Proceedings before the United States Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) can be time-consuming and expensive, requiring extensive discovery, expert testimony, and legal arguments in the subject of intellectual property litigation. However, in some cases, parties may avoid a full trial by filing a TTAB summary judgment motion—a procedural tool that seeks to resolve a dispute before it reaches the trial stage.
A TTAB summary judgment motion asserts that there is no genuine dispute of material fact and that the moving party is entitled to judgment as a matter of law. If granted, the motion can result in an early victory, eliminating the need for further litigation. However, these motions are difficult to win and require strong legal reasoning, clear evidence, and a strategic approach.
This article explores when to file a TTAB summary judgment motion, how to structure an effective argument, and what risks parties should consider before moving forward.
When to File a TTAB Summary Judgment Motion
When to File a TTAB Summary Judgment MotionA TTAB summary judgment motion is governed by 37 C.F.R. § 2.127(e) and is evaluated under the same standard as Federal Rule of Civil Procedure 56. The moving party must demonstrate that:
- There is no genuine dispute of material fact. The evidence must show that no reasonable fact-finder could rule against the moving party.
- The moving party is entitled to judgment as a matter of law. The legal arguments must establish that, based on the undisputed facts, the law requires the TTAB to rule in favor of the movant.
The TTAB does not resolve credibility issues or make factual determinations in summary judgment motions. Instead, it assesses whether any material facts remain in dispute and whether the case should proceed to trial.
Under TTAB rules, a motion for summary judgment can be filed after the commencement of discovery and must be submitted before trial. Timing considerations include:
- Early-stage motions are sometimes effective if a case involves a clear legal issue such as lack of standing or failure to state a claim.
- Mid-discovery motions can be used when evidence obtained through discovery establishes the absence of a genuine dispute.
- Late-stage motions may be strategic if the case is near trial and one party lacks sufficient evidence to proceed.
The TTAB discourages premature summary judgment motions and may deny motions filed before discovery is complete unless the facts are clearly undisputed.
How to Win a TTAB Summary Judgment Motion
Winning a TTAB summary judgment motion requires a combination of legal precision, evidentiary strength, and procedural compliance.
Common grounds for granting summary judgment in TTAB proceedings include:
- Likelihood of Confusion is Not Plausible – If the trademarks at issue are clearly dissimilar in sight, sound, meaning, and commercial impression, summary judgment may be appropriate.
- Descriptive or Generic Terms – If the disputed mark is merely descriptive or generic, and the opposing party lacks evidence of acquired distinctiveness, the TTAB may rule in favor of cancellation or refusal.
- Lack of Standing – If a petitioner cannot prove real and direct harm, they may lack standing to challenge the registration.
- Failure to Establish Priority – If an opposer cannot prove prior use or an earlier registration date, they may be unable to sustain their claim.
- Abandonment or Non-Use – If a trademark owner has failed to use the mark in commerce for three consecutive years with no intent to resume use, summary judgment may be granted.
A TTAB summary judgment motion must be supported by undisputed evidence, which may include:
- Trademark registration records
- Sworn affidavits or declarations from company executives
- Market surveys demonstrating lack of consumer confusion
- Business records proving priority of use
- Discovery responses where the opposing party admits key facts
TTAB rules require that all supporting evidence be properly authenticated and submitted with the motion. Failure to follow procedural requirements may result in the motion being denied.
A party opposing a TTAB summary judgment motion will attempt to show that material facts remain in dispute, which would necessitate a full trial. Common counterarguments include:
- Raising factual disputes that require credibility determinations
- Challenging the interpretation of likelihood of confusion factors
- Arguing that the case requires additional discovery
The moving party must anticipate these arguments and demonstrate why the case can be resolved without a trial.
Risks of Filing a TTAB Summary Judgment Motion
While TTAB summary judgment motions can lead to early case resolution, they also carry risks:
- Denial Can Strengthen the Opposing Party – If the TTAB denies the motion, the opposing party may gain insight into the movant’s strategy, making trial preparation more effective.
- Expensive and Time-Consuming – Drafting a well-supported summary judgment motion requires extensive legal research and evidence gathering, which may not always justify the cost.
- Potential for Procedural Delays – The TTAB often takes several months to rule on summary judgment motions, and if denied, the case still proceeds to trial, causing additional delays.
- Strict Evidentiary Rules – Failure to submit properly authenticated evidence can lead to procedural dismissal of the motion.
A party considering a TTAB summary judgment motion should weigh these risks carefully and assess whether a full trial may offer a better opportunity to present their case.
Best Los Angeles Trademark Litigation Attorney
For businesses and trademark owners involved in TTAB proceedings, working with an experienced intellectual property attorney is crucial for crafting a persuasive summary judgment motion and avoiding common pitfalls.
David Nima Sharifi, Esq., founder of L.A. Tech and Media Law Firm, is a highly experienced trademark attorney who provides expert guidance on TTAB summary judgment motions, trademark disputes, and brand protection strategies. Recognized among the Top 30 New Media and E-Commerce attorneys by the Los Angeles Business Journal, he helps businesses navigate complex TTAB litigation with confidence.
Schedule your confidential consultation now by visiting L.A. Tech and Media Law Firm or using our secure contact form.
