Opening Trial Brief
(Applicant/Registrant) (TTAB)

Summary

This template is for an opening trial brief that an opposer/petitioner (plaintiff) may use to present its case in chief in an opposition or cancellation proceeding before the Trademark Trial and Appeal Board (TTAB or Board). Sample arguments based on likelihood of confusion and dilution are included. The template includes practical guidance, drafting notes, and alternate and optional clauses. 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. Opposers/petitioners also have the option of filing a rebuttal brief after the applicant/registrant (defendant) files its trial brief. Timing 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 opposer/petitioner the deadline for its opening brief will be no later than 60 days after the close of its rebuttal testimony period. 37 C.F.R. § 2.128(a)(1). The opposer/petitioner also has the option of filing a reply brief which will be due no later than 15 days after the applicant's/registrant's trial 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, to effectively present your case, your 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 plaintiff's opening 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 opening 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 (BNA) 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). Failure to File Opening Trial Brief If the opposer/petitioner does not file an opening trial brief by the deadline, the TTAB will take the following steps: • TTAB sua sponte issues an order giving the opposer/petitioner 15 days to respond and to show cause why its failure to file a brief should not be treated as a concession of the case. • If opposer/petitioner does respond to the TTAB order and advise that it wants to continue the case: o TTAB will discharge the show cause order and not issue judgment. o Opposer/petitioner needs to also file with its response a motion to reopen its time for filing its brief: ▪ Must show excusable neglect, adverse party's consent, or that its request is conceded ▪ TTAB may set a time for the applicant/registrant to respond to the motion ▪ If motion is granted TTAB will reset time for opposer/petitioner to file a brief and for the remaining briefs on case ▪ If denied TTAB will grant judgment for applicant/registrant. See Gaylord Entm't Co. v. Calvin Gilmore Prods., 2000 TTAB LEXIS 278, *14, 59 U.S.P.Q.2d 1369, 1373 (TTAB 2000) ("Opposer's motion to reopen is denied. Because all testimony periods have expired and opposer has taken no testimony or submitted any other evidence, these proceedings are hereby dismissed with prejudice."). o If opposer/petitioner did not take any testimony or file any evidence during its testimony period then: ▪ It generally also must file a motion to reopen its testimony period and file evidence and/or testimony failing which (or if denied) the TTAB will grant judgment for applicant/registrant. ▪ However, if opposer/petitioner properly made its registrations of record when it filed its opposition/cancellation and/or applicant/registrant made admissions in its answer, then the TTAB may make a decision on the case based on this limited record. See, e.g., Conopco, Inc. v. Transom Symphony OpCo, LLC, 2022 TTAB LEXIS 194, *10, 2022 U.S.P.Q.2d 504 (TTAB 2022) (denying motion to reopen discovery and briefing periods but deciding opposition based on registrations of record and applicant's application file) • If opposer/petitioner does not file a response to the TTAB order or responds that it no longer has an interest in the case, the TTAB will issue judgment against the opposer/petitioner. See, e.g., Orouba Agrifoods Processing Co. v. United Food Imp., 2010 TTAB LEXIS 441, 97 U.S.P.Q.2d 1310, 1312 (TTAB 2010) ("after petitioner failed to respond to the show cause order, the Board entered judgment against petitioner and dismissed the prior opposition with prejudice"). • If the parties have settled the case, the opposer/petitioner should respond to the TTAB's order advising it of the settlement, and then promptly file the steps for the desired disposition of the case (i.e., dismissal, withdrawal, amendment of application or registration, etc.). See TBMP § 605.03. 37 C.F.R. § 2.128(a)(3); TBMP § 536. Motion to Strike a Trial Brief The applicant/registrant may file a motion to strike your opening 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 applicant/registrant 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 including common grounds asserted in these proceedings see, TTAB Litigation: Opposition Proceedings and TTAB Litigation: Cancellation Proceedings. For an overall guide to TTAB proceedings, see TTAB Proceedings Resource Kit.