The trial period is probably the most important and consequential part of a trademark opposition or trademark cancellation (especially for the plaintiff). It is the period of time during which the parties take the testimony of their witnesses (either orally or in the form of a written affidavit or declaration) and provide to the Trademark Trial and Appeal Board (TTAB) all of their documentary evidence for the TTAB’s review and consideration. Each party’s trial period begins about two weeks after the deadline for serving its Pretrial Disclosures.
How Long is Each Party’s Trial Period?
Each party’s trial period is 30 days. For some inexplicable reason, the proceeding schedule sent out by the TTAB does not expressly state when each party’s trial period begins. The schedule only indicates when each party’s trial period ends. So, you have to deduct 30 days from that date to determine when the trial period actually begins (since that is the date on which you can start submitting evidence and taking witness testimony).
What Am I Permitted to Do During My Trial Period?
Not surprisingly, there are literally dozens of rules and regulations governing (1) how and where testimony depositions of witnesses must be conducted, (2) the types of evidence that can be submitted during each party’s trial period, and (3) how such evidence must be verified, submitted, and served. These rules and regulations protect the integrity of the opposition or cancellation and help to ensure the orderly and fair administration of the proceeding. Although I strongly encourage you to carefully read Section 700 of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) to learn more about the TTAB’s trial procedures, here is a very brief summary of what each party may do during its trial period:
- Take the oral testimony deposition of its witnesses. This is usually done in front of a court reporter who is authorized to administer oaths in the jurisdiction where the oral deposition is being held. The deposition transcript and associated exhibits must be promptly filed with the TTAB (but it does not have to be filed within the 30-day trial period).
- File and serve witness testimony in the form of a written affidavit or declaration (along with associated exhibits)
- Take testimony of its witnesses upon written questions. Frankly, this is an awkward and time-consuming procedure that I don’t recommend.
- File and serve evidence that is legally permitted to be submitted under a notice of reliance. Basically, this is evidence that doesn’t need to be introduced in connection with the testimony of a witness or be verified by a witness.
Please note that if you submit witness testimony or evidence during your trial period that doesn’t comply with all applicable laws, rules, and regulations, the TTAB will generally give such materials no consideration. Moreover, the opposing party can object to non-complying testimony and evidence by filing a motion to strike with the TTAB and/or by raising the issue of non-compliance in its trial brief.
How is Testimony and Evidence Submitted to the TTAB?
Generally speaking, all oral testimony transcripts (and associated exhibits), written testimony affidavits/declarations (and associated exhibits), written question testimony depositions (and associated exhibits), and notices of reliance must be filed with the TTAB through the ESTTA system. In rare situations where evidence cannot be submitted through ESTTA (such as video or audio recordings), such materials can be mailed to the TTAB so long as you comply with all applicable rules.
What Happens if I Don’t Take Witness Testimony or Submit Evidence?
If you’re the defendant in a trademark opposition or trademark cancellation, you’re not required to take any testimony or submit any evidence during your trial period. If you believe the plaintiff has failed to submit sufficient evidence to prove its case (or the plaintiff has failed to take any witness testimony or submit any evidence during its trial period), then there is nothing compelling you to support your defense with any testimony or evidence whatsoever.
On the other hand, if you’re the plaintiff, then failing to take witness testimony and/or submit evidence during your trial period will almost certainly lead to the opposition or cancellation being dismissed with prejudice. This is because the TTAB must rely and base its decision on witness testimony and legally admissible evidence in order to sustain an opposition or grant a cancellation. If there is no testimony or evidence in the record, then the Board cannot find in favor of the plaintiff. So, if you’re the plaintiff, taking witness testimony and/or submitting admissible evidence during your trial period is absolutely critical to proving your case.
Need Help During Your Trial Period?
I’m experienced US trademark attorney Morris Turek. Whether you’re the plaintiff or the defendant, I would be glad to assist you in preparing for and navigating the trial period in a trademark opposition or cancellation. I may be reached at (314) 749-4059, through email at morris@yourtrademarkattorney.com, or through the contact form located toward the bottom of this page (please remember to include the opposition or cancellation number). I look forward to hearing from you soon.