Welcome Back to TTAB Trial Tactics

In the first installment, we covered the first 30 days after a conflicting mark publishes – filing an opposition or requesting an extension.

Now, we flip the table. You are the defendant. Someone filed a Notice of Opposition against your trademark application. The USPTO sent you a copy. The clock is ticking.

This post walks you through your 60‑day response window, the tactical choices you face, and how to turn a defensive position into an offensive advantage.

The 60‑Day Deadline (No Extensions for Answering)

When an opposition is filed, the TTAB will issue a notice that includes a 60‑day deadline for you to file an Answer. This deadline is firm. Unlike the opposition filing deadline, there are no routine automatic extensions to answer. You must file within 60 days, or the TTAB may enter default judgment against you.

Default judgment means:

• Your application is refused.
• You lose the right to ever register the mark.
• The opposition is sustained without any hearing on the merits.

Do not ignore a Notice of Opposition. Even if you think the opposition is frivolous, you must file an Answer – or risk losing everything.

What If You Need More Than 60 Days?

Extensions to answer are possible but require a stipulation (agreement) with the opposer or a motion showing good cause. Most opposers will agree to a 30‑day extension if you ask promptly, because they also prefer resolving the case without motion practice. However, do not assume an extension will be granted. File a request before the deadline, even if just to buy time.

Tactical tip: As soon as you receive the Notice of Opposition, contact the opposer’s counsel. Ask for a 30‑day extension to evaluate the case. Most will agree. Get it in writing (email is sufficient), then file a joint stipulation with the TTAB.

The Answer: What Must Be Included

The Answer is your formal response to each allegation in the Notice of Opposition. Under TTAB Rule 2.106(a), you must respond to every numbered paragraph. Your options for each allegation:

• Admit – You agree the allegation is true.
• Deny – You dispute the allegation.
• Lack sufficient knowledge to admit or deny – Treated as a denial.

If you fail to respond to a particular allegation, it may be deemed admitted – a dangerous outcome.

Sample Answer Structure

A typical Answer includes:

1. Caption – Same case name and number as the Notice of Opposition.

2. General denial (optional) – A blanket statement that you deny every allegation not specifically admitted. Use cautiously; some TTAB judges prefer paragraph‑by‑paragraph responses.

3. Paragraph‑by‑paragraph responses – For each numbered paragraph in the Notice, state: "Defendant admits the allegations of Paragraph 1," "Defendant denies the allegations of Paragraph 2," etc.

4. Affirmative defenses – Separate section listing legal defenses (see below).

5. Counterclaims – Optional; assert your own claims against the opposer (see below).

6. Prayer for relief – Request that the opposition be dismissed and that your application proceed to registration.

7. Signature – Your or your counsel’s signature, with date.

Affirmative Defenses – Your Legal Shield

Affirmative defenses are legal arguments that, even if the opposer’s allegations are true, you should still win. Common defenses in TTAB oppositions include:

Tactical tip: Do not assert every possible defense. Pick the strongest 2‑3. Over‑pleading weak defenses can dilute your credibility and annoy the TTAB judge.

Counterclaims – Going on Offense

A counterclaim is your chance to assert your own claims against the opposer. It turns the tables. Instead of merely defending your application, you can seek to cancel the opposer’s registration or force them to narrow their rights.

Common counterclaims:

• Cancellation of opposer’s registration – Based on abandonment, fraud, genericness, or likelihood of confusion with your prior rights.
• Declaratory judgment – That you are not infringing and your mark is registrable.
• Bad faith / reverse confusion – If the opposer adopted its mark after you had already established rights.

You must have standing to bring a counterclaim – typically, your own trademark application or use gives you standing. Counterclaims are subject to the same deadlines and pleading rules as an opposition.

Tactical consideration: A counterclaim can increase the cost and complexity of the case. It can also give you leverage for settlement. If the opposer’s registration is weak (e.g., based on a fraudulent specimen), a counterclaim may force them to abandon the opposition to save their registration.

Strategic Decision: Fight, Settle, or Default?

You have three options, but only two are rational.

Option 1: Fight

File an Answer, assert defenses, and prepare for discovery and trial. This is the right choice if:

• You have a strong defense (e.g., your use predates the opposer’s rights).
• The opposer’s mark is weak (descriptive or generic).
• You need the registration for your business and cannot compromise.

Downside: A fully contested TTAB proceeding can cost $15,000\text{–}$50,000 or more, even with flat‑fee representation. It can take 12‑24 months.

Option 2: Settle

Most oppositions settle. Settlement is almost always cheaper and faster than fighting to a final decision. Common settlement terms when you are the defendant:

• Narrow your goods/services – Delete the conflicting goods from your application.
• Add a consent agreement – Acknowledging that your mark is not confusingly similar to the opposer’s, or that there is no affiliation.
• Abandon your application – If the opposer’s case is strong, abandoning early preserves your ability to rebrand and refile.
• Cross‑license – Allow both marks to coexist with defined limitations (geographic, channel, or field of use).

Tactical tip: Begin settlement discussions before you file your Answer. A quick, cheap resolution saves everyone money.

Option 3: Default – Never Do This

Failing to file an Answer leads to default judgment against you. Your application will be refused. You will have no right to appeal the opposition (though you may petition to set aside the default if you can show excusable neglect – a high bar).

There is almost never a good reason to default.

Practical Timeline: The First 60 Days

What Happens After You File the Answer?

Once the Answer is filed, the TTAB will issue a scheduling order setting dates for:

• Discovery (initial disclosures, interrogatories, document production)
• Expert witness disclosures
• Summary judgment motions (if any)
• Trial (opposer’s testimony, then your testimony)
• Briefs and oral hearing (rare)

The scheduling order is your roadmap. Mark every deadline on your calendar. Missing a discovery or trial deadline can be as fatal as missing the Answer deadline.

Why Flat‑Fee Representation Matters for Defendants

If you are the defendant, you didn’t choose this fight. You are reacting. The last thing you need is an unpredictable legal bill that grows with every email and phone call.

We offer flat‑fee packages for respondents in TTAB oppositions:

No hourly billing. No surprise invoices. You know your maximum exposure before you commit to a defense strategy.

Next in the Series

TTAB Trial Tactics #3: Discovery – Interrogatories, Document Requests, and Depositions (Without Breaking the Bank)

We will cover how to use TTAB discovery tools effectively, what you must produce, and how to keep costs under control.

Are you the defendant in a TTAB opposition?
Do not wait. Every day you delay reduces your options. Contact us today for a flat‑fee case evaluation. We will review the Notice of Opposition, draft your Answer, and help you decide whether to fight, settle, or counterclaim.

TTAB Trial Tactics #1: The First 30 Days

TTAB Trial Tactics #3: Discovery

TTAB Trial Tactics #4: Summary Judgment

TTAB Trial Tactics #5: Preparing for Trial

TTAB Trial Tactics #6: The Final Decision