In a nutshell
TMIN News 13: TTAB
Trademark Statement of Use Extension FAQs
Rules and laws
TTAB proceedings are governed by the Lanham Trademark Act of 1946, as amended, (Trademark Act), 15 U.S.C. § 1051 et seq.; the rules of practice in trademark cases (commonly known as the Trademark Rules of Practice) found in Parts 2 and 7 of Title 37 of the Code of Federal Regulations (C.F.R.); the rules relating to the conduct of practitioners and the representation of others before the USPTO found in Part 11 of 37 C.F.R.; and guidance provided in the Trademark Trial and Appeal Board Manual of Procedure (TBMP).
The USPTO rules governing procedure in inter partes proceedings before the TTAB are adapted, in large part, from the Federal Rules of Civil Procedure, with modifications due primarily to the administrative nature of the TTAB proceedings.
View the most recent rule changes, federal register notices and rules. Also, view the PDF version of the U.S. Trademark Law: Rules of Practice and Federal Statutes for the current rules of practice and federal statutes governing TTAB proceedings.
Policies and procedures
Practices and procedures for litigating before the TTAB are published in the TBMP. It provides practitioners with basic and detailed information generally useful for litigating trial cases before the TTAB, and pursuing appeals of decisions made in the Trademarks unit of the USPTO. The manual does not modify, amend, or serve as a substitute for any existing statutes, rules, or decisional law and is not binding upon the TTAB, its reviewing courts, the Director of the USPTO, or any part of the USPTO. Nonetheless, the TBMP describes current practice and procedure under the applicable authority, as of the manual’s issue date and is a valuable resource.
Ex parte appeals
Each year, TTAB panels decide hundreds of appeals from refusals to register trademarks because they are descriptive, generic, confusingly similar to existing marks, or otherwise ineligible under the Trademark Act. Such refusals to register are initially issued by trademark examining attorneys, whose decisions may be appealed to the TTAB. New ex parte cancellation proceedings are being implemented and appeals of final decisions in those proceedings will also be decided by the TTAB. Decisions of the TTAB may, in turn, be appealed, in some cases, to a United States district court, or the United States Court of Appeals for the Federal Circuit.
The TTAB is also responsible for hearing certain kinds of inter partes proceedings (also called adversarial or trial cases), including oppositions to applications for registration, cancellation proceedings against registered marks, and concurrent use proceedings where a party alleges its mark is entitled to joint registration, based on geographic divisions of territory between the concurrent use applicant and other parties, often registrants.
- The Electronic System for Trademark Trial and Appeals (ESTTA) allows users to file new and subsequent requests for extensions of time to oppose, commence new proceedings, file responses to motions or orders in an existing ex parte or inter partes proceeding, and submit such items as evidence in trial cases and legal briefs in all types of cases. Parties commencing or involved in TTAB proceedings are required to use this electronic filing process.
- The Trademark Trial and Appeal Board Inquiry System (TTABVUE) allows users to obtain current proceeding status and to view proceeding prosecution history entries and most submissions or orders in the proceeding. ESTTA filers should use TTABVUE to verify online submissions made through ESTTA are received and entered into the proceeding record.
- The TTAB Reading Room allows users to search for final decisions and precedential orders.
Mandatory electronic filing
ESTTA is the TTAB’s filing system and electronic filing is mandatory for all filings. Visit the Filing with TTAB webpage for filing information and form options or read the ESTTA User’s Guide if this is your first time filing with the TTAB.
Although ESTTA allows online filing 24 hours a day, TTAB representatives are only available Monday through Friday, 8:30 a.m. to 5 p.m. ET to assist with resolving ESTTA technical issues. Visit the USPTO Systems Status and Availability webpage to check system status and planned outages. If ESTTA is not available on a weekend, holiday, or after the normal course or closure of business hours, visit the Filing TTAB Documents during an outage webpage for filing assistance.
Need more information about filing with the TTAB?
When feasible, settling disputed matters in a TTAB proceeding prior to a final decision is cost-effective for parties and encouraged by the TTAB. Most TTAB trial proceedings settle before a final hearing by a panel of judges. View the alternate dispute resolution and settlements webpage if you are a party to a TTAB proceeding and would like to consider a settlement or alternate resolution to your proceeding.
The TTAB usually conducts oral hearings Tuesdays through Thursdays either virtually or in one of the shared hearing rooms on the Alexandria campus. Oral hearings are usually open to the public. Visit the hearings webpage to view more information about TTAB hearings such as schedules, protocols, and Alexandria campus visiting information.
TTAB receipts and issued decisions
Visit the filing and pendency statistics webpage to view current pendency, inventory, new filing metrics, final decisions issued, processing times, and other statistics updated quarterly.
Hiring an attorney
Proceedings before the TTAB are legal proceedings. They are quite technical and highly specialized, involve complex questions of trademark law and procedure, and involve strict rules of practice. It is strongly recommended that any party to a proceeding secure the services of an attorney who is familiar with trademark law and Board practice; and representation by a U.S. attorney is required for any party without a U.S. domicile. Board personnel are not permitted to provide legal advice to any applicant or party, and they will not give any special consideration to applicants or parties who elect not to retain counsel. To locate an attorney, consult your local directory, the internet, the attorney referral service of a state or local bar association, or the American Bar Association. Read more about why you should hire a private trademark attorney and how to find one.
Who can represent you
Only attorneys licensed to practice in the United States are permitted to represent you at the TTAB. Employing an individual who is not authorized to practice before the USPTO to represent you in connection with your trademark application may jeopardize the validity of your registration. See TBMP § 114 for more information on attorney representation.
Pro bono legal services
- The Trademark Trial and Appeal Board (TTAB) Pro Bono Clearinghouse Program recognizes existing organizations that coordinate free legal services to members of the public in proceedings before the TTAB. These organizations match eligible clients with volunteer member attorneys. Currently, the International Trademark Association (INTA) Pro Bono Clearinghouse is recognized by TTAB.
- The Law School Clinic Certification Program provides pro bono representation to individuals and small businesses throughout the country in the prosecution of patent and trademark applications before the USPTO. Some law school clinics in this program also offer pro bono representation before TTAB to eligible candidates.
View the TTAB’s FAQs for answers to frequently asked general, procedural, and filing questions.
The TTAB Assistance Center is available Monday through Friday 8:30 a.m. to 5 p.m. ET and may be reached via phone at 571-272-8500 or 800-786-9199 or via email at TTABInfo@uspto.gov. Agents in the TTAB Assistance center can provide online assistance with filing documents in a TTAB proceeding, direct customers to specific TBMP sections for additional information, or provide status updates in pending proceedings.
Agents in the TTAB Assistance Center can not:
- Provide legal advice regarding intellectual property law or any other type of law
- Conduct searches for potentially conflicting marks
- Provide strategies or substantive information for responding to Board orders or filings of an adverse party, in proceedings before the Board
- Analyze or pre-approve documents before or after they are filed
- Interpret the law and rules
- Provide information on specific attorneys or firms
If you require this type of assistance, the TTAB encourages you to seek counsel from a U.S.-licensed attorney. Your domicile location may require a U.S.-licensed attorney to represent you in a TTAB proceeding.
For technical assistance with an ESTTA submission, email ESTTA@uspto.gov. Emails are usually answered within one to two business days.