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Trademark FAQ

What happens when no answer has been filed?

When no answer has been filed, all other deadlines are tolled. If the parties have continued to litigate after an answer is late‑filed, it will generally be viewed as a waiver of the technical default.

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Trademark FAQ

I think we might be able to resolve this matter if we can get some assistance in an alternative forum. Where can I get assistance in Alternative Dispute Resolution “ADR”?

There are several organizations you can contact regarding ADR.

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Trademark FAQ

Does the TTAB take judicial notice of the USPTO records? / There are USPTO registrations which may be helpful to my case, will the TTAB take judicial notice of them?

No. In order to introduce USPTO records into evidence you must follow the correct procedure. For more information please see TBMP Chapter 700 on Trial Procedure and the Introduction of Evidence.

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Trademark FAQ

Can I file Section 15 affidavits or declarations while a registration is involved in a Board proceeding?

No. See 15 U.S.C. § 1065 and TMEP § 1605.

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Trademark FAQ

Am I required to continue filing Section 8 affidavits or declarations if my registration is involved in a cancellation proceeding?

Yes. See 15 U.S.C. § 1058 and TMEP § 1604.

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Trademark FAQ

The parties have agreed to settle the opposition case by amending the identification of goods in the involved application. Do I file directly with the trademark examining attorney or do I need to request remand to the examining attorney?

If a proceeding has been commenced and is still pending at the TTAB, you or your counsel must file the amendment with the TTAB. The Examining Attorney does not have jurisdiction over the case while a proceeding is pending at the TTAB. The TTAB will consider the amendment and, if appropriate, enter it into the application file. See TBMP § 514. However, if an opposition is not yet pending, and the application is only under threat of an opposition because of the filing of an extension of time to oppose, you or your attorney may file a post publication amendment. If you wish to file such an amendment, you may do so by using the post publication amendment form available on-line via the Trademark Electronic Application System “TEAS“. In the latter circumstance, you and the potential opposer should note that the Board will not suspend the running of the extended opposition period to accommodate processing of the post publication amendment.

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Trademark FAQ

How do I withdraw my petition to cancel or my notice of opposition?

You must file a document stating what you wish to do. However, once an answer is filed, if you want the matter dismissed without prejudice, you will need to obtain the written consent of the other side; and, of course, you need to serve the other party to the proceeding with a copy of anything you file. If you do not obtain written consent, the proceeding will be dismissed with prejudice.

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Trademark FAQ

What is the procedure for having an Interlocutory Attorney participate in the discovery conference?

If any party wishes to have a TTAB professional participate in the required discovery conference, the party must either call the TTAB attorney assigned to the case or file a request through ESTTA. Such request should be made no later than ten (10) days prior to the deadline for conducting the discovery conference, so as to facilitate completion of the conference by the deadline. Filing a request using ESTTA is preferred; however, parties are encouraged to follow up a few days later with a phone call to the Board attorney assigned to the case if they have not yet been contacted by a TTAB attorney. See TBMP § 401.01.

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Trademark FAQ

Do I need to file initial disclosures with TTAB?

No, written disclosures or disclosed documents, requests for discovery, and materials or depositions obtained through the discovery process should not be filed with the Board except when submitted with a motion relating to disclosure or discovery, or in support of or response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party’s testimony period.

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Trademark FAQ

When can I file an answer if my due date falls on a Saturday, Sunday or federal holiday within the District of Columbia?

Your answer will be due on the next business day. See TBMP § 112.