At Markavo, we maintain a deliberately focused practice before the Trademark Trial and Appeal Board. We provide high-quality representation in ex parte appeals from final refusals of trademark applications by USPTO examining attorneys. We do not appear in, file documents for, or otherwise represent clients in trademark oppositions or trademark cancellations (collectively, inter partes proceedings).
This limitation is a strategic decision rooted in the significant differences between these two categories of TTAB matters. It allows us to deliver specialized, efficient, and deeply informed advocacy in the area where our expertise is strongest—while ensuring clients receive appropriate guidance or referrals for matters outside our scope.
Ex Parte Appeals vs. Inter Partes Proceedings
The TTAB has jurisdiction over two primary categories of cases:
- Ex parte appeals: These are appeals by a trademark applicant challenging a final refusal to register (e.g., on grounds such as likelihood of confusion under §2(d), descriptiveness under §2(e), or other statutory bars). Only the applicant and the USPTO (via the examining attorney) are involved. The process is primarily appellate and record-based: filing a Notice of Appeal, followed by the applicant’s brief (typically due 60 days after the notice), the examining attorney’s brief, and a reply brief. An oral hearing may be requested but is not required. There is no discovery phase and no full trial. Decisions are generally rendered approximately 10 weeks after briefing is complete (or after a hearing).
- Inter partes proceedings (oppositions and cancellations): These are adversarial disputes between private parties. An opposition challenges a pending application before registration; a cancellation seeks to cancel an existing registration. These cases involve two (or more) private parties litigating registrability issues before the TTAB.
Why Inter Partes Proceedings Are Significantly More Complex
Inter partes proceedings before the TTAB are procedurally complex and closely resemble civil litigation in federal district court.
Key features include:
- Pleadings: A Notice of Opposition or Petition to Cancel functions like a complaint; the responding party files an Answer that may include affirmative defenses and counterclaims.
- Extensive motion practice: Motions to dismiss, for summary judgment, to compel discovery, for extensions, and many others are common.
- Discovery: A structured discovery period (often around six months in the scheduling order, subject to extensions) allows interrogatories, requests for production of documents, depositions, and requests for admission. The Federal Rules of Civil Procedure generally apply, supplemented by the Trademark Rules (37 C.F.R. Part 2) and the Trademark Trial and Appeal Board Manual of Procedure (TBMP).
- Trial: Conducted primarily on a written record through testimony by declaration/affidavit and notices of reliance for documentary evidence. Pretrial disclosures are required. Live testimony is rare.
- Briefing and decision: Final briefs followed by a TTAB panel decision (which may be appealed to the Federal Circuit or a district court).
All filings occur electronically through the TTAB’s systems (ESTTA or TTAB Center), with strict deadlines, precise service requirements, and detailed evidentiary rules drawn from the Federal Rules of Evidence. Procedural missteps—such as improper pleading of grounds, missed deadlines, or inadequate authentication of evidence—can result in waiver of arguments or adverse rulings.
These proceedings demand not only substantive trademark knowledge but also genuine litigation skill, strategic judgment in discovery and motion practice, and fluency with administrative procedural rules. It is a specialized niche within intellectual property law. Effective representation typically requires counsel who devote substantial focus to TTAB inter partes dockets rather than handling them occasionally alongside prosecution or other matters.
Costs and Timelines
Inter partes proceedings are significantly more expensive and time-consuming than ex parte appeals:
- Costs: Highly variable depending on complexity, the parties’ willingness to settle, and how far the case progresses.
Early resolution or initial stages (e.g., through the discovery conference or early settlement): Often in the $3,000–$15,000 range.
Through full discovery: Commonly $15,000–$60,000+.
Full litigation through trial and final decision: Frequently $50,000–$100,000 or more in attorney fees (hourly rates for experienced counsel typically range from $200–$500+ per hour). Expert witnesses are less common than in district court but can add cost when used.
Importantly, the vast majority of cases (approximately 95% or more; fewer than 2–5% typically reach a final Board decision on the merits) settle before trial. Early settlement is the most effective way to control costs.
- Timelines: Contested inter partes cases that proceed toward decision often take 2–3 years on average from institution to final decision (recent data shows averages around 142–163 weeks, with medians in a similar range). Formal scheduling orders typically span roughly 16 months for the core periods, but extensions, motion practice, and Board workload frequently extend the overall pendency to three years or longer.
By contrast, ex parte appeals are generally resolved much more quickly and at lower cost, as they center on focused briefing rather than discovery and adversarial litigation.
Our Strategic Decision and What It Means for Clients
Given the procedural complexity, litigation-like demands, substantial time commitment, and specialized skill set required for inter partes matters, we have chosen to limit our TTAB practice exclusively to ex parte appeals of final refusals. This focus enables us to maintain deep expertise, efficiency, and consistently strong results in the matters we handle—leveraging our extensive experience with USPTO examination practices, office action responses, and appellate advocacy on substantive refusal grounds.
We believe this approach serves our clients best: transparent boundaries, concentrated excellence where we practice, and clear guidance when a matter falls outside our scope.
If your matter involves a final office action refusal, we are prepared to provide skilled, efficient representation in the ex parte appeal.
If you are involved in (or anticipate) a trademark opposition or cancellation, we recommend retaining counsel who specialize in TTAB inter partes litigation. These practitioners bring dedicated experience with discovery strategy, motion practice, trial procedure, and the unique dynamics of these proceedings. We are happy to provide referrals to trusted, highly focused TTAB counsel in this area. We can also continue to support you with related services, such as pre-filing strategy, coexistence agreement negotiations, portfolio monitoring, or other trademark prosecution and counseling matters.
This limited scope reflects our commitment to excellence through specialization rather than attempting to be all things to all clients. We are confident it results in better outcomes for the clients we serve in the matters we handle.
For questions about a specific TTAB matter, referrals, or how we can assist within our scope of practice, please contact us. We are here to help you navigate your trademark needs effectively and strategically.