How many TTAB oppositions and cancellations reach final decisions?
At the outset, let me clarify that this post contains rough estimates of final decisions in adversarial TTAB oppositions and cancellations which are merely approximations, and not based on any solid statistical disciplines. I’m simply comparing the number of final judgments made in 2019 to the number of TTAB adversarial cases filed in that same year to arrive at a rough approximation.
Decisions rendered this year may pertain, for example, to an opposition filed three years ago, or even earlier. Therefore, dividing the total number of decisions rendered in 2019 by the number of adversarial TTAB cases filed that same year would not be statistically correct. Nonetheless, it can give us helpful insight as to what may be roughly expected.
What is the rough percentage of TTAB cases that go all the way to trial and final decisions?
For the fiscal year 2019, the USPTO shows that 203 TTAB trials were decided. This excludes decisions for appeals of trademark prosecution cases (i.e., trademark application rejections by USPTO examining attorneys). The USPTO also shows for FY2019 a total of 6,955 oppositions and 2,426 cancellations filed, thereby amounting to a total of 9,381 adversarial TTAB cases. Without correlating the final decisions in 2019 to the year when the TTAB case was actually filed, we would arrive at a rough percentage of 2.2% of TTAB adversarial cases reaching a final decision.
Think about that for a moment. There is roughly over a 97% probability that your TTAB opposition or cancellation will not reach a final decision.
For the 2020 fiscal year, a final decision on the merits occurred in 158 TTAB trials. In FY2020, a total of 9,213 oppositions and cancellations were filed.
How long does an average TTAB opposition or cancellation take?
As of 2019, the average length of a TTAB trial case is over 160 weeks! That is over three years to get to a final decision in a TTAB opposition or cancellation! Astute observers may notice that the typical TTAB trial scheduling order (Notice of Institution) will set forth deadlines starting from Time to Answer all the way to an optional Request for Oral Hearing that span about 16 months.
So how does a 16-month TTAB trial schedule get stretched to over 36 months? There may be numerous reasons for the protracted pendency besides extensions. Contested motions, including discovery motions as well as motions for summary judgment, will toll current deadlines. Once the TTAB makes a decision on a contested motion, which could take several months, the remaining trial deadlines will be reset.
How should the average length of TTAB cases and percentage of final decisions affect your trademark strategy?
It may be cost-effective to pursue an early settlement that would help each party reach certain goals. While compromise might not be ideal, it may be the most practical solution if you do not want to spend tens of thousands, or more, in legal fees.
If your opponent seems unlikely to settle during initial stages, you still have to ask yourself whether this particular case will be among the rare 2% of trademark opposition and cancellation cases that reach a final decision. Most likely, someone or something will give during the process that will pave the way for resolution.
In fiscal year 2020, the average pendency decreased slightly to about 147 weeks.