The truth about attorney fees and money damages at the TTAB

The truth about attorney fees and money damages at the TTAB - Defining the TTAB's Jurisdiction: Why Money Damages Are Always Off the Table

Look, when someone files an opposition or cancellation at the TTAB, the first thing they really want to know is, "Can I get paid back for all this hassle?" And here’s the tough truth: the Trademark Trial and Appeal Board simply doesn't have the power to cut you a check for damages. That limitation is explicitly built right into the statutory foundation, 15 U.S.C. § 1067, which restricts available remedies almost entirely to administrative actions like cancellation or refusal of a registration, nothing more. Think of it this way: the Board operates completely separately from the Lanham Act’s big money section, 15 U.S.C. § 1117, which handles compensatory damages and profits. This lack of financial authority means the TTAB proceedings are hyper-focused; they stick almost exclusively to registrability and priority of use, skipping the complex accounting and market share analysis that clog up federal court dockets. But this specialization has a real-world consequence: administrative judges will frequently quash discovery requests—requests for financial data or commercial injury—if that information doesn't directly relate to the validity of the mark itself. I mean, why waste time gathering financial evidence when the maximum outcome is just stripping a registration away? It’s important to realize that even if you win and cancel the opposing mark, that order only removes the registration from the federal books; it doesn't automatically give you an injunction or mandate a cease-and-desist letter. You still have to haul yourself back into federal district court for a subsequent civil suit just to get that critical injunction against continued infringing use, which is a major pain point. Now, technically—and I mean *exceedingly* rare technically—the Board can award attorney fees in "exceptional cases" under the *Octane Fitness* standard. But honestly, that usually requires proving genuinely malicious or fraudulent behavior, which is a hurdle far higher than just winning your standard priority argument. So, we're talking about a limited court that specializes in the register, but when it comes to actual cash relief, you're always heading elsewhere.

The truth about attorney fees and money damages at the TTAB - The American Rule and Trademark Practice: When Attorney Fees Cannot Be Recovered

Look, the core *American Rule*—that idea that everyone pays their own lawyer—feels like the biggest gut punch when you’ve been fighting a trademark bully who clearly knew better. Honestly, even if you win your infringement case in federal court, the statistical odds of actually recovering those attorney fees are brutal; we're talking about successful motions being granted in fewer than four percent of eligible cases. That’s a tiny window, right? To get past that hurdle, you have to prove the case was "exceptional," which usually requires documentation showing the claim was filed purely for harassment or procedural delay, not just that the other side had a weak argument. Merely failing to stop using the mark after receiving a detailed demand letter, for example, is usually not enough to meet that demanding standard of maliciousness. Think back before the Supreme Court’s 2014 *Octane Fitness* decision—courts used an even stricter two-part test, requiring the position to be "objectively baseless" *and* pursued in bad faith. The current "totality of the circumstances" standard is technically softer, but the practical result is still the same: judges remain highly hesitant to shift costs. And even if you *do* manage to get a fee award, federal trademark law sticks strictly to the foundational *lodestar* calculation, meaning they award reasonable hourly rates only. You can’t use fee multipliers to enhance the final amount, even if your case was complex or had huge public benefit, which is a real disappointment for high-stakes litigation. Maybe it's just me, but the most frustrating part? Even after all that fighting, if a district court grants you fees, those awards face disproportionately greater scrutiny on appeal, with circuit courts historically reversing or modifying them about twenty percent of the time. You just can't count on that money until it’s actually in the bank.

The truth about attorney fees and money damages at the TTAB - The TTAB's Exclusive Remedies: Cancellation, Opposition, and Concurrent Use

Look, since we know the TTAB isn't going to cut a check for damages, we really need to focus on what tools they *do* give us to fix the trademark register, and honestly, the whole game centers on three administrative actions: opposition, cancellation, and, much more rarely, concurrent use proceedings. Think about opposition filings; that initial 30-day statutory clock is almost always automatically bumped out to 90 days, and if you show good cause and the applicant agrees, you can get a full 180 days just to prepare the case. But cancellation actions are trickier because of the timing—if you're basing the petition solely on likelihood of confusion, you generally have that five-year window from the registration date, pursuant to 15 U.S.C. § 1064, but thank goodness certain grounds, like genericness or abandonment, don't have that time limitation. Now, concurrent use is kind of the odd one out; it’s statistically uncommon, seriously, accounting for less than one percent of all TTAB *inter partes* cases annually, but when it works, it results in a unique certificate listing specific territorial limitations, defining who gets what piece of the map. Outside of the case types, the process itself is highly restricted; TTAB discovery isn't like federal court where you can subpoena everything, because parties are automatically limited to 75 interrogatories, including all subparts, which forces everyone to be incredibly precise about what they ask for, per Trademark Rule 2.120(a)(1). And if you're trying to prove fraud to cancel a mark? That requires clear and convincing evidence that the filer had specific intent to deceive the USPTO—a standard the Board applies so rigorously that those claims frequently get tossed out. It’s funny because while the public focuses on those fights, the Board actually spends most of its time—about three-quarters of its annual docket—handling *ex parte* appeals from Examining Attorneys’ refusals. Plus, even the doctrine of "tacking," where you try to link a new mark back to an older version, only works if the marks are legal equivalents, creating the same commercial impression, which is a surprisingly high hurdle to clear in practice.

The truth about attorney fees and money damages at the TTAB - When Fees Might Be Considered: Pleading Extraordinary Circumstances or Fraud

You know that moment when the other side has acted so clearly awful—maybe shredding documents or just dragging their feet on every discovery request—and you think, "Surely, *that* deserves my attorney fees back?" Look, recovering fees at the TTAB is almost mythical; data shows fewer than half a percent of *inter partes* cases actually result in a final grant between 2014 and today, demonstrating the extreme difficulty in meeting the "exceptional" threshold. To even start the process, the Board has to make a preliminary, explicit finding that the case is truly "exceptional," and that finding is separate from whether you ultimately win the cancellation. Here's what I mean by that high bar: "extraordinary circumstances" usually requires litigation misconduct that borders on procedural abuse, like the deliberate destruction of evidence or a repeated, unjustified failure to comply with mandatory discovery orders. And if you’re trying to cancel a mark based on fraud on the USPTO, you don’t just have to show the representation was false; you must prove specific deceptive intent, which is already tough, but critically, that false representation has to be *material*. That means the USPTO would not have acted favorably—they wouldn't have granted or maintained the registration—if they’d known the truth, which is a very high bar for evidence. The TTAB's power to shift these fees is highly constrained, only deriving its limited authority indirectly through a specific jurisdictional loop in the Lanham Act, so even if you clear those hurdles and get an award—and this is important—the money is strictly limited to the reasonable costs of the administrative proceeding itself. They absolutely won't include fees from pre-suit demand letters or related federal court litigation, and securing a simple cancellation via a default judgment usually isn't enough unless there's specific evidence of vexatious conduct. It’s a specialized process for the most egregious conduct, and you can’t count on that money, but knowing the specific definitions of fraud and misconduct is key if you ever need to argue that unique, tiny exception.