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Motions for summary judgment command a considerable portion of the Trademark Trial and Appeal Board’s (TTAB) pending docket of contested motions and resources; their disposition inordinately consumes the TTAB, contributing in part to a backlog of cases. The TTAB continues to experience an enormous number of filings of summary judgment motions. In the past 10 months, the TTAB has decided more than 160 summary judgment motions, 73% of which were denied. For the past three years, it has taken more than a year, on average, from the date such motions are filed to decision. The TTAB is dedicated to eliminating the backlog of pending summary judgment motions by disposing of an equal number of pending motions within the next year. After deciding those motions, the TTAB expects the time from filing to decision to decrease. However, given the length of time it now takes to obtain a decision on a motion for summary judgment and the low likelihood of success, practitioners and clients should carefully evaluate whether and under what circumstances a motion for summary judgment is appropriate in TTAB proceedings. This article addresses trends in summary judgment practice before the TTAB by highlighting the grounds that are likely to be suitable for disposition by summary judgment, as well as the percentage of cases actually decided on the various grounds during the past two years. Finally, the article presents practice tips, including recommendations on how best to present evidence in support of a motion for summary judgment. At one time, the U.S. Court of Appeals for the Federal Circuit explicitly encouraged the use of summary judgment motions in inter partes cases before the TTAB. In Pure Gold Inc. v. Syntex (U.S.A.) Inc. [FOOTNOTE 1], Judge Helen W. Nies wrote, “The practice of the U.S. Claims Court and of the former U.S. Court of Claims in routinely disposing of numerous cases on the basis of cross-motions for summary judgment has much to commend it. The adoption of similar practice is to be encouraged in inter partes cases before the Trademark Trial and Appeal Board, which seem particularly suitable to this type of disposition. Too often we see voluminous records which would be appropriate to an infringement or unfair competition suit but are wholly unnecessary to resolution of the issue of registrability of a mark.” In the wake of Pure Gold, subsequent Federal Circuit decisions touted the use of summary judgment as an expeditious means of resolving TTAB cases. [FOOTNOTE 2] During this era, summary judgment filings dramatically increased, and movants routinely cited Pure Gold in support of their motions. [FOOTNOTE 3] Following the court’s lead, the TTAB granted approximately 60% of the motions for summary judgment. [FOOTNOTE 4] SUMMARY JUDGMENT DENIED More recent Federal Circuit decisions, however, signal a shift to a more cautious approach to summary judgment decision-making. The leading case, Olde Tyme Food Products Inc. v. Roundy’s Inc. [FOOTNOTE 5], enunciated the standard for summary judgment before the TTAB. The Federal Circuit found that the TTAB had improperly granted summary judgment after failing to draw inferences from the evidence in favor of the nonmovant. The court emphasized that the TTAB had failed to view the evidence in the light most favorable to the nonmovant and to draw all reasonable inferences in the nonmovant’s favor. Applying this rule, the Federal Circuit reversed the TTAB’s finding of likelihood of confusion between the movant’s “Old Time” mark and the nonmovant’s “Ye Olde Tyme” mark for similar bread products. The court found that the evidence raised a genuine issue of material fact concerning the connotations and commercial impressions of the marks. [FOOTNOTE 6] While Old Tyme Food Products — along with Opryland USA and Lloyds Food Products — illustrate only the Federal Circuit’s treatment of the TTAB’s summary judgment decisions involving claims of likelihood of confusion, the effect has extended beyond motions brought on Section 2(d) grounds. The Federal Circuit decisions reversing the TTAB on summary judgment have acted as a brake on the TTAB’s willingness to grant such motions for summary judgment. Consequently, during the past two years, the TTAB has denied many motions for summary judgment directed to a number of Lanham Act issues. During the past two years, the TTAB has granted only 27% of the motions for summary judgment — a rate less than half of that a few years ago. While this figure does not mean that a movant has only a 27% chance of prevailing, it does signal reluctance on the TTAB’s part to grant summary judgment. Moreover, even though the three hallmark decisions initiating the trend away from disposition on summary judgment were based on the likelihood of confusion, that remains the most common grounds on which parties seek summary judgment. The likelihood of confusion was a ground for seeking summary judgment in 55% of 205 motions decided by the TTAB between 1998 and 2000, yet the TTAB denied 75% of the motions for summary judgment based on this ground. Although far less common than motions based on the likelihood of confusion, motions for summary judgment based on fraud, priority, abandonment and descriptiveness have been equally unsuccessful before the TTAB. Abandonment, the next most common basis on which movants sought summary judgment, was alleged in only 8% of the motions, and the TTAB denied 80% of those motions. During the past two years, the TTAB also denied 73% of the motions for summary judgment based on issues relating to fraud, 79% of the motions based on issues relating to priority and 85% of the motions based on descriptiveness issues. In contrast, motions for summary judgment grounded on issue or claim preclusion and affirmative defenses have been more successful during the past two years. For example, the TTAB granted summary judgment on 55% of the motions based on issue or claim preclusion and 42% of the motions brought on grounds relating to affirmative defenses. However, issue or claim preclusion and affirmative defenses are asserted as grounds for summary judgment in only 6% and 4% of the motions, respectively. At a minimum, this new trend clearly indicates that motions for summary judgment do not substitute for trial; the TTAB will carefully weigh the evidence in the light most favorable to the nonmovant and will draw all inferences in favor of the nonmovant. Thus, the TTAB will grant summary judgment only if it is quite clear that there is no genuine issue of material fact remaining. When deciding whether to file a motion for summary judgment in a TTAB proceeding, practitioners should consider the grounds most susceptible for disposition on summary judgment as well as common evidentiary issues. * In view of current delays, a motion for partial summary judgment on one claim in a case in which multiple claims exist is not always recommended because the case will still go forward on the other claims. * Motions based on issue or claim preclusion are often appropriate for summary judgment. While issue or claim preclusion is asserted in only 6% of summary judgment motions filed, the TTAB has granted approximately 55% of this type of motion during the past two years. [FOOTNOTE 7] * Issues of intent, such as claims of fraud or abandonment, are particularly unsuited to disposition on summary judgment. [FOOTNOTE 8] * The TTAB is willing to grant summary judgment motions on affirmative defenses. However, they are most often granted in favor of the movant in cases in which the nonmovant asserts the laches defense in an opposition proceeding. That defense is severely limited in an opposition because the period of “unreasonable delay” runs from date of publication of the mark in the Official Gazette. [FOOTNOTE 9] The TTAB has also granted summary judgment in favor of the plaintiff on the prior-registration defense because the “same mark for the same goods or services” standard is so stringent. [FOOTNOTE 10] * Motions brought on likelihood of confusion are denied most often because the TTAB finds genuine issues of material fact as to the commercial impression of the marks, relatedness of the involved goods or services, channels of trade, strength of the marks, and fame. * With respect to evidence in support of motions for summary judgment, third-party registration and/or computerized search reports are insufficient to carry the burden. [FOOTNOTE 11] However, in opposition to a motion, such evidence is sufficient to raise a genuine issue of material fact as to the strength or weakness and scope of protection of the plaintiff’s mark. Counsel should keep in mind that in order for Internet evidence to be admissible to support a motion for summary judgment, such evidence must include the Internet addresses and be accompanied by a declaration by the person who did the Internet search. [FOOTNOTE 12] * One or both of the parties may seek to limit expenses and to increase the likelihood of success by stipulating that certain genuine issues of material fact are not in dispute solely for the purpose of summary judgment. For example, in likelihood-of-confusion cases, the parties may agree that the only issue in dispute is the similarity of the marks or the relatedness of the products; or one party may concede an issue solely for the purpose of summary judgment and, if it is unable to obtain entry of summary judgment, may reserve the right to try the issue. While the TTAB recognizes the parties’ desire to avoid protracted litigation, recent trends indicate that a motion for summary judgment is no longer a promising pretrial device for avoiding trial and its associated expenses. With the exception of motions filed on the basis of issue and claim preclusion, the filing of a motion for summary judgment is likely to increase a client’s costs and to delay resolution of the litigation. In the few instances in which a motion for summary judgment is an appropriate device, the motion must be well supported and must demonstrate the absence of any genuine issues of material fact. Linda K. McLeod is an administrative trademark judge at the Trademark Trial and Appeal Board. Erin M. Falk is a partner at Washington, D.C.’s Howrey Simon Arnold & White L.L.P. Mary F. Walters is an associate at the firm. The views expressed in this article are those of the authors and do not reflect the views or policies of the U.S. Patent and Trademark Office. FOOTNOTES: FN1 739 F.2d 624, 627 n.2 (Fed. Cir. 1984). FN2 See Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1562 (Fed. Cir. 1987). FN3 See T.J. Quinn, Tips from the TTAB: Inter Partes Summary Judgment Revisited, 76 Trademark Rep. 73, 73 n.2 (1986); Tips from the TTAB: Discovery Safeguards in Motions for Summary Judgment: No Fishing Allowed, 80 Trademark Rep. 413, 413-14 (1990). FN4 See 80 Trademark Rep. at 414. FN5 961 F.2d 200, 203 (Fed. Cir. 1992). FN6 Id. at 203. See also Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 853 (Fed. Cir. 1992) (reversing TTAB’s summary judgment finding of no likelihood of confusion between “Carolina Opry” and “Grand Ole Opry,” both entertainment services); and Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 768 (Fed. Cir. 1993) (reversing TTAB’s summary judgment finding of likelihood of confusion between “Lloyd’s” restaurant services and “Lloyd’s” packaged food products). FN7 See Larami Corp. v. Talk To Me Programs Inc., 36 U.S.P.Q.2d 1840 (T.T.A.B. 1995). FN8 Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563 (Fed. Cir. 1991). FN9 See National Cable Television Ass’n Inc. v. American Cinema Eds. Inc., 937 F.2d 1572, 1581 (Fed. Cir. 1991). FN10 See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881 (C.C.P.A. 1969). FN11 See Lloyd’s, 987 F.2d at 768. FN12 Raccioppi v. Apogee Inc., 47 U.S.P.Q.2d 1368 (T.T.A.B. 1998).

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