What is a TTAB summary judgment motion?

A TTAB summary judgment motion is a pretrial filing made to request an earlier decision in a trademark opposition or cancellation proceeding before the USPTO. Such a motion is called dispositive since it can potentially dispose of the case. Due to its dispositive nature, summary judgment motions are often denied as being either premature or lacking in supporting evidence.

To prevail, the moving party bears the burden of showing that there is no genuine dispute as to any material fact. The moving party may show that the material facts are undisputed by pointing to an absence of evidence to support the nonmoving party’s case.

Need to defend a trademark opposition or cancellation? Contact US patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to see how we can help you protect your trademark rights.

Should you file a summary judgment motion?

Motions for summary judgment (MSJ) may form an important part of an overall TTAB trademark strategy. If the law and the facts discovered at an earlier stage in the case would render victory more attainable, then it may be worthwhile to consider filing an MSJ. Before moving for summary judgment, consider both the substance and procedure involved in such motions.

The biggest factors in considering a summary judgment motion in a TTAB trademark case is timing and the quality of evidence. The evidence may appear to be in your favor, perhaps even good enough to win at trial. But that does not mean that you will prevail at summary judgment.

The issue is whether the nonmoving party can raise a genuine issue over the disputed facts. If so, your summary judgment motion will be denied.

When should you file your MSJ?

You will want to conduct sufficient discovery to procure the evidence, or the lack thereof, to support your MSJ. Filing a summary judgment too early will cause the other side to argue that your MSJ is premature and that they need more discovery to uncover facts that will defeat your motion. So, plan on at least receiving responses to your initial set of discovery to see if an MSJ would be appropriate at that time.

How to oppose or reply to a summary judgment motion?

Opposing a summary judgment motion is not about winning your case. Since the burden rests with the moving party, the nonmoving party can defeat the MSJ by arguing that the moving party has failed to meet its burden. Another option is to seek a denial or deferral of the MSJ by filing a Rule 56(d) motion for discovery on the relevant issues.

Which TTAB cases granted summary judgment?

Here are examples of when the TTAB granted summary judgment:

• mark is not generic
• three-dimensional product configuration is functional
• product feature is functional
• likelihood of confusion where goods are identical
• likelihood of confusion where marks and goods are highly similar
• likelihood of confusion with highly similar marks and related goods and services
• dissimilarity of goods
• no dilution or likelihood of confusion
• dismissal of flawed fraud counterclaim
• lack of bona fide intent to use
• lack of bona fide intent to use for stores
• lack of bona fide intent to use for startup company
• issue preclusion applies
• untimely Section 8 declaration is not grounds for cancellation
• Morehouse defense not applicable because applied-for mark is not essentially the same
• claim preclusion applies
• laches (delay) in Section 2(d) likelihood of confusion claim
• admissions resulting from failure to respond to requests for admission (RFA)
• not merely descriptive
• priority
• not owner of Section 44 foreign registration
• single creative work

Need to file or oppose a TTAB summary judgment motion?

Call patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to see how we can help you file a TTAB MSJ or file an opposition to a summary judgment motion.

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