A trademark cancellation proceeding for likelihood of confusion was recently decided by the Board.  It is a good lesson in evidentiary best practices.

In Marco Industries, Inc. v. Mark White, the Petitioner sought to cancel U.S. Reg. No. 4880452 of VITABUD GROW for fertilizers in International Class 1.   The petition for cancellation alleged that the Registrant’s mark creates a likelihood of confusion with Petitioner’s common law mark VITAGROW for plant foods.

In proving likelihood of confusion, the burden is on the Petitioner to first establish proprietary rights in its common law mark.  This may be shown through a prior registration, prior trademark use, or prior use as a trade name.  It may also be proven through prior use analogous to trademark use.   In this case, the Petitioner had to establish proprietary rights in its VITAGROW mark.  It also had to show that its mark is distinctive of its goods.   Distinctiveness can be either inherent or acquired.   The Petitioner would also have to show that its proprietary rights in and to its mark preceded the Registrant’s rights.

In this case, the Registrant’s application date operated as the priority date.  This was May 8, 2015.   The Petitioner introduced evidence of its use use of the VITA GROW Mark prior to 2014.  The evidence consisted of two pages of website archive page printouts from 2007 and 2008.   Despite this limited evidence, the Board held that the Respondent did not properly challenge the website printouts as hearsay.  Specifically, the Board held that it was incumbent on the Respondent to object to Petitioner’s evidence and it did not.  Since Petitioner’s evidence was submitted by Notice of Reliance, and not through testimony, the Respondent could have had the website pages stricken as impermissible hearsay.  Its failure to do so acted as as a waiver to any objection to the evidence.   Therefore, the website evidence of priority was admitted by the Board.  This procedural error proved fatal.

Attorney note:   Trial testimony in trademark opposition and cancellation cases may be submitted in one of two primary ways.  These are through oral or written testimony (via witness declaration) or through a Notice of Reliance.   Evidence submitted in connection with a Notice of Reliance is generally limited to self-authenticating evidence.  If a party attempts to introduce evidence in its Notice of Reliance (such as website pages), it is proper to do so only in limited circumstances.  If the evidence is being offered to establish the truth of the matter asserted in the print-out, then it can be challenged as hearsay.

It is important to consider your options prior to filing an Answer if your trademark application is opposed.

Trademark Opposition.   A trademark opposition is an inter-partes proceeding before the U.S. Trademark Trial and Appeal Board.  Any third-party may file a notice of opposition against a trademark on one or more several grounds.  These include that the applied for mark is:

  • likely to cause confusion with the Opposer’s preexisting registered mark or common law rights;
  • merely descriptive of the goods or services for which registration is sought;
  • primarily merely a surname;
  • geographically misdescriptive;
  • generic of the goods or services

In addition to the above grounds, the Opposer may claim that the Applicant:

  • lacked a bona fide intention to use the mark in commerce at the time it filed its trademark application;
  • committed fraud on the trademark office in the filing or maintenance of its trademark application

A trademark applicant usually has 40 days to answer a trademark opposition.   An Applicant can explore other options to settle the dispute prior to filing its Answer.  Some of those options are set forth below:

Narrow the identification of goods or services.   The jurisdiction of the U.S. Trademark Trial and Appeal Board is limited to issues of registration only.  In other words, the TTAB does not have the authority to order any applicant to cease using its trademark in commerce.  It can however, refuse the trademark registration.  In likelihood of confusion cases, Opposers often seek an agreement with the Applicant.  The Applicant can agree to delete certain goods from its identification of goods.   If the Applicant agrees to do so, it is possible that the Opposer will agree to withdraw the opposition.

Withdraw the Application.   If the Applicant agrees to withdraw the application,  there is nothing left to adjudicate before the TTAB.  This is due to the Board’s limited jurisdiction.  Note, however, that a judgment will issue in favor of the Opposer.   This means that the Applicant will not be able to seek to apply for that mark using the same or similar goods in the future.  If an Applicant is considering withdrawing its trademark application, it is preferable to seek a coexistence agreement.

Enter into a coexistence agreement.  A typical coexistence agreement will permit the Applicant to continuing using its mark in commerce subject to certain limitations.  These may include that the Applicant delete certain goods from its identification or stipulate not to apply for related goods under the same mark in the future.    Whether to agree to enter into a coexistence agreement with an Opposer should be considered on a case-by-case basis.  In general, it is not wise to enter into an Agreement if the terms include that the Opposer is able to continuously monitor your future marketplace uses.  Moreover, if the Agreement has any clause for breach of the Agreement, this is something where an Applicant should hesitate to sign.   The best coexistence agreements are those that are definitive, limited in time and scope, and do not leave open any possibility to breach the agreement in the future.

By considering the above-alternatives, an Applicant may still be able to achieve its business goals without having to get involved in a costly trademark opposition proceeding.  While every case is different and no outcome is certain, it is advisable to engage in discussions early in the process to avoid any unnecessary escalation in attorney’s fees and risks to your marketing plans.

Practical Advice for TTAB proceedings was the subject of a session at INTA Boston 2019.

The topics of discussion were as follows:

Difference between TTAB and District Court.   Proceedings before the TTAB are usually more narrow and streamlined.  This is due, in large part, on the limited jurisdiction of the Board to issues of registrability only.

Scheduling.  The TTAB gives the parties a little more flexibility on the scheduling, particular where both parties consent to extensions of time.  In District Court, the court is usually more rigid and often seeks to force the parties to either commit to trial or to engage in settlement discussions.  That being said, there are certain mandatory deadlines in the TTAB that are not flexible, including serving discovery at least 30-days prior to the expiration of the period

Admission of Evidence.  In the TTAB, Notices of Reliance and Testimony declarations are the most-used vehicles for admission of evidence.  Direct evidence can be either through trial testimony deposition (in part of your case-in-chief) or by declaration.  Self-authenticating evidence, generally in the form of internet print-outs, trademark registrations, and other publicly available materials, can be admitted through Notice of Reliance.  Declarations also give the opposing party the option to either cross-examine the declarant, or attack the testimony in the form of your client’s own rebuttal affidavit.

Strategic Choices.  The issue of whether to proceed before the TTAB or district court is often dependent on the various factors.  Some of these include whether the mark is an intent to use, or perhaps in the venue where you believe your client may obtain a more favorable outcome.  Since the TTAB’s jurisdiction is on issues on registration only, it often looks at three main factors in making a decision:  (a) similarity of marks; (b) similarity of goods; and (c) similarity of trade channels.   These factors are often predictable and do not consider in great detail marketplace use as it relates to likelihood of confusion.  If a party files an opposition, there is always the risk that a declaratory judgment action in district court may be the responsive pleading.  In certain cases, a trademark applicant who is a defendant in an opposition can trigger its insurance coverage if it brings a declaratory judgment action for non-infringement.

Role of Interlocutory Attorney.   All contested motions are referred to the interlocutory attorney (IA).  The IA is also responsible for conducting the discovery conference (if requested).  Parties can also establish that they prefer to appear at deposition telephonically and to have motion be determined by phone rather than written opinion.

The speakers were Roxanne Elings, Kathleen McCarthy, and Judge Elizabeth Dunn of the U.S. Trademark Trial and Appeal Board.  The moderator was Pamela Chestek.

A recent petition to cancel a trademark registration is a good lesson in what constitutes a well-drafted cause of action.

In Bonehead Brands, LLC v. Direct Impulse Design, Inc.,  Petitioner sought to cancel Reg. No. 3182681 of the mark BONE HEAD OUTFITTERS and Design for various apparel items in International Class 25.   The Respondent thereafter filed a motion for summary judgment on Petitioner’s pleaded claim of abandonment. The history leading up to the motion for summary judgment and the Board’s decision deserves comment.

On May 11, 2016, the Respondent filed a combined Section 8 and Affidavit together with a specimen of use that purported to show the mark in continuous commerce.  The USPTO accepted the Section 9 renewal portion of the affidavit, but rejected the specimen submitted in support of the Section 8 affidavit of continuous use.   The USPTO required a substitute specimen be submitted.   The Respondent failed to submit a response to the Office Action within the six (6) month period for doing so.

Shortly thereafter, the Examiner issued a second office action.  There, the Examiner stated that the trademark registration would be cancelled if the Respondent failed to furnish an acceptable substitute specimen of use within an extended six (6) month period.  Approximately one week later, the Petitioner filed a petition for cancellation of the registration.  Petitioner indicated that its basis was on the grounds of abandonment.  Two days later, the Respondent filed a combined Section 8 and 9 declaration with a substitute specimen.  The combined Section 8 and 9 declaration was accepted and the registration was renewed.

In its motion for summary judgment, Petitioner contended that the BONE HEAD OUTFITTERS registration should be cancelled on the grounds of abandonment. Section 45 of the Trademark Act governs the rule regarding cancellation of a trademark registration due to abandonment.  It states in pertinent part:

Abandonment of a Mark.  A mark shall be deemed to be “abandoned” if…the following occurs: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.

The Board ruled that while Petitioner stated that the petition was for abandonment, it failed to properly plead the predicate grounds for cancellation of a registration on the grounds of abandonment.   The failure to timely file a Section 8 or 9 Declaration is not a recognized ground for abandonment.  There is no mechanism for a third-party to bring a petition for cancellation due to failure to properly or timely file a Section 8 or 9 Affidavit.  Rather, in the absence of the Director of Trademarks issuing its own cancellation of a registration, a Petitioner can only seek cancellation on one of the grounds enumerated under Section 14 of the Trademark Act.  Here, the Petitioner failed to plead that the Registrant had abandoned its mark due to discontinued use with an intent not to resume use.  Accordingly, the Registrant’s motion for summary judgment was granted.

Author’s Note:   If you or your company requires additional information on a petition to cancel on the grounds of abandonment, contact us.

Before filing a trademark opposition, be sure to assess whether you will be likely to prevail. By doing so, you can potentially save thousands of dollars in attorney’s fees and avoid subjecting your brand to unnecessary risks.

The determination of whether to file a trademark opposition to contest a third-party’s trademark application is not always simple. Before filing a notice of opposition, the potential Opposer should take into account the following considerations:

Causes of Action.  Under the Trademark Act, there are numerous grounds under which to bring an opposition.  Some of the more common grounds include that:

(a) the mark, when used in connection with Applicant’s applied for goods or services, is likely to cause confusion with Opposer’s previously used or registered mark;

(b)  the Applicant did not have a bona fide intent to use its mark in commerce at the time of filing

(c)  Applicant’s mark is merely descriptive of its goods or services

(d)  there was no bona fide use in commerce of Applicant’s mark prior to its filing a use-based registration

Merely pleading the grounds for opposition is not enough; the Opposer must prove the elements of its claims by a preponderance of the evidence.

Proof.   Every opposer must establish procedural and substantive proofs in order to prevail.

(a)  Standing.   An Opposer must first establish its standing to bring and maintain a trademark opposition before the Trademark Trial and Appeal Board.  Standing is satisfied when the Opposer shows that it has a legitimate interest in the outcome of the proceeding (i.e., it is not a mere intermeddler) and that it will be damaged should the registration issue.  If the Opposer cannot establish its standing, then the action will be dismissed and the substantive grounds for the opposition will not be considered.

(b)  Priority.   In cases where a likelihood of confusion is alleged pursuant to Section 2(d) of the Trademark Act, the Opposer must establish that it has priority trademark rights that are superior to Applicant’s constructive or actual first use dates.  Priority rights may be shown through a prior registration, earlier trademark use, or use analogous to trademark use.

(c)  Substantive considerations.  Once an Opposer meets its procedural threshold requirement of standing, the elements of proving its case differ depending on the specific grounds of the Opposition.  To establish a Section 2(d) case for likelihood of confusion, the Board undertakes the 13-part test found in the case In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).   A discussion of this test may be found here.  With regard to establishing that Applicant’s mark is merely descriptive pursuant to Section 2(e) of the Act, the Opposer must show that the mark merely describes a feature, characteristic, ingredient, purpose, or function, or use for the applied for goods.   A discussion of the test for mere descriptiveness may be found here.

Practice Tip:  Companies and in-house counsel who are considering filing a notice of opposition can discuss the implications of doing so with the author.  In addition to filing a notice of opposition, there are other alternatives that can be discussed depending on the business goals of the client.  Being fully apprised of these options will serve the interests of the brand owner client.

In a trademark opposition proceeding, a party alleging a likelihood of confusion pursuant to Section 2(d) of the Trademark Act is required to establish specific elements of proof.  If you are a potential opposer, you will have the burden of proving the following evidentiary factors by a preponderance of the evidence:

Standing.  Standing is a threshold issue that must be determined in every trademark opposition or trademark cancellation before the U.S. Trademark Trial and Appeal Board.   In order to establish standing, the Opposer must show that it has a legitimate interest in the outcome of the proceeding and that it will be damaged should the defendant’s application issue.  In a likelihood of confusion case,  the Opposer’s standing can be established by introduction into evidence of a preexisting registration that it owns, its later-filed application that was refused based on the Applicant’s mark, or common law use that predates Applicant’s constructive date of first use.

Priority.   In Section 2(d) cases, the Opposer has the burden to prove priority of use as well as likelihood of confusion by a preponderance of the evidence.  A party may establish its own priority rights through ownership of a preexisting registration, through actual use, or through use analogous to trademark use.   Of the three, the least burdensome method is to show ownership of a prior registration.

Likelihood of Confusion.  Once the Opposer introduces evidence of its standing and priority, it must show that Applicant’s mark is likely to be confused with the Opposer’s pleaded marks.  The analysis of whether a likelihood of confusion exists has been enunciated in the 13 part test found in the case seminal case  In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (the “DuPont Factors”).   In its many decisions that have applied the Dupont Factors test, the Board has held that some of the main factors are the similarity of the parties’ marks, similarity of the goods or services, and similarity of the trade channels.  Other important factors are the strength of the Opposer’s mark and the number of  similar third-party registrations that already exist on the register.

Practice Tips:  In evaluating the likelihood of success of a trademark opposition proceeding brought pursuant to Section 2(d), it is important for the potential Opposer to first assess its standing and priority.  If the Opposer’s priority cannot be established, then the the Board will deny the Opposition.  This means that the issue of likelihood of confusion is moot and will not be considered.  By fully vetting the likelihood of success of an opposition prior to filing it, the Opposer may save thousands in litigation fees and not subject its valuable trademark registrations to undue risk.  For further information on establishing evidence to support a Section 2(d) case, you may refer to our earlier post on the subject.

To discuss a trademark opposition or trademark cancellation case on the grounds of likelihood of confusion, please contact the author.

The Trademark Trial and Appeal Board recently released its TTAB filing statistics for fiscal year 2018.   These updated figures include year-to-year changes in the filing of appeals, notices of oppositions, and petitions for cancellations.  It also provides useful information on the disposition of cases.

Highlights include the following:  (percentage in parentheses signifies change over 2017)

I.   Filings

  • Appeals: 3,223; (+2%)
  • Extensions of time to oppose: 19,208;  (+3.9%)
  • Oppositions: 6,496 (+5.5%)
  • Cancellations: 2,253 (+7.2%)

II.   Contested Motions

  • # of decisions issued:  1,082  (+9.2%)
  • # of motions resolved by decision: 1318  (+6.5%)
  • Average pendency:  9.4 weeks  (+20.5%)
  • # of cases with motions awaiting decision:  165 (+12.2%)

III.    Trial Cases and Appeals Pendency

  • Appeals:  35.8 weeks (-7.8%)
  • Trial Cases: 140.3 weeks (-10.8%)
  • ACR Trial Cases:  106.3 weeks (-11%)
  • # of ACR Cases decided:  19 cases
  • Awaiting decision at end of period:  130 cases (+39.8%)

Conclusions

These most recent TTAB statistics yield some interesting observations:

  1.   TTAB litigation is increasing.   Opposition and cancellation proceedings are up on average approximately 6% combined.  This could be due in part to greater brand enforcement efforts being undertaken as a result of a stronger economy.  With regard to cancellations, the USPTO has made it quite clear that “deadwood” registrations that contain goods or services that are no longer used are subject to cancellation either in whole, or in part.  Therefore, the increase in both opposition and cancellation filings could be for offensive as well as defensive purposes.
  2.  There is increased motion practice.   Although both the Board and the Federal Rules encourage the just and speedy resolution of contested proceedings, and for both parties to cooperate fully, this sadly is not always the case.  While it cannot be proven, the failure to cooperate often results in protracted proceedings, including greater motion practice and higher attorney’s fees.
  3.  TTAB is focused on speedier resolution of cases.   The TTAB has made a commitment to several things that will help shorten the inter-partes cases lifecycle, including encouraging the parties to stipulate to Accelerated Case Resolution (ACR) procedures, engage in mandatory discovery conferences where settlement options are explored, and further mandate the cooperation between counsel.

Editor’s Note:   Parties are encouraged to protect their trademark rights at all times.   This is best done through proper monitoring and enforcement.  Should a trademark opposition or trademark cancellation proceeding be necessary to enforce a brand owner’s rights, it is recommended to speak with a qualified trademark attorney experienced in TTAB proceedings.

 

A trademark opposition may be commenced based on a likelihood of confusion with a prior registered mark.   The statutory basis for a likelihood confusion cause of action may be found in Section 2(d) of the Trademark Act.

To prevail on a Section 2(d) claim, the Opposer must prove by a preponderance of the evidence the following:

Standing.  Standing to bring or maintain an action consists of two elements.  First is that the Opposer has a legitimate stake in the outcome of the proceeding.  In other words, that it is not a mere intermeddler.  Second is that the Opposer must allege that it will be damaged if the application for registration issues.  Proof of a prior existing trademark registration is a common method for an Opposer to prove its standing.  Since standing is a low threshold, it is often met.  However, Opposers must be careful to include proof of its standing in its Notice of Opposition.  The failure to do so may result in dismissal of the proceeding.

Priority.   In a likelihood of confusion case, the Opposer must also establish that it has priority.  This means that it has superior trademark rights to that of the Applicant.  This can be proven by either asserting a prior trademark registration, prior common law use, or use analogous to trademark use.  In any of the above examples, the Opposer must show that its use predates the Applicant’s filing date (in the case of an intent to use application) or use dates based on a use-based application.

Likelihood of Confusion.   Assuming the Opposer can prove standing and priority, it then must show that Applicant’s mark is likely to cause confusion with the Opposer’s prior rights.  To do so, the Trademark Trial and Appeal Board looks to a 13-part test set forth in the seminal case  In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (the “DuPont Factors”).   Although the weight given to the relevant DuPont factors may vary, the following two factors are key considerations in any likelihood of confusion analysis:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services as described in the application and registration(s).

In addition to the above-factors, the Board also looks to the following key factors in making its determination:

  • Similarity of the parties’ trade channels
  • The conditions under which sales are made to buyers (impulse or sophisticated purchasing decision)
  • The number and nature of similar marks on similar good
  • Evidence of actual confusion

Each likelihood of confusion case is different as applied to the relevant Dupont Factors.  Therefore, it is important for an Opposer to thoroughly analyze the relevant legal standard and factual support for your case prior to bringing a trademark opposition proceeding.

Editor’s note:  If your trademark opposition is opposed based on a likelihood of confusion, it is advisable to speak with a qualified trademark opposition attorney.  Likewise, if you wish to oppose a third-party trademark application on the grounds that it is likely to cause confusion with your company’s prior trademark, it is best to review the guidelines contained in this article.  To discuss your case or for further information, feel free to contact the editor.

A trademark opposition may be filed based on one of several grounds.   This includes that the mark is merely descriptive and should be refused registration pursuant to Section 2(e)(1) of the Trademark Act.

A trademark is assessed on a continuum of legal strength.  The strongest trademarks (and thus most eligible for trademark protection) are arbitrary or fanciful.  This is usually a coined-term that has no relation to the goods or services.  Suggestive trademarks are next; like arbitrary marks, suggestive trademarks are considered to be distinctive and therefore registrable.  Suggestive trademarks generally require some imagination on behalf of the consumers in discerning the goods or services for which the mark is applied.  In contrast to arbitrary and suggestive trademarks are merely descriptive trademarks.  Lastly, are generic trademarks, which can never be registered under any circumstances.

Merely Descriptive Trademarks.  A mark is “merely descriptive” within the meaning of § 2(e)(1) if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods and/or services. TMEP §1209.01.  A major policy reason for not granting protection to merely descriptive trademarks is to prevent any one party by having a monopoly right to a phrase or term that can be used by others.  Whether a mark is descriptive is assessed in relation to the goods or services for which it is applied.  Therefore, a mark may be merely descriptive (and thus not registrable) for use with certain goods but not for others.  For example, APPLE would be merely descriptive of pies and baked goods, but not for computers.  The former use would be unregistrable as a trademark; the latter is an arbitrary and strong mark as used by the famous company of the same name.

Design trademarks (otherwise known as logos) can also be deemed merely descriptive and therefore not registrable.  A visual representation that consists merely of an illustration of the goods, or an important feature of characteristic of the goods is merely descriptive under Section 2(e)(1).  Similarly, when a mark is comprised of wording that is descriptive under §2(e)(1) and a design element that is a pictorial representation of the goods, or that reinforces the descriptive meaning of the wording, the entire mark is merely descriptive.

How to Oppose a merely descriptive trademark.   A trademark opposition to prevent a  trademark from registering under Section 2(e)(1) can be initiated by an Opposer.  At a minimum, the Opposer must plead that it has standing to contest the trademark application and that the applied for mark is merely descriptive.  The Opposer has the burden of proving by a preponderance of the evidence that the Applicant’s mark is merely descriptive and should be refused registration.  Evidence is often established through dictionary definitions, trade usages, testimony, and other publicly available materials that would support a Section 2(e)(1) claim.  Note that an Applicant in a trademark opposition may also bring a counterclaim against an Opposer on the same grounds that are being alleged against it.

Client advisory:  If you are considering opposing a trademark application of a third-party, or you a trademark opposition has been filed against your application on the grounds of mere descriptiveness, you may contact the author to discuss options available to you.

A motion for summary judgment in a trademark opposition or trademark cancellation proceeding before the Trademark Trial and Appeal Board (TTAB) can be an effective strategy.  Summary judgment motions are often are filed near or at the end of discovery, prior to the trial phase of the case.  Sometimes, summary judgment motions are brought even earlier in the proceeding.  If the movant is successful, it can save the moving party the time and expense of a full trial on the merits.  Equally important is the possibility that it could obtain a conclusive ruling by the Board sooner — sometimes even a year or more.   This potential savings in the time and expense of litigation can be appealing.

Yet a summary judgment motion in a trademark opposition or trademark cancellation proceeding is not without risk.  Due to its high burden of proof, a summary judgment motion is granted less than 50% of the time.  This alone could be a deterrent for companies seeking such expedited relief.   That being said, the facts of each case are unique.   Therefore, the facts and law should be weighed carefully when considering filing a motion for summary judgment.

Here are some things to consider when considering the merits of a summary judgment motion:

   1.   Legal standard:  Summary judgment is appropriate where the moving party can show the absence of any genuine dispute as to any material fact, and that it entitled to judgment as a matter of law.  Fed.R.Civ.P. 56.  A party either asserting or refuting that a material fact exists must do so by citing to admissible supporting evidence that is properly made of record.

   2.  Standing.   A party’s standing to bring or maintain a trademark opposition or cancellation proceeding is a threshold issue that an opposer or petitioner must meet in every inter partes case before the Board.  The plaintiff must demonstrate that it has a real interest in the proceeding beyond that of a mere intermeddler and that it has a reasonable basis and belief that it will be damaged.

   3.  Priority.   In cases that are filed on the grounds of a likelihood of confusion pursuant to Section 2(d) of the Trademark Act and most other statutory grounds, the movant must establish that it either has a preexisiting trademark registration that it deems to be confusingly similar to the non-movant’s mark or proprietary prior common law use.

   4.  Proving the merits.   In Section 2(d) likelihood of confusion cases,  the plaintiff must establish the presence of a likelihood of confusion between the parties’ trademarks pursuant to the thirteen factors set forth in the case of In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).   Some of the primary Dupont factors include similarity of the marks, similarity of the goods or services, similarity of the trade channels, actual confusion, and the fame of the prior mark.

   5.  Opposition to Motion.  The non-moving party should file an opposition to the motion for summary judgment.  The opposition should set forth the existence of any and all genuine issues of material fact that would make granting the motion improper.   As with the moving party, the opposing party must establish the existence of genuine issues of material fact through properly admissible evidence, such as declarations, documents, admissions, interrogatory answers, and deposition testimony.

   6.  Reply Brief.   After the non-moving party files its opposition to the motion, the moving party has the opportunity to file a reply brief, refuting any factual or legal contentions that are made by the non-movant in its opposition papers.

   7.  Judgment.   After all the moving papers have been submitted, the Board will render a written opinion.  Sometimes the Board will summarily deny the motion; most often it will include a written opinion of several pages that lays out the relevant record, legal standards, burdens of proof, and its decision.  The Board, in its discretion, may grant the motion in its entirety, deny it in its entirety, or grant it in part and deny it in part.   Any claim for relief that is not granted and could be dispositive to the outcome of the case will remain for trial.

Client Advisory.   If you are considering file a motion for summary judgment or have been served with a motion for summary judgment, it is advisable to discuss all options with your attorney or seek out other qualified legal advice.