In recent years, prevailing on summary judgment motions at the Trademark Trial and Appeal Board (hereinafter the “Board”) has become more difficult. However, if a petitioner believes that there are no material facts in dispute, a summary judgment motion should be filed. The following case is a good example of how petitioners can prevail on these types of motions before the Board. In a recent cancellation proceeding, MeUndies, Inc. (hereinafter the “Petitioner”) alleged that Drew Massey dba myUndies Inc. (hereinafter the “Respondent”) abandoned its trademark MYUNDIES for clothing, namely underwear, boxers, briefs, panties, thongs, bras, sleepware, loungewear, shirts, shorts, jeans, pants, socks, and hats.
Petitioner also alleges that he owns MEUNDIES and MEUNDIES.COM for various undergarments and his use commenced on December 21, 2011. See MeUndies, Inc. v. Drew Massey dba myUndies Inc., Cancellation No. 92055585 (August 13, 2014) [not precedential]. The Respondent filed its application on October 22, 2008 based on use in commerce. The Petitioner filed a trademark application for the mark MYUNDIES.COM and it was refused based on a likelihood of confusion with Respondent’s registration. See Trademark Act Section 2(d), 15 U.S.C.2d §1052(d), and our webpage entitled Likelihood Of Confusion Refusals – 2(d) Refusals, for details concerning the basis for this type of refusal. This blog post is categorized under Trademark Application Refusal because sometimes a trademark application will be refused, and the only appropriate recourse is to initiate a proceeding with the Board. An action before the Board may be necessary so that the applicant can demonstrate that there is good reason why its application should proceed, but the only way to allow it to proceed is to cancel another registration.
Petitioner filed a summary judgment motion based on abandonment and nonuse. Petitioners have the burden of demonstrating the absence of any genuine dispute as to a material fact. See Celotex Corp. v. Catrett 477 U.S. 317, 323 (1986). The burden then shifts to the non-moving party once the moving party submits sufficient evidence that if unopposed, shows that there is no genuine issue of material fact. In a summary judgment motion, the role of the Board is to determine if there are any material facts that can be disputed, and not to actually resolve any genuine disputes of material fact. See Lloyd’s Food Products Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).
The first issue the Board addressed was standing. Regarding this issue there was no genuine dispute of material fact. A party has standing to file a cancellation proceeding, if the party has reason to believe that it will be damaged by the trademark registration. The Petitioner submitted the office action refusal to demonstrate that it had a commercial interest in the subject trademark. Next the Board addressed the substantive issue of nonuse. The Petitioner argues that on the date (October 22, 2008) that Respondent filed its use-based application, the trademark was not in use in commerce with the goods identified in the registration. Under Trademark Act Section 1(a), a registration will be held to be void ab initio, if the mark is not in use in commerce on or before the filing date of the trademark application. See ShutEmDown Sports v. Lacy, 102 USPQ2d 1036 (TTAB 2012).
As evidence of nonuse, Petitioner relied on discovery responses. Petitioner asked the Respondent to admit or deny that he wasn’t selling the goods identified in the trademark application under the mark MYUNDIES as of October 22, 2008 (the application filing date). The Respondent Admitted that he wasn’t using the mark MYUNDIES with the clothing items specified in his application on the date he filed it with the United States Patent & Trademark Office. He further stated that his registration was filed without an attorney and that he “should have filed as intent to use versus referring to first use which was done by a separate company”. Unfortunately for the Petitioner, ignorance of the law or a misunderstanding of the statutory requirements will not excuse the fact that the mark was not in use with the goods on or before the filing date.
In another discovery response the Respondent states that there were no sales prior to (the trademark filing date) October 22, 2008. Taking into consideration all the evidence submitted by the Petitioner, the Board concluded that there was enough evidence, that if unopposed, showed no genuine dispute regarding the Respondent’s failure to use the trademark on the goods on or before the application filing date. Respondent did not set forth any evidence of a persuasive nature. The Respondent simply declared that he is currently using the trademark in commerce for the clothing items specified in the registration and has no intention to abandon the trademark.
Whether the Respondent is currently using the mark in commerce is irrelevant under these circumstances. The Board granted the motion for summary judgment and cancelled the Respondent’s registration because the trademark was not in use in commerce on the date the use-based application was filed. This is a harsh result, but one that could have easily have been avoided if the Respondent took the time to fully understand the statutory requirements before filing a trademark application. We counsel clients every day on these types of issues. We would be happy to provide you with a courtesy consultation and assist you with your trademark filing. Kindly contact our offices to set up a mutually convenient appointment.