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.