Opening Trial Brief
(Opposer/Petitioner) (TTAB)

Summary

This is a trial brief template for an applicant/registrant's (defendant) use in rebutting opposer's/petitioner's arguments and asserting its defenses in an opposition or cancellation proceeding before the Trademark Trial and Appeal Board (TTAB or Board). This template includes practical guidance, drafting notes, and alternate clauses. In particular, this template contains a sample argument responding to the grounds of likelihood of confusion and dilution, and also asserts a laches affirmative defense. Unlike in federal litigation, TTAB proceedings do not involve in person testimony or live presentation of evidence and arguments. Instead, during each party's respective testimony period, the party takes testimony outside the presence of the TTAB (usually through a testimony deposition or declaration), and then files the written transcript (or declaration) with exhibits. See Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 702.03. Parties then each have an opportunity to present their legal arguments incorporating the evidence of record in a trial brief. Defendant's Trial Brief is Optional For a defendant, filing a trial brief is optional, not mandatory, and the case will not be conceded if you do not file one. See Shenzhen IVPS Tech. Co. v. Fancy Pants Prods., LLC, 2022 TTAB LEXIS 383, *3, 2022 U.S.P.Q.2d 1035 (TTAB 2022) ("Applicant did not take testimony or introduce any evidence during its testimony period nor file a brief, but it is not required to do so."); Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., 2018 TTAB LEXIS 168, *12 n. 13, 126 U.S.P.Q.2d 1526, 1531 n. 13 (TTAB 2018) ("Because Respondent, as defendant herein, is under no obligation to submit evidence or a brief, we do not construe Respondent's failure to do so as a concession of the case."). However, if you do not file a brief, you will lose the opportunity to respond to the opposer's/petitioner's arguments and any affirmative defenses will be waived. Defendants only have one opportunity to file a trial brief, "[t]here is no provision for filing a reply brief, rebuttal brief, rejoinder brief, etc. by a party in the position of defendant." TBMP § 801.02(d). If either of the parties request an optional oral hearing, then a defendant may respond to any arguments from the plaintiff's reply brief at the hearing. Timing If you do file a trial brief, the TTAB includes deadlines for trial briefs for each party in the notice of institution issued at the beginning of an opposition or cancellation proceeding. For applicant/registrant the deadline for its opening brief will be no later than 30 days after the opposer/petitioner files its opening brief. 37 C.F.R. § 2.128(a)(1). You may obtain an extension of your trial brief deadline with the consent of the other party by filing a consented or stipulated motion which must be approved by the TTAB. If the other party does not consent then you must file a motion showing: • If the deadline has not yet passed, then file a motion to extend which requires that you: o State facts with particularity showing good cause for the extension o Demonstrate that the requested extension is not necessitated by your own lack of diligence or unreasonable delay in filing the brief by the original deadline • If the deadline has passed, then file a motion to reopen the time to file your trial brief which requires you: o Demonstrate that your failure to act by the original deadline was not the result of excusable neglect o Factors the TTAB considers in its analysis are: ▪ Danger of prejudice to the non-moving party ▪ Length of the delay and its potential impact on the proceeding ▪ Reason for the delay, including whether it was within your reasonable control ▪ Whether you acted in good faith See TBMP § 509. Required Contents and Format Generally, a trial brief should include the following sections: • Table of contents • Table of authorities (i.e., an alphabetical index of cases cited) • Description of the record (i.e., a list of the evidence that was properly introduced by the parties) • Statement of the issues • Recitation of the facts • Legal arguments –and– • Summary/conclusion 37. C.F.R. § 2.128(b); TBMP § 801.03. Note, that the TTAB rule on trial briefs only explicitly requires an alphabetical index of cited cases, but lists the other sections included above in describing page limitations. However, these other sections are helpful to include. See NetSpeak Corp. v. Columbia Telcoms. Group, Inc., 2004 TTAB LEXIS 309, *15 (TTAB May 13, 2004) ("Neither party's brief included a description of the record or a statement of the issues. Such information is generally helpful to the Board. Both parties' attorneys are strongly urged to supply such information in future briefs in inter partes Board cases."). A defendant's trial brief must be filed electronically, and be in at least 11-point type, double-spaced, and may not exceed 55 pages. 37. C.F.R. §§ 2.126, 2.128(b). All of the sections listed above count toward the page limit. The TTAB specifically advises that you may not attempt to avoid the page limit by using extensive single-spaced footnotes or otherwise circumventing the required formatting. Brittex Fin., Inc. v. Dollar Fin. Grp., Inc., 2022 TTAB LEXIS 408, *9 (TTAB November 4, 2022) ("We have cautioned that single-spaced footnotes are not to be used as a subterfuge to avoid the page limitations set forth in Trademark Rule 2.128."); see also TBMP § 801.03. You may raise evidentiary objections in a separate statement or an appendix attached to the brief which does not count toward the 55-page limit. 37. C.F.R. § 2.128(b); Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 2013 TTAB LEXIS 347, *8, 107 U.S.P.Q.2d 1750, 1754 (TTAB 2013) (denying motion to strike brief as exceeding page limit where 16-page appendix was "devoted solely to asserting and arguing respondent's evidentiary objections as opposed to any of the substantive claims" and did not count toward the page limit). You should not attach any evidence to your brief, but rather should cite to the evidence of record filed during the parties' testimony periods. See TBMP § 801.03 ("recitation of facts should include a citation to the portion of the evidentiary record where supporting evidence may be found"); Hole in 1 Drinks, Inc. v. Lajtay, 2020 TTAB LEXIS 9, *5, 2020 U.S.P.Q.2d 10020 (TTAB 2020) (TTAB "will not consider evidence and other evidentiary materials attached to the briefs unless they were properly made of record during the time assigned for taking testimony"). If you believe you need additional pages for your brief then you must file a motion for leave to exceed the page limit with the TTAB (the adverse party's consent is insufficient): • Motion must be filed on or prior to the deadline to file your trial brief • Do not file your proposed overlength brief with your motion • TTAB will consider the following in determining whether to grant your request: o Reasonableness of the number of additional pages sought o Novelty and/or complexity of the issues o Size of the trial record o Any other relevant facts or circumstances that support why the additional pages are necessary • TTAB will either: o Grant the motion, specify the allowed number of additional pages, and set a deadline for filing the brief –or– o Deny the motion and set a deadline for filing a brief that does not exceed the page limit 37 C.F.R. § 2.128(b); TBMP § 537. Note that the TTAB disfavors such motions, and they are rarely granted so only file if you think it is absolutely necessary. Additionally, if you file an overlength brief without seeking the TTAB's permission, then the TTAB will strike it and will not allow you to file a substitute brief meeting the page requirements. See Pinkerton Serv. Corp. v. Senior Techs., Inc., 2002 TTAB LEXIS 475, *14 (TTAB July 26, 2002) ("opposer's reply brief exceeds the page limit set by Rule 2.128(b), it is hereby stricken and has been given no consideration"); Mattel, Inc. v. Brainy Baby Co., LLC, 2011 TTAB LEXIS 400, *3, 101 U.S.P.Q.2d 1140, 1141 (TTAB 2011) (reply summary judgment brief exceeded page limit and "therefore received no consideration"). Filing Confidential Information If your brief contains material designated by either party as confidential pursuant to the TTAB standard protective order then you must file both a public redacted version and a separate confidential version. For the confidential version: • Add a header to the brief noting that it contains confidential information • Enclose the confidential information in the text in brackets to reduce any inadvertent reference by the TTAB to confidential information in its decision • File the brief under seal using the "Confidential" option in the ESTTA filing system 37 C.F.R. § 2.126(c); TBMP § 801.03. For the public version: • Redact the confidential information so it is not viewable • Although not required, consider adding a header to the brief (e.g., PUBLIC VERSION – CONTAINS REDACTIONS) • File using the General Filings option in the ESTTA filing system 37 C.F.R. § 2.126(c); TBMP § 801.03. Scrutinize material you designate confidential in your brief because even if you file material under seal, the TTAB may treat as not confidential any material it determines cannot reasonably be considered confidential. 37 C.F.R. § 2.116(g). "Confidentiality designations thus do not provide absolute immunity from the public disclosure of materials so designated." McGowen Precision Barrels, LLC v. Proof Research, Inc., 2021 TTAB LEXIS 167, *5-7, 2021 U.S.P.Q.2d 559 (TTAB 2021). "If a party over-designates material as confidential, the Board will not be bound by the party's designation, and will treat as confidential only testimony and evidence that is truly confidential and commercially sensitive trade secrets." Made in Nature, LLC v. Pharmavite LLC, 2022 TTAB LEXIS 228, *12, 2022 U.S.P.Q.2d 557 (TTAB 2022). In particular, the TTAB "must be able to discuss the evidence of record, unless there is an overriding need for confidentiality, so that the parties and a reviewing court will know the basis of the Board's decisions." Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 TTAB LEXIS 269, *5 n. 13, 2020 USPQ2d 10914 (TTAB 2020). Motion to Strike a Trial Brief The opposer/petitioner may file a motion to strike your brief where it: • Was filed after the deadline • Violates the 55-page limit –and/or– • Fails to comply with any other formatting requirements See 37 C.F.R. § 2.128(b); TBMP § 539. If the TTAB grants the motion to strike based on a formatting violation, then the TTAB may give you additional time to file a substitute brief but may also decide to give the brief no consideration. See 37 C.F.R. § 2.128(b); Rasa Vineyards, LLC v. Rasasvada, LLC, 2022 TTAB LEXIS 296, *4, 2022 U.S.P.Q.2d 769 (TTAB 2022) (granting motion to strike overlength brief, but allowing applicant to resubmit a shortened brief where it misunderstood the page limitations that resulted from the ACR stipulations). Additionally, if you attach any evidence to your trial brief that was not previously made of record, then the opposer/petitioner can move to strike it. See Hole in 1 Drinks, Inc. v. Lajtay, 2020 TTAB LEXIS 9, *4-5, 2020 U.S.P.Q.2d 10020 (TTAB 2020) (granting motion to strike evidence attached to trial brief because "a party may introduce testimony and evidence only during its assigned testimony period" and as such TTAB "will not consider evidence and other evidentiary materials attached to the briefs unless they were properly made of record during the time assigned for taking testimony"). For more information on oppositions and cancellations see, TTAB Litigation: Opposition Proceedings and TTAB Litigation: Cancellation Proceedings. For an overall guide to TTAB proceedings, see TTAB Proceedings Resource Kit.