TTAB Practice Toolkit: Oppositions, Cancellations, and Ex Parte Appeals

By Casey Scott McKay · 2023-10-01

The Trademark Trial and Appeal Board decides one question — may this mark be registered — and it decides it in three kinds of case: oppositions to published applications, cancellations of issued registrations, and ex parte appeals from final refusals. This toolkit maps all three against the Marksy corpus so a practitioner can find the right document at the right hour. It sets out the jurisdictional line between the Board and a district court, the entitlement-to-a-statutory-cause-of-action test that Lexmark and Corcamore installed in place of the old standing analysis, and the pleading standards for every common ground from likelihood of confusion to fraud. It then walks the inter partes calendar as the Board actually runs it — institution order, answer, discovery conference, initial disclosures, a 180-day discovery period capped at 75 requests of each kind, expert and pretrial disclosures, 30/30/15 testimony periods conducted entirely on paper, and 55-page briefs. The ex parte half covers the three-month appeal window that replaced the old six-month one, the closed-record rule of 37 C.F.R. 2.142(d), and the irrevocable 63-day fork between the Federal Circuit and a civil action under 15 U.S.C. 1071(b). More than thirty Marksy documents are annotated with what each covers and when to reach for it, followed by a branching reading path, a table of controlling authorities, and the templates that apply.

IP and Technology > Trademarks | Toolkit | Published 1 October 2023 - Updated 31 March 2025 | Casey Scott McKay - marksy.us

Summary. The Trademark Trial and Appeal Board answers one question — may this mark be registered — across three kinds of case: oppositions, cancellations, and ex parte appeals. This toolkit maps all three against the Marksy corpus so you can find the right document at the right hour. It covers the jurisdictional line between the Board and a district court, the entitlement test installed by Lexmark and Corcamore, pleading standards for every common ground, the inter partes calendar as the Board actually runs it, the paper trial with its notices of reliance and 30/30/15 testimony periods, and the ex parte route from final refusal through the 63-day fork under 15 U.S.C. § 1071. More than thirty Marksy documents are annotated with what they cover and when to reach for them, followed by a branching reading path, a table of controlling authorities, and the applicable templates.

Keywords: ttab practice · notice of opposition · petition for cancellation · ex parte appeal · entitlement to a statutory cause of action · lexmark standing · corcamore · tbmp · 15 usc 1063 · 15 usc 1064 · 15 usc 1071 · initial disclosures · notice of reliance · testimony period · accelerated case resolution · standard protective order · compulsory counterclaim · b&b hardware issue preclusion · trademark trial and appeal board · estta

Start Here

The Trademark Trial and Appeal Board is an administrative tribunal inside the USPTO, staffed by administrative trademark judges, with jurisdiction over exactly one subject: the right to register. 15 U.S.C. § 1067. It cannot enjoin anyone, award a dollar of damages, shift a fee, or decide who may use a mark in the marketplace. It can refuse a registration, cancel one, restrict one under 15 U.S.C. § 1068, or tell an examining attorney she was wrong.

That narrowness is the thing most often forgotten. A client who says "I want to shut them down" does not want the Board. A client who says "their registration is blocking my application" almost certainly does.

Who this is for. Brand owners deciding whether to oppose. Applicants who just received an institution order. Petitioners attacking a registration that blocks their own filing. Prosecutors holding a final refusal with three months to act.

The three questions it answers.

Am I in the right forum, and which proceeding? Opposition, cancellation, ex parte appeal, TMA expungement, letter of protest, district court, or nothing at all.
What must I plead and prove, and by when? Entitlement to a statutory cause of action, priority, the substantive ground, and the deadline that will not move.
How does the case actually run? Disclosures, discovery caps, a trial conducted entirely on paper, briefs, and the routes out.

If you read only one thing, read TTAB Proceedings: Opposition vs. Cancellation. It is four minutes long and it prevents the most expensive mistake in this area — filing the wrong proceeding, or filing the right one after the window closed.

The Landscape: One Question, Two Kinds of Case

Every Board case is either inter partes — two adverse parties litigating registrability — or ex parte, an applicant contesting a refusal with only the Office across the table. The machinery is almost entirely different.

The inter partes side. Once an examining attorney approves an application, the mark publishes in the Official Gazette. Anyone who believes it will be damaged by registration has thirty days to oppose or request an extension. 15 U.S.C. § 1063(a). Extensions run to a hard ceiling of 180 days from publication: a first 30-day extension for the asking and no fee, a 60-day extension for good cause, and a final 60-day extension only with the applicant's written consent. 37 C.F.R. § 2.102(c). The Board takes "we need to investigate" or "we are in settlement discussions" as good cause without inquiry, and does not extend past 180 days for anything.

Miss the window and the mark registers. The remedy then is a petition to cancel under 15 U.S.C. § 1064 — same grounds, same tribunal, but now against a registration carrying a statutory presumption of validity, 15 U.S.C. § 1057(b), and a five-year clock. After five years, only the grounds in § 1064(3), (5), and (6) survive: abandonment, genericness, functionality, fraud, misrepresentation of source, certain § 2(a), 2(b), and 2(c) violations, and — since the Trademark Modernization Act took effect on 27 December 2021 — never having used the mark at all. Likelihood of confusion and mere descriptiveness disappear at year five. That fact drives more filing decisions than any other rule in Board practice.

The calendar. The institution order does the work of a summons and a scheduling order at once, and the Board serves it, not the plaintiff. 37 C.F.R. §§ 2.105, 2.113. It sets the answer date (conventionally forty days out), the discovery conference, a 180-day discovery period, initial disclosures, expert disclosures, pretrial disclosures, and three testimony periods. Discovery is Federal Rules discovery with hard caps bolted on: 75 interrogatories, 75 document requests, 75 requests for admission plus one authentication request, and ten depositions. 37 C.F.R. § 2.120. The Board's standard protective order applies automatically unless the parties substitute their own. 37 C.F.R. § 2.116(g).

Then comes the strangest part for anyone trained in district court: the trial. No courtroom, no live witness, no judge in the room. The plaintiff gets a 30-day testimony period, the defendant 30 days, the plaintiff 15 days of rebuttal, 37 C.F.R. § 2.121(c), and testimony arrives as declarations or depositions, 37 C.F.R. § 2.123(a). Documents that need no sponsoring witness come in under a notice of reliance filed during the offering party's testimony period — printed publications, official records, third-party registrations, interrogatory answers, admissions, and internet pages that display their date and source. 37 C.F.R. § 2.122(e), (g); Safer, Inc. v. OMS Investments, Inc., 94 U.S.P.Q.2d 1031 (T.T.A.B. 2010). Only then do the parties brief: 55 pages per main brief, 25 for a reply, and an optional 30-minute argument requested within ten days of the last reply. 37 C.F.R. §§ 2.128, 2.129(a).

Institution to decision runs two and a half to three years. Most cases never get there; the overwhelming majority settle or default, which is why the filing decision and the settlement decision matter far more than trial skill.

The ex parte side has a closed record, no adversary but the Office, and a shorter fuse. Since December 2022 the window to appeal a final refusal is three months for most applications, not the six months a great deal of older guidance still recites. 37 C.F.R. §§ 2.62(a), 2.142(a). Evidence must be in the record before the notice of appeal; afterward the record is closed and reopening it takes a good-cause remand. 37 C.F.R. § 2.142(d). Three judges decide on the papers, and they affirm the examining attorney in the large majority of cases.

The two sides converge on the way out. Both an adverse inter partes judgment and an affirmed refusal are reviewable within 63 days, and the choice is the same and equally irrevocable: the Federal Circuit on the closed agency record, 15 U.S.C. § 1071(a); 28 U.S.C. § 1295(a)(4)(B), or a civil action under § 1071(b) where new evidence is allowed. 37 C.F.R. § 2.145(d). An inter partes civil action goes to a district with jurisdiction over the adverse party and can carry infringement claims; an ex parte one goes to the Eastern District of Virginia against the Director, and the applicant pays the Office's expenses win or lose.

A Board judgment is also not confined to the register. B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 160 (2015), holds that where the usages adjudicated by the Board are materially the same as those before a district court, ordinary issue preclusion applies. An opposition filed casually can bind you on likelihood of confusion in the infringement case you file two years later.

Choosing the Forum Before You Choose the Filing

The first hour of a Board matter should be spent deciding whether it is a Board matter at all.

Federal Court vs. TTAB: Where to Bring Your Dispute draws the line between registration and use in plain terms. Read it at intake, and read it again if the client's goal shifts from "block the registration" to "stop the sales" — the second is not available at the Board at any price.

Trademark Litigation Toolkit: From Complaint to Judgment in Federal Court is the companion volume for everything the Board cannot do. Reach for it when the forum answer is "court," when a Board case runs parallel to litigation, or when you need to price the two side by side.

Pre-Litigation Enforcement Checklist covers the diligence that should precede either filing: ownership and chain of title, dating first use, preserving evidence, sizing the exposure. Work it before the demand letter goes out — and note the reason Sending an Effective Cease-and-Desist Letter belongs in the sequence here: a letter sent during the opposition window creates a written record of your knowledge, and knowledge dates the equitable defenses your opponent will plead. If you send it, calendar the opposition deadline the same day.

Brand Enforcement Toolkit: Watching, Warning, and Escalating sits above all of this, sequencing watch notice, demand, opposition, cancellation, and suit as one escalation ladder rather than four unrelated decisions.

Seeing It in Time: Watching, Publication, and the Extension Ladder

Trap. The 30-day opposition period runs from publication, not from the day you learn about the application. There is no discovery rule, no equitable tolling, and no petition that revives it. The only cure is a cancellation petition, which costs more, takes longer, and faces a presumption of validity.

Trademark Watch Services: What to Monitor explains what a watch actually covers — new filings, Gazette publications, common-law and domain uses — and how to triage the alerts. Set it up before you need it; a subscription bought the week after publication is worth nothing.

What Happens After You File: The Examination Timeline gives the upstream sequence, so you can predict when a competitor's application will surface in the Gazette. Docketing Deadlines is about maintenance filings, but the discipline transfers exactly: at the Board the extension ceiling, the answer date, and the 63-day appeal window are unforgiving, and the failure is always a calendar failure rather than a legal one.

WIPO Office Actions and Provisional Refusals is required reading when the target is a § 66(a) Madrid extension of protection, which follows its own rules — the Board will not accept a paper extension request or a paper opposition against one under any circumstances. 37 C.F.R. §§ 2.101(b)(3), 2.102(a)(1). The International Trademark Toolkit carries the broader Madrid mechanics.

Worked example. Sable & Quill, a Providence stationery maker with a 2016 registration for SABLE & QUILL for fountain pens, gets a watch alert on 3 March: SABLEQUILL published for "pens; pen cases" by a Nevada applicant. The deadline to oppose is 2 April. Counsel files the free 30-day extension on 28 March, uses the month to confirm the applicant's specimen is a dropshipped stock photo, then files a 60-day good-cause extension to keep negotiating. Extension budget available: 150 days past the original 30, the last 60 of which require the applicant's signature. Resolve or file by 30 August.

Entitlement: The Threshold That Replaced Standing

The Board no longer says "standing." It says entitlement to a statutory cause of action, and the test comes from a false-advertising case. Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), requires an injury within the zone of interests the Lanham Act protects, proximately caused by the defendant. The Federal Circuit imported that framework into Board practice in Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1305 (Fed. Cir. 2020), holding it substantively the same as the older "real interest plus reasonable belief of damage" formulation of Ritchie v. Simpson, 170 F.3d 1092, 1095 (Fed. Cir. 1999).

The bar is low; the pleading obligation is real. A pleaded registration ordinarily does it, Cunningham v. Laser Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000), as does a blocked application, a demonstrated desire to use a term descriptively, or a counterclaim posture, which carries inherent entitlement. A petitioner need not own any proprietary right of its own. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370 (Fed. Cir. 2020). But entitlement must be pleaded up front and proved at trial, and a plaintiff who never puts its pleaded registration into evidence has failed on an element.

Establishing and Proving Common-Law Trademark Rights is the document for an opposer with no registration to plead: what counts as use, and how to prove it with records a panel will credit — the same evidentiary problem as priority, only earlier. Its companion Common-Law Priority Evidence Checklist should go to the client at intake, so invoices and dated advertising are assembled before discovery closes rather than during the testimony period. Where Your Trademark Rights End covers the territorial doctrine that makes such a claim harder than it looks; read it before promising a client that regional use defeats a nationwide application.

Pleading the Ground: A Map of What You Can Allege

A notice of opposition or petition for cancellation is a complaint. Rule 8(a) applies, Twombly and Iqbal apply, and Rule 9(b) applies to fraud. 37 C.F.R. § 2.116(a); Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). The ESTTA cover form asks you to select the grounds, and the Board treats your selection as a limit on what you pleaded. Select carefully.

| Ground | Statute | After 5 years? | Marksy document | | --- | --- | --- | --- | | Likelihood of confusion | § 2(d), 15 U.S.C. § 1052(d) | No | Proving Likelihood of Confusion | | Mere descriptiveness | § 2(e)(1) | No | From Descriptive to Distinctive | | Genericness | §§ 14(3), 23 | Yes | Genericide | | Abandonment / non-use | §§ 14(3), 45 | Yes | Use It or Lose It | | Never used in commerce | § 14(6) (3+ years) | Yes | Proving and Defeating Abandonment | | Dilution | § 43(c), 15 U.S.C. § 1125(c) | No | Dilution Under the TDRA | | Fraud on the USPTO | § 14(3) | Yes | Fraud on the Trademark Office | | Functionality | §§ 2(e)(5), 14(3) | Yes | Trade Dress and Functionality | | Surname, geography, deception | § 2(e)(2)–(4), 2(a) | Mixed | The Section 2 Bars | | No bona fide intent | § 1(b), 15 U.S.C. § 1051(b) | N/A | Intent-to-Use Applications | | Unlawful use | § 45 "use in commerce" | In effect | The Lawful Use Requirement |

Likelihood of confusion is the workhorse, and at the Board the test is du Pont, not the regional circuit's. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Trademark Infringement: Proving Likelihood of Confusion is the plain-English orientation for a client, and the place to explain why the Board compares goods as identified in the application rather than as sold — the quirk that decides more Board cases than any other.

Dilution is pleaded far more often than won, because Board fame is the same demanding, general-public fame the statute requires and niche fame is fatal. Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012); Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164 (T.T.A.B. 2001). Trademark Dilution Under the TDRA has a dedicated Board section, including the different fame date; Bringing and Defending a Federal Dilution Claim devotes Stage 13 to Board dilution, from evidentiary vehicles to the absence of any monetary remedy. Run the go/no-go fame audit that opens the Trademark Dilution Claim Checklist before you tick the dilution box on the ESTTA form.

Abandonment is the most common cancellation ground and has the best cost-to-outcome ratio, because three consecutive years of non-use raises a rebuttable presumption. 15 U.S.C. § 1127. Use It or Lose It explains what the presumption shifts (production) and what it never shifts (persuasion), plus the circuit split on the standard of proof. Proving and Defeating Trademark Abandonment is the operational guide, and its Stage 4 gives you the fork you need first: a $400 ex parte expungement petition under 15 U.S.C. § 1066a may do the same job as a contested cancellation for a twentieth of the cost. Open the Trademark Abandonment Evidence Checklist the day you decide to investigate — before anyone touches the registrant's website — for the preservation protocol and the Rule 30(b)(6) topics.

Fraud almost never wins, and pleading it badly costs you the count and your credibility with the panel. In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), requires a knowingly false material statement made with intent to deceive. Fraud on the Trademark Office explains why so few survive; Pleading and Proving Trademark Fraud supplies Rule 9(b)-compliant paragraphs and the discovery behind them. Run the Trademark Fraud Claim and Self-Audit Checklist on your own registrations first.

Descriptiveness and genericness turn on surveys and third-party use records. From Descriptive to Distinctive is the doctrine; Claiming Acquired Distinctiveness at the USPTO and the Secondary Meaning Evidence Checklist are what a defendant uses to build the § 2(f) record that defeats the count. Genericide and the Genericness Defense and Prevention Checklist cover the far end of the spectrum and the survey designs the Board credits.

Identification-of-goods problems are quietly decisive. Because the Board compares goods as recited, an over-broad identification invites an opposition a narrower one would never have drawn, and a Section 18 restriction can carve the conflict out entirely. Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 U.S.P.Q.2d 1266 (T.T.A.B. 1994). Read Drafting an Identification of Goods and Services before drafting either a § 18 claim or a settlement amendment.

The Answer, the Defenses, and the Counterclaim You Must Not Forget

The answer admits or denies and states affirmative defenses in short and plain terms. 37 C.F.R. §§ 2.106(b)(2), 2.114(b)(2). Equitable defenses are authorized by 15 U.S.C. § 1069 — laches, acquiescence, estoppel, unclean hands, prior judgment — with two large caveats. Laches in an opposition usually fails because the clock runs from publication. Bridgestone/Firestone Research, Inc. v. Automobile Club de l'Ouest de la France, 245 F.3d 1359 (Fed. Cir. 2001). And equitable defenses are unavailable on public-policy grounds against descriptiveness, genericness, and abandonment claims, and against confusion claims where confusion is inevitable.

Trap. Any defense attacking the validity of a registration the plaintiff pleaded is a compulsory counterclaim if the grounds exist when the answer is filed. 37 C.F.R. §§ 2.106(b)(3)(i), 2.114(b)(3)(i). Omit it and you cannot bring it later in a separate cancellation. Vitaline Corp. v. General Mills, Inc., 891 F.2d 273 (Fed. Cir. 1989). Before you answer, pull every pleaded registration and screen it for abandonment, fraud, and functionality. This is the highest-value hour in a defendant's file.

Trademark Defenses Toolkit is the shelf for that screen, organizing defenses by what they attack rather than by name; work it the week the institution order arrives. Trademark Integrity Toolkit is for the case where the plaintiff's own conduct is the story — a serial opposer, a registration procured on a doctored specimen, a portfolio built on filings nobody ever used.

Naked Licensing covers a counterclaim ground that hides in plain sight: if the plaintiff licenses its pleaded mark and cannot describe a quality-control program, that is an abandonment theory requiring no day of non-use at all.

Discovery: Federal Rules, With Caps and a Protective Order You Did Not Draft

Understanding TTAB Discovery and the Protective Order is the orientation piece: what the standard protective order does, when to substitute your own, and how Board discovery differs from a district court's. Read it before the discovery conference, which is mandatory and which the Board will join on request. 37 C.F.R. § 2.120(a)(2).

Three mechanics that cost parties cases:

Initial disclosures come first. No discovery may be served until Rule 26(a)(1) disclosures are made. 37 C.F.R. § 2.120(a)(3). Serving interrogatories early is a free objection for your opponent.
Responses must be due by the close of discovery, so the last day to serve written discovery is thirty days before the close, not the close itself.
Motions to compel and dispositive motions suspend the proceeding automatically. 37 C.F.R. §§ 2.120(f)(2), 2.127(d). Sometimes a tactic, always a scheduling consequence.

The Board cannot award monetary sanctions, 37 C.F.R. § 2.120(h), but it can strike pleadings, preclude claims and defenses, exclude evidence, and enter judgment — in practice a sharper set of tools than a fee award.

For the content of a discovery set, the cluster guides beat any general treatment: Bringing and Defending a Federal Dilution Claim has targeted requests and 30(b)(6) topics for fame, and the Trademark Abandonment Evidence Checklist has the sales-record and custodian discovery that makes or breaks a non-use case.

Consider Accelerated Case Resolution early. ACR lets the parties stipulate to facts and a limited record and get a decision roughly fifty days after briefing. TBMP § 528.05(a)(2). For a two-registration priority-and-confusion dispute with no serious factual quarrel, it converts a three-year case into a nine-month one. Raise it at the discovery conference or you will not raise it at all.

The Paper Trial: Testimony, Notices of Reliance, and What Is Already In

A Board trial is an exercise in curating a record, not persuading a live factfinder. The USPTO file of the opposed application or challenged registration is automatically of record. 37 C.F.R. § 2.122(b). Almost nothing else is: dates of first use must be proved by competent evidence even though they appear on the face of the file, and specimens in the file are not evidence unless introduced through testimony.

Evidence and Expert Witness Toolkit is the reference for that layer — authentication, hearsay, business records, and expert admissibility under Federal Rule of Evidence 702. Use it while building your testimony declarations, not while objecting to your opponent's.

Surveys are the most expensive evidence in a Board case and often decisive on descriptiveness, genericness, and dilution. Consumer Surveys in Trademark Cases explains what each format measures and why the wrong format is worse than none. Commissioning and Attacking a Trademark Survey is the operational guide to universe, controls, and cross-examination, and the Trademark Survey Design and Challenge Checklist is what you hand the expert. Commission during discovery: expert disclosures are due thirty days before discovery closes, and a survey begun after that is a survey you cannot use.

Trap. A plaintiff whose testimony period closes without any testimony can be dismissed on the defendant's motion. 37 C.F.R. § 2.132. Nobody notices your registration certificate into evidence for you.

The Ex Parte Half: From Final Refusal to the Federal Circuit

Three Marksy documents cover this route at three depths and are designed to be used together.

Appealing a Final Refusal: Ex Parte Appeals to the TTAB and Beyond is the doctrinal treatment: Section 20 of the Lanham Act, 15 U.S.C. § 1070; the December 2022 shortening of the appeal window; the closed-record rule and the request-for-reconsideration interplay that is the real evidentiary deadline; which issues go to the Board and which must go to the Director by petition; and both exits under § 1071, with Booking.com as the worked example of a party that lost twice at the Office, won on a new survey, and paid $76,873.61 for the privilege. Read it the day the final action arrives.

Taking an Ex Parte Appeal is the sequence of moves in fourteen stages, with model language for the notice of appeal, the request for reconsideration, the statement of issues and its Rule 2.142(c) compliance sentence, an evidentiary objection, and a request for remand. Its Stage 14 table prices every step from the $225 notice of appeal to a civil action in Alexandria. Open it once you have decided to appeal.

Ex Parte Appeal Checklist is the eleven-phase tickable version, including the four-question diagnostic that tells you whether you lost a fact case or a law case — the only question that matters at the 63-day fork. Print it and work it top to bottom.

Before any of that, ask whether the refusal should be answered rather than appealed. The Office Action Response Toolkit is the upstream shelf and the Trademark Refusals and Statutory Bars Toolkit catalogues every way an application dies with the matching rescue. Responding to a §2(d) Refusal and Overcoming a Descriptiveness §2(e)(1) Refusal handle the two refusals that generate most appeals; Overcoming a Section 2 Refusal and the Section 2 Refusal Response Checklist cover the rest of the § 2 bars, with the Office Action Response Checklist as the mechanical pass.

A Suggested Reading Path

A competitor's mark just published and you have thirty days:

Opposition vs. Cancellation — confirm the proceeding.
Federal Court vs. TTAB — confirm the forum.
TTAB Opposition Filing Checklist — assemble grounds and exhibits.
How to File a Notice of Opposition — file, or file the extension.
The ground-specific document from the table above.

A registration is blocking your application:

Use It or Lose It — is it deadwood?
Trademark Abandonment Evidence Checklist — investigate before you plead.
Proving and Defeating Trademark Abandonment, Stage 4 — expungement, reexamination, or cancellation.
Filing a Petition for Cancellation — if the contested route wins.

You have just been opposed or petitioned against:

Understanding TTAB Discovery and the Protective Order — know the calendar you inherited.
Trademark Defenses Toolkit — screen the pleaded registrations for the compulsory counterclaim.
Secondary Meaning Evidence Checklist — if the ground is descriptiveness.
Coexistence Agreement — Template — because most of these settle.

You are holding a final refusal: Appealing a Final Refusal, then Ex Parte Appeal Checklist Phases 1–3, then Taking an Ex Parte Appeal Stages 4–7.

Primary Authorities

| Authority | Holding or rule | | --- | --- | | 15 U.S.C. § 1063 | Thirty days from publication to oppose or request an extension | | 15 U.S.C. § 1064 | Only §§ 14(3), (5), (6) grounds survive five years from registration | | 15 U.S.C. §§ 1067, 1068 | The Board's constitution and its power to cancel or restrict | | 15 U.S.C. §§ 1070, 1071; 28 U.S.C. § 1295(a)(4)(B) | Ex parte appeal to the Board; review in the Federal Circuit or by civil action | | 37 C.F.R. § 2.102(c) | 30 free, 60 for good cause, 60 with consent, 180-day ceiling | | 37 C.F.R. § 2.120 | 75 interrogatories, 75 requests each of production and admission, 10 depositions | | 37 C.F.R. §§ 2.121(c), 2.122(e), (g) | Testimony periods of 30/30/15; what comes in by notice of reliance | | 37 C.F.R. §§ 2.128, 2.129 | 55-page main briefs, 25-page reply, hearing requested within 10 days | | 37 C.F.R. §§ 2.134, 2.135 | Unconsented surrender or abandonment yields judgment against the defendant | | 37 C.F.R. §§ 2.142(d), 2.145(d) | The ex parte record closes on appeal; 63 days to seek judicial review | | Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014) | Zone of interests plus proximate cause governs statutory causes of action | | Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020) | Lexmark supplies the entitlement test in Board proceedings | | Australian Therapeutic Supplies v. Naked TM, LLC, 965 F.3d 1370 (Fed. Cir. 2020) | A petitioner needs no proprietary right of its own | | B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015) | Board findings can preclude relitigation where the usages are materially the same | | In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) | The thirteen-factor confusion test the Board applies | | In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) | Fraud requires a false material statement made with intent to deceive | | Vitaline Corp. v. Gen. Mills, Inc., 891 F.2d 273 (Fed. Cir. 1989) | An unpleaded compulsory counterclaim is lost | | Kappos v. Hyatt, 566 U.S. 431 (2012); Swatch AG v. Beehive Wholesale, 739 F.3d 150 (4th Cir. 2014) | New evidence in a § 1071(b) action unlocks de novo findings, issue by issue | | TBMP §§ 309.03(b), 528.05(a)(2), 1200 | Entitlement, accelerated case resolution, ex parte appeal practice |

Fees change; confirm the current USPTO schedule before quoting a client. As working figures, an opposition or cancellation is filed at $600 per class through ESTTA, an ex parte notice of appeal at $225 per class, and an oral hearing request at $500.

Forms and Templates

Notice of Opposition — Template is the starting shell for the pleading. Treat it as a skeleton, not a filing: every bracketed field must be replaced, the entitlement allegation written for your facts, and the grounds pleaded must match the grounds selected on the ESTTA cover form.

Trademark Coexistence Agreement — Template is the document most Board cases actually end in. Use it when the parties can live alongside each other with channel, territory, or goods restrictions — and note that it does double duty, since a properly drafted consent is also what converts a § 2(d) refusal into a registration.

Trademark Cease-and-Desist Letter — Template is the pre-filing move; date it, keep it, and calendar the opposition deadline the day you send it. Response to Office Action — Template is the ex parte counterpart and the last chance to build a record before 37 C.F.R. § 2.142(d) closes it. Trademark Assignment Agreement — Template matters more than it looks: a plaintiff whose pleaded registration has a broken chain of title has an entitlement problem and a fraud exposure at once.

Related Toolkits and Checklists

The Brand Owner's Master Toolkit is the index above all of these; start there if you are unsure which stage of the brand lifecycle your problem belongs to. Trademark Application and Prosecution Toolkit covers everything upstream of publication, which is where most opposition risk is created and where most of it could have been avoided.

Trademark Maintenance and Survival Toolkit is the defensive shelf: a registrant with clean use records and honest Section 8 declarations is a registrant nobody can cancel. Pair it with Section 15 Incontestability, which narrows the grounds available against you and sits naturally alongside the five-year cancellation cliff.

The Distinctiveness and Genericness Toolkit collects the spectrum arguments that decide descriptiveness and genericness counts from either chair, and the Trademark Transactions Toolkit is where a settled Board case goes to be papered. Choosing a Strong Trademark is the cheapest document on this page — most Board disputes are the delayed bill for a naming decision made without it.