Welcome Back to TTAB Trial Tactics

In the first four installments, we covered the first 30 days, the Answer, discovery, and summary judgment. Now, if the case has survived summary judgment (or you chose to skip it), you face trial and a decision.

But don’t imagine a courtroom with a judge, a jury, and live cross‑examination. TTAB trials are conducted almost entirely on paper – or, more accurately, through electronic filings. Witnesses submit testimonial declarations under oath. Exhibits are attached. The other side has the opportunity to cross‑examine by deposition (rare) or simply file rebuttal declarations.

This post walks you through each component of a TTAB trial, including practical tips for cost‑effective preparation.

The TTAB Trial Is an "Acknowledged" Proceeding

Unlike a federal court trial, a TTAB trial is not a single event. It is a sequenced submission of evidence over several months. The trial period is divided into two phases:

• Opposer’s (Plaintiff’s) trial period – Typically 30 to 60 days. The opposer must submit its direct testimony (declarations) and exhibits.
• Applicant’s (Defendant’s) trial period – Similarly 30 to 60 days. The applicant submits its direct testimony and exhibits in response.
• Opposer’s rebuttal period – Usually 15 to 30 days for evidence that responds to new issues raised by the applicant’s case.
• Applicant’s sur‑rebuttal period – Rare, limited to new evidence introduced in rebuttal.

During these periods, no live testimony occurs. Witnesses do not appear before the Board. Instead, each party files written declarations under 37 C.F.R. § 2.123(a), along with exhibits.

Tactical truth: If you have ever written a sworn statement or an affidavit, you already understand the basic format. The key is to anticipate what the other side will argue and to structure your declarations to rebut those arguments.

Testimony by Declaration – The Heart of Your Trial Case

Under TTAB rules, testimony is usually taken by declaration under 28 U.S.C. § 1746. That means a written statement signed under penalty of perjury, without the need for a notary.

Who Can Submit a Declaration?

• Party representatives – The owner, CEO, or employee of the opposer or applicant.
• Third‑party witnesses – Experts, customers, distributors, or anyone with relevant knowledge.
• Experts – Must submit a declaration with qualifications and a report, subject to cross‑examination by deposition.

What a Declaration Must Include:

1. Caption – Case name and number.

2. Identity of the declarant – Name, job title, relationship to the party.

3. Statement of personal knowledge – “I have personal knowledge of the facts stated herein.”

4. Factual statements – Each fact should be specific, dated, and supported by exhibits where possible.

5. Penalty of perjury clause – “I declare under penalty of perjury under the laws of the United States that the foregoing is true and correct.”

6. Date and signature.

Example – Effective Declaration Paragraph:

“4. I am the founder and CEO of Opposer Corporation. I have been responsible for the marketing and sales of products bearing the mark ‘BRANDX’ since 2018.

5. Attached as Exhibit A are true and correct copies of Amazon product listings for ‘BRANDX’ showing the first available date as March 15, 2018.

6. Opposer’s sales of ‘BRANDX’ products exceeded $5 million in 2023, as shown in Exhibit B (audited financial statement).”

Tactical Tips for Declarations:

• Be specific, not vague. “We have used the mark extensively” is worthless. “We sold 10,000 units in 2023” is evidence.
• Use exhibits. Every factual assertion that can be documented should have an exhibit.
• Keep it concise. The Board reads hundreds of pages. Bullet points and short paragraphs are your friends.
• Anticipate cross‑examination. If a fact is critical, provide granular detail so that the declarant’s testimony is not easily contradicted.

Cross‑Examination – Yes, It Exists (But It’s Limited)

The other side has the right to cross‑examine your declarants. However, cross‑examination is not automatic. The opposing party must notice a deposition and take the witness’s testimony under oath, usually within 30 days after the close of your trial period.

Key points:

• Cross‑examination is expensive. The party seeking it pays for the court reporter, transcript, and videography (if any).
• Many parties skip cross‑examination to save costs, especially if the declaration is straightforward.
• If cross‑examination occurs, the transcript becomes part of the record. You may then submit a supplemental declaration to clarify or correct any testimony.

Tactical tip: If you anticipate cross‑examination, prepare your witness with a mock session. Keep answers short and tethered to the evidence. “I don’t recall” is better than speculation.

Exhibits – The Backbone of Your Case

Every declaration should be accompanied by exhibits. Exhibits can be:

• Screenshots of webpages (with URLs and date stamps)
• Invoices, shipping records, purchase orders
• Advertising materials (print, digital, social media)
• Registration certificates
• Survey results and expert reports
• Email correspondence (with metadata if possible)

How to Prepare Exhibits for Trial:

1. Label each exhibit consecutively (e.g., Opposer Exhibit 1, Opposer Exhibit 2). Use a consistent naming convention.

2. Create an exhibit list – A table describing each exhibit and the declaration paragraph that references it.

3. Authenticate each exhibit – The declarant must state that the exhibit is a true and correct copy of the original document and, where applicable, that it was made at or near the time of the events.

4. Avoid hearsay – Documents created by third parties may be hearsay unless they fall under an exception (e.g., business records). Use a custodian declaration to lay the foundation for business records.

Cost‑saving tip: Do not submit every document in your possession. Submit only the most probative evidence. The Board dislikes “dump truck” exhibits.

Trial Brief – Your Closing Argument in Writing

After both parties have submitted their testimony and exhibits, the TTAB will set a schedule for main briefs (opening trial briefs) and reply briefs. The trial brief is your opportunity to summarize the evidence, apply the law, and persuade the Board why you should win.

Structure of a Trial Brief:

• Introduction – State your position, the legal grounds, and the relief you seek.
• Statement of facts – Cite specific declarations and exhibits (e.g., “Opposer’s Declaration ¶ 12; Opposer Exhibit 3”).
• Legal argument – Organize by legal ground (e.g., likelihood of confusion, dilution, fraud). For each ground, explain why the evidence meets the legal standard.
• Conclusion – Request that the opposition be sustained (if opposer) or dismissed (if applicant), and that registration be refused or granted.

Example Argument Heading:

III. Opposer’s Mark is Famous, and Applicant’s Mark Dilutes It by Blurring

Followed by a paragraph applying the facts to the dilution factors.

Tactical Tips for Trial Briefs:

• Tell a story. The Board reads dozens of briefs. Make yours clear, logical, and easy to follow.
• Use headings and subheadings. They help the judge navigate your arguments.
• Limit citations to the most important cases. Too many citations dilute your message.
• Proofread. Typos and grammatical errors undermine credibility.

Oral Hearing – Rare but Possible

After the briefs are filed, the TTAB may schedule an oral hearing at its discretion. Oral hearings are rare – only about 5‑10% of cases have them. If granted, the hearing is typically by telephone or videoconference, not in person. Each side gets 15–30 minutes to argue the key points.

Tactical tip: If you are offered an oral hearing, take it. It is your only chance to answer the judge’s questions directly and to emphasize your strongest points. Prepare a short outline – do not read a script.

Managing Trial Costs – Flat‑Fee Options

The trial phase is labor‑intensive. Drafting declarations, compiling exhibits, writing briefs, and possibly handling cross‑examination can add up to tens of thousands of dollars at hourly rates.

We offer flat‑fee trial packages to give you cost certainty:

No hourly billing. No surprises. You focus on winning the case – not on the clock.

Trial Timeline Example (Typical TTAB Scheduling Order)

Times vary. Some cases move faster (simple evidence), others slower (complex expert testimony).

Next in the Series

TTAB Trial Tactics #6: The Final Decision – Appeals, Settlements After Trial, and Enforcement

We will cover what happens after the TTAB issues its decision, including appeals to the Federal Circuit, settlements after a loss, and how to enforce a TTAB win before the USPTO and on Amazon.

Is your TTAB case heading to trial?
Do not face a trial alone. Contact us for a flat‑fee trial assessment. We will help you prepare declarations, organize exhibits, and write a compelling trial brief – with no hourly billing.

TTAB Trial Tactics #1: The First 30 Days

TTAB Trial Tactics #2: The Answer

TTAB Trial Tactics #3: Discovery

TTAB Trial Tactics #4: Summary Judgment 

TTAB Trial Tactics #6: The Final Decision