A Deep Dive into the TTAB Opposition/Cancellation Process

A Plaintiff's (Opposer/Petitioner's) Perspective on Key Events, Attorney Hour Estimates & Case Progression

Key Context: Settlement is the Common Outcome

Before diving into the procedural details of a TTAB opposition or cancellation, it is crucial to understand that the vast majority (often estimated at over 95%) of TTAB cases do not proceed through a full trial to a final decision. Instead, they are resolved through settlement between the parties.

This guide breaks down the standard TTAB process, detailing the potential range of attorney hours for the plaintiff in simple versus complex cases. Understanding these figures will help you develop a more informed case strategy and budget with your attorney.

TTAB Plaintiff's Framework Explained

1

Filing the Proceeding & Initial Conference

This initial phase involves investigating, preparing, and filing the Notice of Opposition or Petition for Cancellation, awaiting the defendant's Answer, participating in a mandatory discovery/settlement conference, and preparing initial disclosures. It is typically completed within 2.5 to 3.5 months of the case's commencement (through initial disclosures).

1. Case Assessment, Strategy, and Filing the Opposition/Petition

Conducting a thorough investigation, gathering initial evidence, assessing legal grounds, and drafting and filing the formal Notice of Opposition or Petition for Cancellation with the TTAB.

Attorney Hours Range: 8 - 25 hours

Simple cases (direct grounds, readily available evidence) are at the lower end. Complex cases (requiring extensive investigation, multiple legal points, complex evidence organization) are at the higher end.

2. Reviewing the Answer

After the defendant files their Answer (typically within 40 days of institution), carefully reviewing their defenses and any potential counterclaims.

Attorney Hours Range: 2 - 6 hours

3. Discovery/Settlement Conference

A mandatory conference between attorneys, held ~30 days after the Answer is filed, to discuss the case, settlement possibilities, and a discovery plan.

Attorney Hours Range: 2.5 - 5 hours

4. Initial Disclosures

Parties exchange lists of key witnesses and documents ~30 days after the discovery conference.

Attorney Hours Range: 2 - 8 hours

Motions & Settlement in this Phase:

After reviewing the Answer, the plaintiff might consider filing a motion for a more definite statement or a motion to strike improper defenses. This phase is a key settlement window, especially after the defendant assesses the strength of the plaintiff's claims.

2

Discovery Phase

This is the core evidence-gathering stage, with a standard discovery period of 180 days. The plaintiff must take the initiative to obtain evidence supporting their claims through various discovery tools. This phase typically spans from 2.5 to 8.5 months after commencement.

1. Propounding Discovery

a. Propounding Written Interrogatories

Serving a list of written questions (usually limited to 75) on the defendant to obtain information.

Attorney Hours Range: 4 - 10 hours

b. Propounding Document Requests

Requesting the defendant to produce relevant documents (usually limited to 75 categories).

Attorney Hours Range: 3 - 8 hours

c. Propounding Requests for Admission

Requesting the defendant to admit or deny a series of factual statements or the authenticity of documents (usually limited to 75).

Attorney Hours Range: 3 - 8 hours

2. Responding to Discovery from Defendant (if any)

If the defendant also serves discovery requests, the plaintiff must respond in a timely manner.

Attorney Hours Range (for responding to a full set of written requests): 5 - 25 hours

Depends on the volume and complexity of the defendant's requests.

3. Depositions

Preparing for and taking the deposition of key opposing witnesses; also preparing your own witnesses for deposition if requested by the defendant.

Attorney Hours Range (per deposition, whether taking or defending): 10 - 30 hours

4. Motion for Summary Judgment

If discovery reveals clear facts favorable to your side, you can file this motion to seek victory before trial. You may also need to respond if the defendant files one.

Attorney Hours Range (to file or respond): 15 - 75+ hours

Motions & Settlement in this Phase:

The plaintiff may file a motion to compel to obtain necessary information. Discovery is a primary catalyst for settlement, as the plaintiff can leverage collected evidence in negotiations.

3

Pre-Trial Phase

This phase occurs after discovery and any summary judgment motions are resolved. As the party with the initial burden of proof, this stage is particularly crucial for the plaintiff. It typically occurs 9.5 to 12 months into the case.

Main Activities: Plaintiff's Pre-Trial Disclosures & Final Preparations

At least 15 days before its main testimony period, the plaintiff must disclose to the other side and file with the TTAB its list of witnesses, a summary of their testimony, and all exhibits. This involves finalizing the entire evidence package for trial.

Attorney Hours Range (for plaintiff's entire preparation in this phase): 12 - 45 hours

The range depends on the volume of evidence and complexity of trial strategy; the plaintiff's investment is often significant here.

4

Trial Phase

The TTAB "trial" is conducted through asynchronous written submissions. The plaintiff bears the responsibility of presenting its evidence and primary arguments first. This process takes about 6-9 months from the first testimony period to the final brief.

Main Activities: Plaintiff's Evidence Submission, Trial Briefs & Oral Hearing (Optional)

The plaintiff's main tasks are: preparing and submitting all supporting evidence during its 30-day main testimony period; reviewing the defendant's evidence; submitting rebuttal evidence during its 15-day rebuttal period; preparing and filing the main brief (under 55 pages) and a reply brief (under 25 pages); and, if requested, preparing for and attending an oral hearing.

Attorney Hours Range (for all of plaintiff's activities in this phase): 80 - 280+ hours

The plaintiff's workload is typically heavier in this phase due to the need to file both a main brief and a reply brief.

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Activities Throughout the Process

The following activities can occur at any stage of a TTAB proceeding and can significantly impact attorney hours and the case's direction.

1. Possible Motions

Examples: Motion to Dismiss, Compel Discovery, for a Protective Order, to Extend, etc. Simple, uncontested, or routine procedural motions generally take less time.

Drafting or responding to each simple/uncontested motion typically takes 2-4 hours.

For contested or substantive motions, the time increases significantly:

  • Motion to Dismiss: 6 - 30+ hours (Plaintiff usually responds)
  • Motion for More Definite Statement: 3 - 8 hours (Plaintiff may file)
  • Motion to Compel (contested): 5 - 15 hours (Plaintiff may file)
  • Motion for Protective Order (contested): 5 - 12 hours
  • Motion for Summary Judgment: 15 - 75+ hours (Plaintiff may file or respond)
  • Motion to Extend (contested): 1.5 - 5 hours (Consented motions ~0.5-2 hrs)
  • Motion to Strike (substantive): 6 - 15+ hours
  • Motion to Amend Pleading (contested): 5 - 15 hours (Plaintiff may file to amend grounds)
  • Motion to Exclude Evidence (key evidence): 5 - 25+ hours

2. Negotiation for Settlement

Includes multiple rounds of negotiation with opposing counsel, as well as drafting, reviewing, and revising settlement agreements.

Attorney Hours Range (for the entire settlement process):

  • Simple Settlement (e.g., defendant agrees to abandon/cancel, clear terms): 3 - 8 hours
  • Moderately Complex Settlement (e.g., amendment of goods/services, simple coexistence): 8 - 20 hours
  • Complex Settlement/Coexistence Agreement (detailed terms, many revisions): 20 - 50+ hours

Attorney time for a motion to suspend for settlement talks: ~0.5 hours for a consented motion; ~1.5 hours for a unilateral request.

Plaintiff's Attorney Hour Accumulation

This chart visualizes how a plaintiff's attorney hours can accumulate if a case is not settled early. The hours for each phase build upon the previous ones. The chart shows the cumulative range of attorney hours, from simple to complex cases, at the conclusion of each major phase.