What is a TTAB summary judgment motion?

A TTAB summary judgment motion is a pretrial filing made to request an earlier decision in a trademark opposition or cancellation proceeding before the USPTO. Such a motion is called dispositive since it can potentially dispose of the case. Due to its dispositive nature, summary judgment motions are often denied as being either premature or lacking in supporting evidence.

To prevail, the moving party bears the burden of showing that there is no genuine dispute as to any material fact. The moving party may show that the material facts are undisputed by pointing to an absence of evidence to support the nonmoving party’s case.

Motions for summary judgment (MSJ) may form an important part of an overall TTAB trademark strategy. If the law and the facts discovered at an earlier stage in the case would render victory more attainable, then it may be worthwhile to consider filing an MSJ. Before moving for summary judgment, consider both the substance and procedure involved in such motions.

Should you file a summary judgment motion?

The biggest factors in considering a summary judgment motion in a TTAB trademark case is timing and the quality of evidence. The evidence may appear to be in your favor, perhaps even good enough to win at trial. But that does not mean that you will prevail at summary judgment.

The issue is whether the nonmoving party can raise a genuine issue over the disputed facts. If so, your summary judgment motion will be denied.

When should you file your MSJ?

You will want to conduct sufficient discovery to procure the evidence, or the lack thereof, to support your MSJ. Filing a summary judgment too early will cause the other side to argue that your MSJ is premature and that they need more discovery to uncover facts that will defeat your motion. So, plan on at least receiving responses to your initial set of discovery to see if an MSJ would be appropriate at that time.

How to oppose or reply to a summary judgment motion?

Opposing a summary judgment motion is not about winning your case. Since the burden rests with the moving party, the nonmoving party can defeat the MSJ by arguing that the moving party has failed to meet its burden. Another option is to seek a denial or deferral of the MSJ by filing a Rule 56(d) motion for discovery on the relevant issues.

What are TTAB cases where summary judgment was granted?

Here are examples of when the TTAB granted summary judgment:

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and entrepreneurs with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com