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US trademark opposition and cancellation are quietly becoming the most troublesome 'headache' for many overseas sellers. The number of sellers seeking help for this reason has increased significantly in the past two years.

Some are newly registered U.S. trademarks that have been challenged, while others are already registered and are facing cancellation proceedings. At first, many sellers are not particularly concerned; a typical reaction is:

“Isn’t the other party just making trouble? We’ll see how the lawyer responds to the two letters, and that should settle it.”

But once the proceedings reach the U.S. Trademark Trial and Appeal Board (TTAB), their nature changes: they are no longer merely “examination-stage communications,” but rather a set of quasi-judicial procedures. Every step is subject to deadlines, and any silence or delay could be interpreted as a “waiver.”

Let’s begin with a typical seller case.

A seller applied for a trademark in the United States and did pretty well; their product listings also started gaining traction. Then they suddenly received a notice of opposition from an established seller in the same category. The seller’s first reaction was: “They’re just trying to mess with me. They most likely want to negotiate.”

He then made two mistakes:

First, after notifying my US agent attorney, I never followed up.

Secondly, I noticed that there were several time points mentioned in the document, but I thought, 'Anyway, the lawyer will keep an eye on it.'

The result is:

The response deadline has passed, and there has been no formal response or request for an extension.

The TTAB proceeding will be handled directly by default, and the trademark application will be rejected.

If you neither submit a response nor request an extension within the deadline, you will be deemed not to be contesting the case.

For sellers, the first iron rule is:

Once you receive the TTAB’s notice instituting proceedings, set aside the question of whether the other party is acting in bad faith for now and firstTime for response,Possibility of postponementGet it clear, catch the ball, and then we can discuss the strategy that comes next.

Many sellers have never even heard of Discovery Conference; all they know is that “the lawyer said we need to schedule a conference call.”

However, in practice, this conference call carries considerable weight becauseIt is a procedure mandated by the TTAB..

The general process is as follows:

It sounds quite “official,” but what the seller really wants to know is: can I refuse to cooperate?

In reality, some people do operate this way: they don't reply to emails, don't answer phone calls, and keep delaying.

If the opposing party is represented by an experienced team, they will generally take the following approach:

First, continue sending reminder emails and preserve the evidence; if the other party remains unresponsive, submit the matter to TTAB petition to compelLet the officials designate the time and method of the meeting.

Once the TTAB intervenes, issue a clear directive.There will be two outcomes:

1. Both parties shall duly complete the meeting on schedule.

2. If a party still fails to participate, the TTAB will consider sanctions; in serious cases, it may proceed directly toward a default judgment.

For sellers, the Discovery Conference (Evidence disclosure meeting)It has two practical applications:

First, this is an opportunity to test the other party's bottom line and attitude. You can tell a lot from a phone call whether the other party is very aggressive or there is room for negotiation.

Secondly, this is a window for TTAB to see if you take the process seriously. If you are negligent even at this stage, it is easy for unfavorable presumptions to arise later.

Therefore, the recommendation is:

However pessimistic you may be about the prospects of the case, you must attend the Discovery Conference and plan your negotiation strategy with your lawyer in advance, rather than simply opening with “We disagree.”

After the Discovery Conference, the case entered its most time-consuming and labor-intensive phase:Evidence disclosure.

At this stage, sellers most often complain that the other party is dragging its feet without making any substantive progress.

At this time, if you and your lawyer do not coordinate well, two extremes can easily occur:

Or you get dragged down to the point of mental breakdown and end up settling hastily;

Either you're so angry you want to turn your face, but you don't know if you can use TTAB's procedural tools.

In practice, if the other party is uncooperative, the process is generally divided into two steps.

Step one: Send a defect letter to the other party

Won the “Top 10 Cross-border E-commerce Legal and Taxation” award from Guangdong Cross-border Association in 2020;

Step two: If negotiations fail, file a Motion to Compel.

If the other party either fails to respond or makes only a token payment while leaving the core issue unresolved, it can generally be concluded that they are deliberately stalling.

Once the TTAB has issued a mandatory order, if the other party still deliberately fails to comply, this is no longer merely a matter of “you sorting out your internal disputes”; it constitutes procedural noncompliance and may directly affect the outcome of the case.

From the seller's perspective, the mindset you should adopt is：

It is acceptable to delay, but while doing so, you must ensure that the TTAB can see who is genuinely cooperating and who is merely responding passively.

As long as the chain of evidence and procedural records are in your hands, you are not necessarily at a disadvantage.

Damai Intellectual Property is a professional organization specializing in serving cross-border e-commerce sellers, with a cumulative track record of handling more than 2,000 trademark opposition cases. When responding to trademark oppositions, we generally follow the following practical workflow:

1. End-to-end milestone managementWe organize all key deadlines (such as responses, meetings, evidence disclosure, etc.) into a schedule and proactively remind sellers to ensure a worry-free process.

   
   

2. Case strategy assessmentWe analyze this together with our cooperating lawyers:

• The criticality of the trademark to existing links and future business;

• If there is no such trademark, is there a viable alternative?

• The strength of the opposing party’s evidence and arguments, and the potential scope for negotiation and bargaining.

  
  

3. Dedicated team coordinationWe match you with a team of lawyers who are truly familiar with TTAB (Trademark Trial and Appeal Board) procedures and have practical experience, rather than just agents who handle registration matters.

   
   

In actual cases, some sellers initially retained agencies that specialized only in trademark filings. When facing opposition or cancellation proceedings, procedural errors caused by the agencies’ lack of TTAB experience ultimately forced the sellers to withdraw from the market prematurely. We are committed to helping sellers avoid such risks through professional processes and a team with hands-on experience, enabling them to maintain control over their trademark matters.

When you take your products and brands into the U.S. market, …The mark is no longer anot a single “certificate issue,” but an entire set of rules, processes, and strategic interactions.

Only by deciding whether to fight, how to fight, and when to negotiate can one be said to be “choosing which cards to play” rather than merely responding passively.

Damai Intellectual Property isA professional service organization approved by the State Intellectual Property Office that has completed formal trademark registration and filing procedures, and is also a member of the World Intellectual Property Organization (AIPPI) and the International Trademark Association (INTA).

With extensive hands-on experience in cross-border e-commerce intellectual property, we are a trusted partner for sellers.