The Trademark Trial and Appeal Board (TTAB) is an administrative tribunal inside the USPTO. It decides only the right to register a mark—not the right to use it, not infringement, and it awards no damages or injunctions. An opposition under Section 13 of the Lanham Act, 15 U.S.C. § 1063, challenges a mark before it registers, during the window after the mark is published in the Official Gazette. This checklist takes you from monitoring publication through institution and the start of the proceeding. For the discovery phase, see the companion TTAB Discovery Checklist and Discovery Practice in TTAB Trademark Proceedings.

Phase 1 — Monitor publication and protect the deadline

  • Run watch services to catch applications published for opposition in the Official Gazette.
  • On publication, calendar the 30-day deadline to oppose (15 U.S.C. § 1063; 37 C.F.R. § 2.101).
  • If you need time, file a first 30-day extension of time to oppose through ESTTA (granted on request, no cause needed).
  • If still needed, file a further extension: up to 60 additional days for good cause, then a final 60 days only with the applicant's consent or extraordinary circumstances (37 C.F.R. § 2.102).
  • Confirm whether the application is a domestic § 1 / § 44 filing or a § 66(a) Madrid extension (which restricts later amendment of the grounds and classes opposed).

WHY / traps. The opposition window is short and unforgiving—miss it and the mark registers, leaving only a harder cancellation petition later. Extensions buy time to investigate and negotiate, but the deadline structure is layered: the easy first extension, then good-cause, then consent-only. For a § 66(a) application, you generally cannot add grounds or expand the opposed goods after filing, so plead completely up front.

Phase 2 — Confirm entitlement and choose grounds

  • Confirm your entitlement to a statutory cause of action: a real interest in the outcome and a reasonable belief in damage (post-Lexmark; Corcamore; the former "standing"/"real interest" test).
  • Establish your priority facts (earlier use or earlier-filed/registered rights) where likelihood of confusion is a ground.
  • Select the grounds the facts support: likelihood of confusion (§ 2(d)); mere descriptiveness/lack of acquired distinctiveness (§ 2(e)(1)); primarily merely a surname (§ 2(e)(4)); genericness; dilution of a famous mark; false suggestion of a connection; lack of bona fide intent to use; nonuse; functionality; or fraud.
  • Confirm each ground is available (e.g., the disparagement and scandalous bars were struck by Matal v. Tam and Iancu v. Brunetti—do not plead them).
  • List the elements of each chosen ground to use as the master index for the pleading and later discovery.

WHY / traps. Entitlement is a real, pleadable element—articulate your interest or risk early dismissal, though in practice it is liberally construed. The pleadings fix the lawful scope of discovery: you may only obtain discovery relevant to a pleaded claim. Plead fraud, if at all, with Rule 9(b) particularity and genuine evidence of intent to deceive (In re Bose), and expect it to be hard to win.

Phase 3 — Draft the notice of opposition

  • Draft a notice of opposition that satisfies Fed. R. Civ. P. 8 notice pleading: a short, plain statement of entitlement and of each ground.
  • Identify the opposed application by serial number, mark, and the specific goods/services and classes opposed.
  • Plead your pleaded marks/registrations and your priority and use facts.
  • State each ground as a separate count with its supporting allegations.
  • Do not attach merits evidence to the pleading—evidence comes later by testimony and notice of reliance (status-and-title copies of pleaded registrations are an exception that may be made of record with the pleading).

WHY / traps. The notice is a pleading, not a brief. A frequent error is loading it with exhibits and argument; the Board judges registrability on the trial record built later. Plead every ground you may pursue, because adding grounds afterward requires amendment (and is restricted for § 66(a) applications).

Phase 4 — File through ESTTA and confirm institution

  • File the notice through ESTTA, the Board's Electronic System for Trademark Trials and Appeals.
  • Pay the per-class government fee for each class opposed (confirm the current amount).
  • Confirm the Board's institution order issues, setting the full calendar: discovery-conference deadline, opening/close of discovery, initial- and expert-disclosure deadlines, and the staggered trial (testimony) periods.
  • Track the proceeding on TTABVUE and verify the applicant's answer is filed (default leads to entry of judgment).
  • Note that service is by email by default (37 C.F.R. § 2.119) and is now effected through ESTTA/the Board's system.

WHY / traps. ESTTA filing is mandatory and the fee is per class—opposing additional classes multiplies the cost. The institution order's dates cascade: slip one and the rest move with it, so calendar from the order on day one.

Phase 5 — Discovery conference and early strategy

  • Hold the mandatory discovery conference under Rule 26(f) and 37 C.F.R. § 2.120(a)(2), usually ~30 days after the answer is due.
  • Consider requesting a Board interlocutory attorney or judge to participate (request no later than 10 days before the conference deadline).
  • Discuss settlement, ESI, protective-order modifications, expanded or reduced limits, and an Accelerated Case Resolution (ACR) path if the dispute is narrow.
  • Serve initial disclosures (no later than 30 days after discovery opens) and remember you must disclose before seeking discovery.
  • Map each pleaded ground to the discovery you will need, then proceed under the TTAB Discovery Checklist.

WHY / traps. Skipping or shortchanging the conference has real consequences—a party that fails to participate may be barred from moving to compel. Because there is no live trial and the record is built on paper, discovery responses and admissions are much of the evidence. Treat the Board proceeding seriously: under B&B Hardware, its findings can have issue-preclusive effect in later federal litigation.

Common mistakes

  • Missing the 30-day window or mismanaging the layered extension rules.
  • Failing to plead and prove entitlement and (for § 2(d)) priority.
  • Loading the notice with exhibits and argument instead of a clean pleading.
  • Pleading grounds that no longer exist (disparagement, scandalous).
  • Under-pleading grounds, then trying to add them later (barred for § 66(a) marks).
  • Treating the conference and disclosures as formalities.
  • Forgetting the per-class fee and the cascading institution-order dates.

Primary authority

  • Statute: Lanham Act § 13, 15 U.S.C. § 1063 (opposition); §§ 1067–1071 (TTAB authority and review).
  • Rules: 37 C.F.R. Part 2 — §§ 2.101–2.107 (oppositions), 2.111–2.118, 2.119 (service), 2.120 (discovery); Fed. R. Civ. P. 8.
  • TBMP: Trademark Trial and Appeal Board Manual of Procedure (Ch. 300 commencement/pleadings; Ch. 400 discovery).
  • Cases: Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014); Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020); B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015); In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009).
  • Systems: ESTTA and TTABVUE at uspto.gov.

Verify current TBMP guidance, 37 C.F.R. Part 2, and fees before filing.

Related resources

This checklist is general information, not legal advice. TTAB practice is governed by the Trademark Rules and the TBMP and turns on specific facts; consult qualified trademark counsel.