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 See MeUndies, Inc. v. Drew Massey dba myUndies Inc., Cancellation No. 92055585 (August 13, 2014) [not precedential].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).