. § 2.120(g), “for good cause, the Trademark Trial and Appeal Board may make any order which justice requires to protect a party from annoyance, embarrassment, oppression, or undue burden or expense.” Confidential business records start with protection already in place. Under 37 C.F.R. § 2.116(g), “The Trademark Trial and Appeal Board’s standard protective order is automatically imposed in all inter partes proceedings” unless the parties or the Board adopt a different one. The order protects only what a party marks: under the same paragraph, no material “shall be treated as confidential or shielded from public view unless designated as protected under the Board’s standard protective order” or another approved order. Marking alone does not keep a filing private: under 37 C.F.R. § 2.126(c), a confidential submission must be filed using the “Confidential” selection in ESTTA, and “A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.”
Requests are capped. Interrogatories, document requests, and requests for admission each “shall not exceed seventy-five, counting subparts,” under 37 C.F.R. § 2.120(d), (e), and (i), unless the Board allows more. A party served with too many interrogatories that is not willing to waive the objection must, “within the time for (and instead of) serving answers and specific objections to the interrogatories, serve a general objection on the ground of their excessive number,” under 37 C.F.R. § 2.120(d). Paragraphs (e) and (i) set the same procedure for document requests and requests for admission. A party that wants more needs a motion for leave, which “must be filed and granted prior to the service of the proposed additional” interrogatories or requests. When a party disobeys a discovery order, 37 C.F.R. § 2.120(h)(1) lets the Board “make any appropriate order, including those provided in Rule 37(b)(2) of the Federal Rules of Civil Procedure, except that the Board will not hold any person in contempt or award expenses to any party.” The same paragraph reaches a party that “fails to participate in the required discovery conference,” and a motion for sanctions on that ground “must be filed prior to the deadline for any party to make initial disclosures,” under that paragraph. When a party “fails to make required initial disclosures or expert testimony disclosure,” and the party or its attorney tells the other side “that required disclosures will not be made, the Board may make any appropriate order, as specified in paragraph (h)(1) of this section,” under 37 C.F.R. § 2.120(h)(2). The same paragraph applies when a party or its officer, director, managing agent, or designated witness “fails to attend the party’s or person’s discovery deposition, after being served with proper notice, or fails to provide any response to a set of interrogatories or to a set of requests for production of documents and things,” and the party or its attorney informs the party seeking discovery “that no response will be made thereto.” The rest of discovery in TTAB proceedings is covered on a separate page.
How Do Parties Pause or End a Case by Motion?
A party can ask the Board to suspend a case while a lawsuit, another Board case, or a settlement discussion plays out, and the parties can end a case by an agreed motion. After the answer is filed, the plaintiff’s opposition or petition “may not be withdrawn without prejudice” except with the defendant’s written consent. A defendant that abandons its application or surrenders its registration without the written consent of every adverse party has judgment entered against it.
The suspension rule is 37 C.F.R. § 2.117(a): “Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a civil action, another Board proceeding, or an expungement or reexamination proceeding may have a bearing on a pending case, proceedings before the Board may be suspended until termination of the civil action, the other Board proceeding, or the expungement or reexamination proceeding.” If a dispositive motion is also pending, under 37 C.F.R. § 2.117(b) “the potentially dispositive motion may be decided before the question of suspension is considered regardless of the order in which the motions were filed.” Under 37 C.F.R. § 2.117(c), the parties can also stipulate to a suspension, and the Board may condition approval on information about “the status of settlement talks, discovery activities, or trial activities.”
Ending a case has its own rule. Under 37 C.F.R. § 2.106(c), “After the answer is filed, the opposition may not be withdrawn without prejudice except with the written consent of the applicant or the applicant’s attorney or other authorized representative.” 37 C.F.R. § 2.114(c) sets the same rule for a petition to cancel. A defendant that gives up its mark without consent has judgment entered against it. Under 37 C.F.R. § 2.135, “if the applicant files a written abandonment of the application or of the mark without the written consent of every adverse party to the proceeding, judgment shall be entered against the applicant,” and 37 C.F.R. § 2.134(a) sets the same result for a registrant that applies to cancel its registration without that consent. For a registration the registrant lets lapse or go unrenewed, “In the absence of a showing of good and sufficient cause, judgment may be entered against respondent,” under 37 C.F.R. § 2.134(b). In one opposition I defended, the parties settled, and I filed a motion to dismiss that both sides had agreed to. The Board’s order dismissed the opposition with prejudice, and my client’s applications returned to the status they had before the challenge and moved forward. The terms that make that motion possible belong in a trademark settlement agreement.
A Minnesota state registration is not part of any Board case. Under Minn. Stat. § 333.305, “Actions to require cancellation of a mark registered according to sections 333.18 to 333.31 or in mandamus to compel registration of a mark according to sections 333.18 to 333.31 shall be brought in the district court.” How federal and Minnesota registration compare is a separate decision.
How Do Amendments and Counterclaims Work in a TTAB Case?
Pleadings at the Board can be amended much as in federal court, by consent or by motion, and the Board should allow an amendment when justice requires. Two limits are specific to the Board. An opposition cannot add goods or a joint opposer after the opposition period closes, and an opposition to a section 66(a) application is limited to the grounds, goods, and opposers named on its ESTTA cover sheet and cannot add to them once it is filed. An attack on the plaintiff’s registration will not be heard unless a counterclaim or separate petition to cancel is filed.
Opposition pleadings may be amended “in the same manner and to the same extent as in a civil action in a United States district court” under 37 C.F.R. § 2.107(a), with one limit. After the opposition period closes, including any extension, “an opposition may not be amended to add to the goods or services opposed, or to add a joint opposer,” under the same paragraph. An opposition to an application filed under section 66(a) of the Act, which covers an international registration extended to the United States, is narrower: under 37 C.F.R. § 2.107(b), “once filed, the opposition may not be amended to add grounds for opposition or goods or services beyond those identified in the notice of opposition, or to add a joint opposer.” “The grounds for opposition, the goods or services opposed, and the named opposers are limited to those identified in the ESTTA cover sheet regardless of what is contained in any attached statement,” under the same paragraph. Cancellation pleadings may be amended the same way as in a civil action under 37 C.F.R. § 2.115. The standard that applies is Rule 15(a)(2): “The court should freely give leave when justice so requires.”
A defendant who wants to attack the plaintiff’s own registration has to do it by counterclaim or by a separate petition to cancel. Under 37 C.F.R. § 2.106(b)(3)(ii), “An attack on the validity of a registration pleaded by an opposer will not be heard unless a counterclaim or separate petition is filed to seek the cancellation of such registration.” A counterclaim is compulsory when its grounds already exist: under 37 C.F.R. § 2.106(b)(3)(i), “A defense attacking the validity of any one or more of the registrations pleaded in the opposition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed.” “A counterclaim need not be filed if the claim is the subject of another proceeding between the same parties or anyone in privity therewith,” under the same paragraph, but the applicant must then promptly inform the Board, in the opposition, that the other proceeding was filed. Counterclaims also carry the cancellation time limits, because 37 C.F.R. § 2.106(b)(3)(iii) applies the cancellation rules, including 37 C.F.R. § 2.111, to counterclaims. Under 37 C.F.R. § 2.111(b), “The petition for cancellation may be filed at any time in the case of registrations on the Supplemental Register or under the Act of 1920, or registrations under the Act of 1881 or the Act of 1905, which have not been published under section 12(c) of the Act, on any ground specified in section 14(3) or section 14(5) of the Act, or at any time after the three-year period following the date of registration on the ground specified in section 14(6) of the Act.” Section 14 of the Act is 15 U.S.C. § 1064. The same paragraph sets the limit for everything else: “In all other cases, including nonuse claims not specified in section 14(6), the petition for cancellation and the required fee must be filed within five years from the date of registration of the mark under the Act or from the date of publication under section 12(c) of the Act.” Under 37 C.F.R. § 2.106(b)(3)(i), a counterclaim whose grounds are known when the answer is filed “shall be pleaded with or as part of the answer” rather than later. If the grounds are learned during the case, the counterclaim “shall be pleaded promptly after the grounds therefor are learned” under that paragraph. The grounds that can support it are listed on my page on grounds to cancel a registration.
A party may also want to narrow its own mark to settle or to avoid a conflict. Under 37 C.F.R. § 2.133(a), “An application subject to an opposition may not be amended in substance nor may a registration subject to a cancellation be amended or disclaimed in part, except with the consent of the other party or parties and the approval of the Trademark Trial and Appeal Board, or upon motion granted by the Board.” I suggest raising a narrower list of goods with the other side early, because its consent, with Board approval, is one of the two routes the rule allows.
What Motions Come Up at Trial and After the Decision?
At trial, the motions the rules provide include a defendant’s motion to dismiss when the plaintiff offers no evidence, and motions to quash or strike testimony from witnesses never disclosed. After the decision, a party can ask the Board to reconsider, then appeal to the Federal Circuit or file a civil action in federal district court, and an adverse party can move an appeal into a civil action. A party that files a civil action after an opposition or cancellation must also file a notice of it with the Board.
Under 37 C.F.R. § 2.132(a), “If the time for taking testimony by any party in the position of plaintiff has expired and it is clear to the Board from the proceeding record that such party has not taken testimony or offered any other evidence, the Board may grant judgment for the defendant.” A defendant may also move for dismissal for failure to prosecute, and judgment may then be entered against the plaintiff unless it shows excusable neglect. Under 37 C.F.R. § 2.132(b), when a plaintiff offers no evidence other than Office records showing the status and title of its pleaded registrations, a defendant may move for dismissal on the ground that the plaintiff, “upon the law and the facts,” has shown no right to relief. Under 37 C.F.R. § 2.132(c), “A motion filed under paragraph (a) or (b) of this section must be filed before the opening of the testimony period of the moving party, except that the Trademark Trial and Appeal Board may in its discretion grant a motion under paragraph (a) even if the motion was filed after the opening of the testimony period of the moving party.” Pretrial disclosures carry their own remedies under 37 C.F.R. § 2.121(e): “A party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition,” and for undisclosed testimony by declaration, “the remedy for any adverse party is the prompt filing of a motion to strike.” When a party fails to make its required pretrial disclosures, the same paragraph lets the other side move to delay or reset the later deadlines. For a witness who testifies live despite an improper disclosure or notice, 37 C.F.R. § 2.123(e)(3) lets the adverse party cross-examine under protest, but “Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record,” under that paragraph. The steps of TTAB hearing procedures follow briefing on the merits.
The Board’s power at the end of the case is set by 15 U.S.C. § 1068: it “may refuse to register the opposed mark, may cancel the registration, in whole or in part, may modify the application or registration by limiting the goods or services specified therein.” Under 37 C.F.R. § 2.129(c), “Any request for rehearing or reconsideration or modification of a decision issued after final hearing must be filed within one month from the date of the decision.” A party dissatisfied with the decision “may appeal to the United States Court of Appeals for the Federal Circuit thereby waiving his right to proceed under subsection (b) of this section,” or instead “have remedy by a civil action,” under 15 U.S.C. § 1071. The choice is not the appellant’s alone. The appeal “shall be dismissed if any adverse party to the proceeding, other than the Director, shall, within twenty days after the appellant has filed notice of appeal according to paragraph (2) of this subsection, files notice with the Director that he elects to have all further proceedings conducted as provided in subsection (b) of this section” under § 1071(a)(1). If the appellant then does not file a civil action within the time the statute allows, “the decision appealed from shall govern the further proceedings in the case” under the same paragraph. A party that files the civil action after an opposition or cancellation must “file notice thereof with the Trademark Trial and Appeal Board via ESTTA no later than five business days after filing the complaint in the district court,” under 37 C.F.R. § 2.145(c)(3). “Failure to file the required notice can result in termination of the Board proceeding and further action within the United States Patent and Trademark Office consistent with the final Board decision,” under the same paragraph. Where “there are adverse parties residing in a plurality of districts not embraced within the same State, or an adverse party residing in a foreign country,” 15 U.S.C. § 1071(b)(4) gives jurisdiction to “the United States District Court for the Eastern District of Virginia” for the civil action. An appeal starts with a written notice of appeal filed with the USPTO, and both routes have filing periods set by statute and the USPTO’s rules, so I suggest docketing them the day the decision issues. More on how TTAB cases end is on a separate page.
How Can Motion Practice Backfire?
Motions cost time and money, and a party that files them to delay can lose the case on sanctions. The Board can bar a party from filing motions without permission and, if it disobeys Board orders, enter judgment against it, though it cannot award attorney’s fees.
Corcamore shows the pattern. After losing its motion to dismiss, the registrant told the petitioner’s attorney it would bring “procedural maneuvers,” and then, in the court’s words, “Corcamore then embarked on a path of conduct that resulted in two separate sanctions and entry of default judgment in favor of SFM.” The Board found an “inordinate number of motions (all of which were denied) at a very early stage in this proceeding,” and barred the registrant from filing unconsented motions without Board permission. Later, “Corcamore failed to appear and did not alert SFM or the Board that the witness would not appear at the deposition.” The Board entered default judgment, cancelling the registration, and the Federal Circuit held that the Board did not “abuse its discretion in imposing default judgment as a sanction.”
Two smaller lessons sit in the same opinion. One side’s failures do not excuse the other’s, because “discovery misconduct by one party does not excuse the discovery misconduct of another party.” And the court noted that the Board had denied the registrant’s protective-order motion because it “failed to include a statement in support of its good faith effort . . . to resolve the [discovery] dispute.” The money limit runs both ways. Under 37 C.F.R. § 2.127(f), “The Board will not hold any person in contempt, or award attorneys’ fees or other expenses to any party.” I suggest filing a motion only when its ruling would change the outcome or the cost of discovery, because a timely potentially dispositive motion or a motion to compel suspends unrelated matters, and the Board will not shift the cost of a weak one.
Can I recover my attorney's fees if I win a motion at the TTAB?
No. Under 37 C.F.R. § 2.127(f), the Board will not hold any person in contempt or award attorneys’ fees or other expenses to any party, and 37 C.F.R. § 2.120(h)(1) repeats that limit for discovery sanctions. A winning motion can still change the case: it can dismiss a claim, compel answers, limit discovery, or, as a sanction for disobeying a Board order, end the case.
What happens if my company misses the deadline to respond to a motion?
Under 37 C.F.R. § 2.127(a), when a party fails to file a response brief, the Board may treat the motion as conceded. That rule allows extensions by approved stipulation, granted motion, or Board order, but if a motion for an extension is denied, the time for responding remains as specified, unless otherwise ordered. Federal Rule of Civil Procedure 6(b)(1)(B), applied through 37 C.F.R. § 2.116(a), allows more time only on motion made after the time has expired if the party failed to act because of excusable neglect. I suggest asking before the deadline, because a later motion needs that showing.
Does filing a motion to compel pause my own discovery deadlines?
No. Under 37 C.F.R. § 2.120(f)(2), filing a motion to compel does not toll the time to make required disclosures, answer outstanding discovery requests, or appear for a noticed deposition. The Board suspends the case for matters not related to the motion, and no party may serve new discovery during that suspension. A business that files a motion to compel should keep meeting its own discovery deadlines, because the motion does not stop them.
Can we file for summary judgment before making initial disclosures?
Only for two kinds of motion. Under 37 C.F.R. § 2.127(e)(1), a party may not file a motion for summary judgment until it has made its initial disclosures, except a motion asserting claim or issue preclusion or the Board’s lack of jurisdiction. Every other summary judgment motion waits for disclosures. The same rule sets the filing limit: the motion must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset.
Should the TTAB case keep going if the other side also sues us in federal court?
Not necessarily. Under 37 C.F.R. § 2.117(a), the Board may suspend a case when a civil action may have a bearing on it, until the civil action ends, including the time for any appeal. Either party can ask for suspension by motion, and the parties can stipulate to it. Under 37 C.F.R. § 2.117(b), if a potentially dispositive motion is also pending, the Board may decide that motion first. I suggest weighing whether the court case will decide the same registration questions, because that overlap is what the rule asks about.
Is a Minnesota state trademark registration challenged at the TTAB?
No. The Board decides rights to federal registration under 15 U.S.C. § 1067(a). Under Minn. Stat. § 333.305, an action to cancel a mark registered with the Minnesota Secretary of State shall be brought in the district court. A business facing both a federal registration and a Minnesota registration for the same mark may need two forums: the TTAB for the federal registration and a district court for the state one.
Next Steps for a Minnesota Business in a TTAB Case
The first step is to read the trial order the Board includes with its notice of institution and docket every date it sets, because the summary judgment and motion-to-compel-discovery deadlines are measured from the pretrial-disclosure deadline that order sets. Next, I suggest deciding early which motion, if any, would change the outcome: a motion to dismiss for a defective pleading, summary judgment on a documented issue, or a suspension when a lawsuit covers the same marks. A business that has a Minnesota state registration in the dispute should plan for district court on that registration under chapter 333.
More on trademark law for Minnesota businesses is on the practice page. If your company is a party to an opposition or cancellation and you would like to know whether a motion you received can be defeated, or whether a motion you are considering is worth filing, email [email protected] with the proceeding number and a short description of where the case stands. I will run an intake and conflict check before you send any confidential documents.