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  • Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law.
    • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007).
      • A party is entitled to summary judgment when it has demonstrated that there are no genuine issues as to any material fact and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c).
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007)
      • Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007)
      • Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute and the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c).
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • "Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
    • Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436, (TTAB 2006).
      • As has often been stated, summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
    • Callaway Vineyard & Winery v. Endsley Capital Group, Inc., Opposition No. 121,583, (TTAB 2002).
      • Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
    • Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc., Opposition No. 120,101, (TTAB 2002).
      • As has often been stated, summary judgment is an appropriate method for disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • Summary judgment is an appropriate method of disposing of a case in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
  • Elements for moving for summary judgment in its favor on its Section 2(d) claim.
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • As a party moving for summary judgment in its favor on its Section 2(d) claim, petitioner must establish that there is no genuine dispute that (1) it has standing to maintain this proceeding; (2) that it is the prior user of its pleaded mark; and (3) that contemporaneous use of the parties' respective marks on their respective goods would be likely to cause confusion, mistake or to deceive consumers. See Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001).
    • Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001).
      • Opposer, as the party moving for summary judgment in its favor on its Section 2(d) claim based on prior use, must establish that there is no genuine dispute as to (1) its priority of use and (2) that contemporaneous use of the HORNBLOWER & WEEKS mark by the parties, for their respective services, would be likely to cause confusion, mistake or to deceive consumers.
  • The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great American Music Show, Inc., 970 F. 2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
  • The evidence must be viewed in a light favorable to the non-moving party, and all reasonable inferences are to be drawn in the nonmovant's favor. Thus, in considering the propriety of summary judgment, the Board may not resolve issues of material fact against the non-moving party; it may only ascertain whether such issues are present.
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • The evidence must be viewed in a light favorable to the non-moving party, and all reasonable inferences are to be drawn in the nonmovant's favor. Thus, in considering the propriety of summary judgment, the Board may not resolve issues of material fact against the non-moving party; it may only ascertain whether such issues are present. See, e.g., Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); and Olde Tyme Foods, Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • Finally, in deciding a motion for summary judgment, the Board must view the evidence in the light most favorable to the nonmovant, and must draw all reasonable inferences from underlying facts in favor of the nonmovant. See Fed. R. Civ. P. 56(c), Celotex Corp., 477 U.S. at 322-323.
    • Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001).
      • In considering whether to grant or deny a motion for summary judgment, the Board may not resolve issues of material fact, but can only ascertain whether genuine disputes exist regarding such issues. Opryland USA, supra, and Lloyd's Food Products, supra.
    • KARSTEN MANUFACTURING CORPORATION v. EDITOY AG; EDITOY B.V.; PINGU B.V.; AND JOKER, INC., Opposition No. 91101408, (TTAB 2006).
      • In considering the propriety of summary judgment, the Board may not resolve issues of material fact; it may only ascertain whether such issues are present. See Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1993); and Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).
  • In reviewing a motion for summary judgment, the evidentiary record and all reasonable inferences to be drawn from the undisputed facts must be viewed in the light most favorable to the nonmoving party.
    • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007).
      • In reviewing a motion for summary judgment, the evidentiary record and all reasonable inferences to be drawn from the undisputed facts must be viewed in the light most favorable to the nonmoving party. Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
    • Interpayment Services Limited, and Travelex Global and Financial Services Ltd. v. Docters & Thiede, Opposition No. 119,852, (TTAB 2003).
      • The evidence must be viewed in a light favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant's favor. See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); and Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
    • Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc., Opposition No. 120,101, (TTAB 2002).
      • The evidence must be viewed in a light most favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant's favor. See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993), and Opryland USA, 23 USPQ2d at 1472-73.
    • Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., Opposition No. 121,784, (TTAB 2002).
      • Thus, all doubts as to whether any particular factual issues are genuinely in dispute must be resolved in the light most favorable to the non-moving party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ 1542 (Fed. Cir. 1992).
    • Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002).
      • Thus, all doubts as to whether any particular factual issues are genuinely in dispute must be resolved in the light most favorable to the non-moving party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ 1542 (Fed. Cir. 1992).
    • Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436, (TTAB 2006).
      • The evidence must be viewed in a light most favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant's favor. See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); and Opryland USA, supra.
    • KARSTEN MANUFACTURING CORPORATION v. EDITOY AG; EDITOY B.V.; PINGU B.V.; AND JOKER, INC., Opposition No. 91101408, (TTAB 2006).
      • The evidence of record and any inferences which may be drawn from the underlying undisputed facts must be viewed in a light most favorable to the non-moving party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
    • Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001).
      • In our consideration of opposer's request for judgment, the evidence must be viewed in a light most favorable to applicant as the non-movant, and all justifiable inferences are to be drawn in the non-movant's favor. Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA, supra.
  • While a listing of allegedly undisputed facts as a preamble to a motion for summary judgment is often proffered and is preferred by the TTAB, there is no requirement as to the form for setting forth undisputed facts.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007)
      • Further, respondent's motion is not procedurally defective, as petitioner claims, for failure to specify the material facts that are allegedly undisputed. While a listing of allegedly undisputed facts as a preamble to a motion for summary judgment is often proffered and is preferred by the Board, there is no requirement as to the form for setting forth undisputed facts.
  • Ordinarily, a party may not obtain summary judgment on an issue that has not been plead.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • Ordinarily, a party may not obtain summary judgment on an issue that has not been pleaded. See Fed. R. Civ. P. 56(a) and 56(b).
  • A motion for summary judgment is not premature if it was filed before discovery commenced. The party believing it needed discovery in order to respond to a motion for summary judgment must file a motion for discovery pursuant to Fed. R. Civ. P. 56(f).
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007)
      • We address first some procedural matters. Contrary to petitioner's contention, respondent's motion for summary judgment is not premature because it was filed before any discovery commenced. Had petitioner believed it needed discovery in order to respond to respondent's motion, it was incumbent upon petitioner to file a motion for discovery pursuant to Fed. R. Civ. P. 56(f).
  • If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it would have the burden of proof at trial, judgment as a matter of law may be entered in favor of the moving party.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it would have the burden of proof at trial, judgment as a matter of law may be entered in favor of the moving party. See Fed. R. Civ. P. 56(c); Celotex Corp., supra, 477 U.S. 322-23.
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it would have the burden of proof at trial, judgment as a matter of law may be entered in favor of the moving party. See Fed. R. Civ. P. 56(c), Celotex Corp., 477 U.S. at 322-323.
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it would have the burden of proof at trial, judgment as a matter of law may be entered in favor of the moving party. See Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. at 322-23.
  • Burden of Proof: A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to judgment as a matter of law.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548 (1986).
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007)
      • A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986), and Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987).
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007)
      • A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986), and Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987).
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548 (1986).
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • The party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact and that it is entitled to a judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986).
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548 (1986).
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987).
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986), and Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 4 USPQ2d 1793 (Fed. Cir. 1987).
    • Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436, (TTAB 2006).
      • The party moving for summary judgment has the initial burden of demonstrating the absence of any genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986); and Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987).
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • The party moving for summary judgment has the initial burden of demonstrating that there is no genuine issue of material fact remaining for trial and that it is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1987); Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987).
    • Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001).
      • Opposer, as the party moving for summary judgment, bears the initial burden of demonstrating the absence of any genuine issue of material fact and that it is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986) and Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987).
    • Callaway Vineyard & Winery v. Endsley Capital Group, Inc., Opposition No. 121,583, (TTAB 2002).
      • A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986).
    • Interpayment Services Limited, and Travelex Global and Financial Services Ltd. v. Docters & Thiede, Opposition No. 119,852, (TTAB 2003).
      • The burden is on the party moving for summary judgment to show the absence of any genuine issue of material fact, and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); and Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548 (1986).
    • Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc., Opposition No. 120,101, (TTAB 2002).
      • The party moving for summary judgment has the initial burden of demonstrating the absence of any genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986), and Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987).
    • KARSTEN MANUFACTURING CORPORATION v. EDITOY AG; EDITOY B.V.; PINGU B.V.; AND JOKER, INC., Opposition No. 91101408, (TTAB 2006).
      • On a motion for summary judgment, the burden is on the moving party to demonstrate the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law. Fed. R. Civ. P. 56(c). See also, Celotex Corp. v. Catrett, 477 U.S. 317 (1986).
    • Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., Opposition No. 121,784, (TTAB 2002).
      • In a motion for summary judgment, the moving party has the burden of establishing the absence of any genuine issue of material fact and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56.
  • Burden of Proof: When the moving party's motion is supported by evidence sufficient to indicate that there is no genuine issue of material fact, and that the moving party is entitled to judgment, the burden shifts to the nonmoving party to demonstrate the existence of specific genuinely-disputed facts that must be resolved at trial.
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007)
      • When the moving party's motion is supported by evidence sufficient to indicate that there is no genuine issue of material fact, and that the moving party is entitled to judgment, the burden shifts to the nonmoving party to demonstrate the existence of specific genuinely-disputed facts that must be resolved at trial.
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007)
      • When the moving party's motion is supported by evidence sufficient to indicate that there is no genuine issue of material fact, and that the moving party is entitled to judgment, the burden shifts to the nonmoving party to demonstrate the existence of specific genuinely-disputed facts that must be resolved at trial.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • When the moving party's motion is supported by evidence sufficient to indicate that there is no genuine issue of material fact, and that the moving party is entitled to judgment, the burden shifts to the nonmoving party to demonstrate the existence of specific genuinely disputed facts that must be resolved at trial.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • When the moving party's motion is supported by evidence sufficient to indicate that there is no genuine issue of material fact, and that the moving party is entitled to judgment, the burden shifts to the nonmoving party to demonstrate the existence of specific genuinely disputed facts that must be resolved at trial.
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • When the moving party's motion is supported by evidence sufficient to indicate that there is no genuine issue of material fact, and that the moving party is entitled to judgment, the burden shifts to the nonmoving party to demonstrate the existence of specific genuinely disputed facts that must be resolved at trial.
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • When the moving party's motion is supported by evidence sufficient to indicate that there is no genuine issue of material fact, and that the moving party is entitled to judgment, the burden shifts to the nonmoving party to demonstrate the existence of specific genuinely-disputed facts that must be resolved at trial.
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • When the moving party's motion is supported by evidence sufficient to indicate that there is no genuine issue of material fact, and that the moving party is entitled to judgment, the burden shifts to the nonmoving party to demonstrate the existence of specific genuinely disputed facts that must be resolved at trial.
    • Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001).
      • If opposer meets this burden, then applicant, to avoid entry of an adverse judgment, must present sufficient evidence to show an evidentiary conflict as to one or more material facts in issue. See Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
  • The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine issue of material fact for trial.
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007)
      • The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine issue of material fact for trial.
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007)
      • The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine issue of material fact for trial.
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • The nonmoving party may not rest on the mere allegations of its pleadings and arguments in response to the motion, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine issue of material fact for trial.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine issue of material fact for trial.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine issue of material fact for trial.
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine issue of material fact for trial.
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine issue of material fact for trial.
  • To establish the existence of disputed facts requiring trial, the nonmoving party must point to an evidentiary conflict created on the record at least by a counterstatement of facts set forth in detail in an affidavit by a knowledgeable affiant.
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007)
      • In general, to establish the existence of disputed facts requiring trial, the nonmoving party "must point to an evidentiary conflict created on the record at least by a counterstatement of facts set forth in detail in an affidavit by a knowledgeable affiant." Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 940, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990), citing Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 836, 221 USPQ 561, 564 (Fed. Cir. 1984).
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • In general, to establish the existence of disputed facts requiring trial, the nonmoving party "must point to an evidentiary conflict created on the record at least by a counterstatement of facts set forth in detail in an affidavit by a knowledgeable affiant." Octocom Systems Inc. v. Houston Computer Services Inc., 16 USPQ2d 1783, 1786 (Fed. Cir. 1990), citing Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 221 USPQ 561, 564 (Fed. Cir. 1984).
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • In general, to establish the existence of disputed facts requiring trial, the nonmoving party "must point to an evidentiary conflict created on the record at least by a counterstatement of facts set forth in detail in an affidavit by a knowledgeable affiant." Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 941, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990).
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • In general, to establish the existence of disputed facts requiring trial, the nonmoving party "must point to an evidentiary conflict created on the record at least by a counterstatement of facts set forth in detail in an affidavit by a knowledgeable affiant." Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990), citing Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 221 USPQ 561, 564 (Fed. Cir. 1984).
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007)
      • In general, to establish the existence of disputed facts requiring trial, the nonmoving party "must point to an evidentiary conflict created on the record at least by a counterstatement of facts set forth in detail in an affidavit by a knowledgeable affiant." Octocom Systems Inc., supra at 1786, citing Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 836, 221 USPQ 561, 564 (Fed. Cir. 1984).
  • A dispute as to a material fact is genuine only if a reasonable fact finder viewing the entire record could resolve the dispute in favor of the nonmoving party.
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007)
      • A dispute as to a material fact is genuine only if a reasonable fact finder viewing the entire record could resolve the dispute in favor of the nonmoving party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007)
      • A dispute as to a material fact is genuine only if a reasonable fact finder viewing the entire record could resolve the dispute in favor of the nonmoving party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • A dispute as to a material fact is genuine only if a reasonable fact finder viewing the entire record could resolve the dispute in favor of the nonmoving party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • A dispute as to a material fact is genuine only if a reasonable fact finder viewing the entire record could resolve the dispute in favor of the nonmoving party. See Olde Tyme Foods Inc. v. Roundy's Inc., 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
    • Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc., Opposition No. 120,101, (TTAB 2002).
      • A factual dispute is genuine, if, on the evidence of record, a reasonable finder of fact could resolve the matter in favor of the non-moving party. See Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992), and Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
    • Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436, (TTAB 2006).
      • A factual dispute is genuine, if, on the evidence of record, a reasonable finder of fact could resolve the matter in favor of the non-moving party. See Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); and Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
  • A genuine dispute with respect to a material fact exists if sufficient evidence is presented that a reasonable fact finder could decide the question in favor of the non-moving party.
    • Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., Opposition No. 121,784, (TTAB 2002).
      • A genuine dispute with respect to a material fact exists if sufficient evidence is presented that a reasonable fact finder could decide the question in favor of the non-moving party. See Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
    • Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002).
      • A genuine dispute with respect to a material fact exists if sufficient evidence is presented that a reasonable fact finder could decide the question in favor of the non-moving party. See Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
    • Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., Opposition No. 121,784, (TTAB 2002).
      • A genuine dispute with respect to a material fact exists if sufficient evidence is presented that a reasonable fact finder could decide the question in favor of the non-moving party. See Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
    • Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002).
      • A genuine dispute with respect to a material fact exists if sufficient evidence is presented that a reasonable fact finder could decide the question in favor of the non-moving party. See Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
  • In deciding a motion for summary judgment, the Board must view the evidence in the light most favorable to the nonmovant, and must draw all reasonable inferences from underlying facts in favor of the nonmovant.
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007)
      • Finally, in deciding a motion for summary judgment, the Board must view the evidence in the light most favorable to the nonmovant, and must draw all reasonable inferences from underlying facts in favor of the nonmovant. Id.
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007)
      • Finally, in deciding a motion for summary judgment, the Board must view the evidence in the light most favorable to the nonmovant, and must draw all reasonable inferences from underlying facts in favor of the nonmovant. Id.
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • In deciding a motion for summary judgment, the Board must view the evidence in the light most favorable to the nonmovant, and must draw all reasonable inferences from underlying facts in favor of the nonmovant. Id.
  • Burden of Proof: The moving party in each cross-motion for summary judgment motions has the burden as to its own motion.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • Therefore, although here there are cross-motions for summary judgment, the moving party in each of the pending motions has the burden as to its own motion.
  • The evidence in cross-motions for summary judgment must be viewed in a light favorable to the non-movant in each party's pending motion, and all justifiable inferences are to be drawn in the non-movant's favor.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • Additionally, the evidence must be viewed in a light favorable to the non-movant in each party's pending motion, and all justifiable inferences are to be drawn in the non-movant's favor. See Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1993).
  • The mere fact that cross-motions for summary judgment on an issue have been filed does not necessarily mean that there are no genuine issues of material fact, and that trial is unnecessary.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • The mere fact that cross-motions for summary judgment on an issue have been filed does not necessarily mean that there are no genuine issues of material fact, and that trial is unnecessary. See University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994); and TBMP §528.01 (2d ed. rev. 2004). See also Wright, Miller & Kane, 10A Fed. Prac. & Proc. Civ.3d §2720 (2006).
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • The mere fact that cross-motions for summary judgment have been filed does not necessarily mean that there are no genuine issues of material fact, and that a trial is unnecessary. See University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994).
  • Evidence submitted in connection with cross-motions for summary judgment is of record only for consideration of those motions. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial periods.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • FOOTNOTE 14 "The parties should note that the evidence submitted in connection with their motions for summary judgment is of record only for consideration of those motions. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial periods. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983); and American Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB 1981)."
  • Trademark Rule 2.127(e)(1) applies specifically to briefs for summary judgment motions.
    • Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., Opposition No. 121,784, (TTAB 2002).
      • Trademark Rule 2.127(e)(1), which applies specifically to briefs for summary judgment motions, parallels Trademark Rule 2.127(a) with respect to timeliness as follows: "…The Board may, in its discretion, consider a reply brief. A reply brief, if filed, shall be filed within 15 days from the date of service of the brief in response to the motion. The time for filing a reply brief will not be extended. No further papers in support of or in opposition to a motion will be considered by the Board."
  • A party may not file a motion for summary judgment under Trademark Rule 2.127(e)(1) until that party has made its initial disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction by the Board.
    • Qualcomm Incorporated v. FLO Corporation, Opposition No. 91182244, (TTAB 2010).
      • In Board inter partes proceedings commenced after November 1, 2007, a party may not file a motion for summary judgment under Trademark Rule 2.127(e)(1) until that party has made its initial disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction by the Board. See Trademark Rule 2.127(e)(1); Compagnie Gervais Danone v. Precision Formulations LLC, 89 USPQ2d 1251, 1255 (TTAB 2009); Notice of Final Rulemaking, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
  • The requirement that a party serve its initial disclosures prior to or concurrently with the filing of a motion for summary judgment cannot be waived.
    • Qualcomm Incorporated v. FLO Corporation, Opposition No. 91182244, (TTAB 2010).
      • Although applicant did not expressly object to the motion for summary judgment as prematurely filed, the requirement that a party serve its initial disclosures prior to or concurrently with the filing of a motion for summary judgment cannot be waived.
  • A party may not obtain summary judgment on an unpleaded claim.
    • Qualcomm Incorporated v. FLO Corporation, Opposition No. 91182244, (TTAB 2010).
      • It is also noted that opposer did not plead any of the grounds on which opposer seeks entry of summary judgment in the notice of opposition and has not sought leave of the Board to file an amended notice of opposition in which it pleads those grounds. A party may not obtain summary judgment on an unpleaded claim. See Fed. R. Civ. P. 56(a) and (b); TBMP Section 528.07(a) (2d ed. rev. 2004).
  • Case Finding: Summary judgment motion denied where filed prematurely.
    • Qualcomm Incorporated v. FLO Corporation, Opposition No. 91182244, (TTAB 2010).
      • Because the record herein indicates that opposer has not served its initial disclosures, the motion for summary judgment is premature and is denied on that basis.
  • Case Finding: Summary judgment on opposition granted in favor of applicant because opposer, in responding to motion, did not set out any evidence that it could produce at trial which could reasonably be expected to cause Board to come to a different conclusion.
    • Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001).
      • Under these circumstances, there is no genuine dispute that opposer adopted a mark that even applicant's president believed had been abandoned and which was viewed by applicant and relevant regulatory authorities as available for adoption; and applicant has produced no evidence, or raised any expectation that at trial it could produce evidence, that opposer is using the adopted HORNBLOWER & WEEKS mark to fraudulently trade on the reputation of others. Cf. Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545, 1550 (TTAB 1990) (Summary judgment on opposition granted in favor of applicant because opposer, in responding to motion, did not set out any evidence that it could produce at trial which could reasonably be expected to cause Board to come to a different conclusion.), aff'd 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
  • Case Finding: Opposer's motion for summary judgment and applicant's cross-motion for summary judgment are denied, without prejudice, for exceeding the page limitation.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008).
      • Accordingly, we find that both parties' briefs on their respective summary judgment motions violate the Board rule regarding page limitations for briefs on motions. In consequence thereof, opposer's motion for summary judgment and applicant's cross-motion for summary judgment are denied, without prejudice.
  • Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
    • University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008)
      • Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
  • The TTAB may not resolve issues of material fact; it may only ascertain whether issues of material fact exist.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • The Board may not resolve issues of material fact; it may only ascertain whether issues of material fact exist. See Lloyd's Food Products, 987 F.2d at 766, 25 USPQ2d at 2029; Olde Tyme Foods, 961 F.2d at 200, 22 USPQ2d at 1542.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • The Board may not resolve issues of material fact; it may only ascertain whether issues of material fact exist. See, Lloyd's Food Products, 987 F.2d at 766, 25 USPQ2d at 2029; Olde Tyme Foods, 961 F.2d at 200, 22 USPQ2d at 1542.
  • A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986).
    • University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008)
      • A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548 (1986).
  • The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party.
    • University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008)
      • The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
  • A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party. See Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 850, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 202, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party. See, Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
  • A motion for summary judgment is a pretrial device, intended to save the time and expense of a full trial when a party is able to demonstrate, prior to trial, that there is no genuine issue of material fact, and that it is entitled to judgment as a matter of law.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • A motion for summary judgment is a pretrial device, intended to save the time and expense of a full trial when a party is able to demonstrate, prior to trial, that there is no genuine issue of material fact, and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); and TBMP § 528.01 (2d ed. rev. 2004).
  • A party is entitled to summary judgment when it has demonstrated that there are no genuine issues as to any material facts, and that it is entitled to judgment as a matter of law.
    • Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2009)
      • A party is entitled to summary judgment when it has demonstrated that there are no genuine issues as to any material facts, and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c).
  • A party, however, is permitted to file a motion for summary judgment on an unpleaded issue concurrently with a motion to amend its pleading to include the unpleaded issue.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • A party, however, is permitted to file a motion for summary judgment on an unpleaded issue concurrently with a motion to amend its pleading to include the unpleaded issue. Societe des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241, 1242 n.4 (TTAB 1989) (motion to amend to add new ground, filed simultaneously with motion for summary judgment, granted and allegations in new ground deemed denied).
  • Although other courts would be the proper tribunals in which to litigate a cause of action for enforcement or breach of the contract here involved, that is not sufficient reason for the TTAB to decline to consider the agreement.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • "[A]lthough other courts would be the proper tribunals in which to litigate a cause of action for enforcement or breach of the contract here involved, that is not sufficient reason for the board to decline to consider the agreement …." Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 1324, 217 USPQ 641, 647 (Fed. Cir. 1983); see also M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 USPQ2d 1086, 1095 (TTAB 2001).
  • An agreement that clearly dictates the parties' rights with respect to the marks at issue can be dispositive in addressing the substance of an opposition.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • Applicant concedes as much, stating that "an agreement that clearly dictates the parties' rights with respect to the marks at issue can be dispositive in addressing the substance of an opposition."
  • As a general rule, the factual question of intent is particularly unsuited to disposition on summary judgment.
    • Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009)
      • As a general rule, the factual question of intent is particularly unsuited to disposition on summary judgment. See Copelands' Enterprises, Inc. v. CNV, Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991).
  • Because construction of a contract is a question of law, resolution of the meaning and interpretation of a contract is appropriate on summary judgment.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • Because construction of a contract is a question of law, resolution of the meaning and interpretation of a contract is appropriate on summary judgment. See, Interstate Gen. Gov't Contractors, Inc. v. Stone, 980 F.2d 1433, 1434 (Fed. Cir. 1992) ("Interpretation of a contract is a legal question …").
  • Case Finding: Applicant's declarations of outside counsel merely state opinions and do not provide specific facts in support of his position.
    • Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009)
      • Applicant's declarations of outside counsel merely state opinions and do not provide specific facts in support of his position.
  • Case Finding: As opposer further argues, to allow applicant to use a mark with the English word ENDOSCOPY, without any indication that the mark is used by the German company, would make the authorization for applicant to use the permitted mark KARL STORZ-ENDOSCOPY superfluous. Agreements may not be interpreted in such a manner.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • As opposer further argues, to allow applicant to use a mark with the English word ENDOSCOPY, without any indication that the mark is used by the German company, would make the authorization for applicant to use the permitted mark KARL STORZ-ENDOSCOPY superfluous. Agreements may not be interpreted in such a manner. See, Gardiner, Kamya & Associates, P.C. v. Jackson, 467 F.3d 1348, 1353 (Fed. Cir. 2006).
  • Case Finding: Having carefully considered the evidence and arguments submitted by the parties in connection with this motion for summary judgment, we find that Tucker has failed to demonstrate that there are any genuine issues of material fact as to priority and the likelihood of confusion between the marks, and that TxDOT therefore is entitled to judgment.
    • Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010)
      • Having carefully considered the evidence and arguments submitted by the parties in connection with this motion for summary judgment, we find that Tucker has failed to demonstrate that there are any genuine issues of material fact as to priority and the likelihood of confusion between the marks, and that TxDOT therefore is entitled to judgment. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
  • Case Finding: In the interest of judicial economy and given the need for a slight clarification of procedure in this area, we will, in this case, first entertain applicant's motion for leave to amend its answers despite the fact that the motion for leave to amend was filed subsequent to applicant's motion for summary judgment.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Applicant herein, however, did not follow the accepted procedure in Karsten nor did it argue that its failure to follow the Karsten approach should be excused. Nonetheless, while the Board could summarily deny applicant's motion for summary judgment on the ground it is based on an unpleaded issue and then consider on the merits only applicant's subsequently-filed motion to amend, such a course of action would be inefficient, as it could potentially lead to the approval of applicant's amended pleadings followed by the re-filing of applicant's motion for summary judgment. Accordingly, in the interest of judicial economy and given the need for a slight clarification of procedure in this area, we will, in this case, first entertain applicant's motion for leave to amend its answers despite the fact that the motion for leave to amend was filed subsequent to applicant's motion for summary judgment.
  • Case Finding: While opposer did not specifically move for summary judgment based directly on the Agreement, the parties' interpretation of the Agreement is part and parcel of their arguments regarding summary judgment, and is the issue on which each party focuses most extensively. The TTAB may therefore enter summary judgment, sua sponte, based directly on the Agreement itself, because applicant was on notice of the need to come forward with all evidence relevant to the Agreement.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • Furthermore, while opposer did not specifically move for summary judgment based directly on the Agreement, the parties' interpretation of the Agreement is part and parcel of their arguments regarding summary judgment, and is the issue on which each party focuses most extensively. The Board may therefore enter summary judgment, sua sponte, based directly on the Agreement itself, because applicant was on notice of the need to come forward with all evidence relevant to the Agreement. See, Celotex Corp., 477 U.S. at 325.
  • Evidence: Discussion of evidence necessary to support a bona fide intent to use.
    • Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009)
      • While the evidence necessary to support a bona fide intent to use may differ depending on the circumstances of each case, the evidence that applicant relies upon through its foreign registrations and Internet printouts does not demonstrate trademark use for the claimed goods. Further, these documents do not show that applicant has an intent to use the mark in the United States. The website printouts are not translated, but judging from the graphics, the mark seems to be used to identify car care packages or promotional material, not the vehicles themselves; and there is no evidence of a bona fide intent to use the mark in the United States as to the goods listed in the application. Any intention to use the mark may go to promotional services for dealerships, but not to "vehicles for transportation." Finally, because the arguments of counsel are not supported by any evidence of record related to applicant's bona fide intent, they are insufficient to raise a genuine issue of material fact. See, e.g., Hornblower & Weeks Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1736 (TTAB 2001).
  • Federal Rule of Civil Procedure 56 requires a nonmoving party to go beyond the pleadings and to set out specific facts showing a genuine issue for trial.
    • Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009)
      • Federal Rule of Civil Procedure 56 requires a nonmoving party to go beyond the pleadings and to "set out specific facts showing a genuine issue for trial." Fed. R. Civ. P. 56(e)(2); Celotex Corp. v. Catrett, supra at 324.
  • If the Agreement bars applicant's use of Applicant's Mark, then applicant is not entitled to registration.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • If the Agreement bars applicant's use of Applicant's Mark, then applicant is not entitled to registration. Vaughn Russell, 47 USPQ2d at 1637.
  • In a motion for summary judgment, the moving party has the burden of establishing the absence of any genuine issues of material fact and that it is entitled to judgment as a matter of law.
    • Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009)
      • In a motion for summary judgment, the moving party has the burden of establishing the absence of any genuine issues of material fact and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c).
  • In considering the propriety of summary judgment, all evidence must be viewed in a light favorable to the nonmovant, and all justifiable inferences are to be drawn in the nonmovant's favor. The TTAB may not resolve issues of material fact; it may only ascertain whether such issues are present.
    • Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009)
      • In considering the propriety of summary judgment, all evidence must be viewed in a light favorable to the nonmovant, and all justifiable inferences are to be drawn in the nonmovant's favor. The Board may not resolve issues of material fact; it may only ascertain whether such issues are present. See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
  • In considering the propriety of summary judgment, the TTAB may not resolve issues of material fact against the non-moving party; it may only ascertain whether such issues are present.
    • Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010)
      • In considering the propriety of summary judgment, the Board may not resolve issues of material fact against the non-moving party; it may only ascertain whether such issues are present. See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); and Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1993.
  • Opposer, as the movant seeking summary judgment, bears the initial burden of demonstrating the absence of any genuine issue of material fact.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • Opposer, as the movant seeking summary judgment, bears the initial burden of demonstrating the absence of any genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 1563, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987).
  • So long as a party that has moved for summary judgment on an unpleaded issue moves to amend its pleading prior to the TTAB's consideration of the motion for summary judgment, the motion to amend would correct the problem presented by the summary judgment motion.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • We note that the Karsten decision stated, in regard to the timing of the motion to amend, "Here, opposer has corrected the problem of seeking summary judgment on an unpleaded ground by moving to amend its pleading prior to the Board acting on the initial motion for summary judgment." Karsten, 79 USPQ2d at 1786. This statement may be read to suggest that, so long as a party that has moved for summary judgment on an unpleaded issue moves to amend its pleading prior to the Board's consideration of the motion for summary judgment, the motion to amend would correct the problem presented by the summary judgment motion.
  • Summary judgment is appropriate where there are no genuine issues of material fact in dispute, thus allowing the case to be resolved as a matter of law.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • Summary judgment is appropriate where there are no genuine issues of material fact in dispute, thus allowing the case to be resolved as a matter of law. Fed. R. Civ. P. 56(c).
  • Summary judgment is not appropriate on unpleaded issues.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • FOOTNOTE 3 "Opposer also seeks summary judgment on an unpleaded claim that "Applicant does not and did not at the time of its Application have a bona fide intention to use the STORZ THE WORLD OF ENDOSCOPY mark in commerce on or in connection with the identified goods or services …." Although opposer informally seeks leave to amend its notice of opposition to include this claim, it does so only through a single sentence in its reply brief, and applicant has therefore not had the opportunity to respond to this "motion." Accordingly, this unpleaded claim will not be considered. Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1772 (TTAB 1994) (summary judgment is not appropriate on unpleaded issue)."
  • Summary judgment is only appropriate where there are no genuine issues of material fact in dispute, thus allowing the case to be resolved as a matter of law.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • Summary judgment is only appropriate where there are no genuine issues of material fact in dispute, thus allowing the case to be resolved as a matter of law. Fed. R. Civ. P. 56(c).
  • The absence of any documentary evidence regarding an applicant's bona fide intention to use a mark in commerce is sufficient to prove that an applicant lacks such intention unless other facts are presented which adequately explain or outweigh applicant's failure to provide such documentary evidence.
    • Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009)
      • The Board has held, however, that the absence of any documentary evidence regarding an applicant's bona fide intention to use a mark in commerce is sufficient to prove that an applicant lacks such intention as required by Section 1(b) of the Trademark Act, unless other facts are presented which adequately explain or outweigh applicant's failure to provide such documentary evidence. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993).
  • The burden is on the party moving for summary judgment to demonstrate the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law.
    • Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010)
      • The burden is on the party moving for summary judgment to demonstrate the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law. Fed. R. Civ. P. 56(c). See also Celotex Corp. v. Catrett, 477 U.S. 317 (1986).
  • The evidence must be viewed in a light favorable to the nonmoving party, and all justifiable inferences are to be drawn in the nonmovant's favor.
    • Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2009)
      • The evidence must be viewed in a light favorable to the nonmoving party, and all justifiable inferences are to be drawn in the nonmovant's favor. Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993).
  • The evidence of record and any inferences which may be drawn from the underlying undisputed facts, must be viewed in the light most favorable to the non-moving party.
    • Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010)
      • The evidence of record and any inferences which may be drawn from the underlying undisputed facts, must be viewed in the light most favorable to the non-moving party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
  • The evidence on summary judgment must be viewed in a light most favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant's favor.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • The evidence on summary judgment must be viewed in a light most favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant's favor. Lloyd's Food Products, Inc. v. Eli's, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra.
  • The evidence on summary judgment must be viewed in a light most favorable to the non-movant, in this case applicant, and all justifiable inferences are to be drawn in applicant's favor.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • The evidence on summary judgment must be viewed in a light most favorable to the non-movant, in this case applicant, and all justifiable inferences are to be drawn in applicant's favor. Lloyd's Food Products, Inc. v. Eli's, Inc., 987 F.2d 766, 767, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra.
  • The fact that we have identified certain genuine issues of material fact as a sufficient basis for denying opposer's motion for summary judgment should not be construed as a finding that such issues necessarily are the only issues that remain for trial. Also, the parties should note that the evidence submitted in connection with the motion for summary judgment is of record only for consideration of the motion. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • FOOTNOTE 5 "The fact that we have identified certain genuine issues of material fact as a sufficient basis for denying opposer's motion for summary judgment should not be construed as a finding that such issues necessarily are the only issues that remain for trial. Also, the parties should note that the evidence submitted in connection with the motion for summary judgment is of record only for consideration of the motion. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period. See Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993)."
  • The mere fact that cross-motions for summary judgment have been filed does not necessarily mean that there are no genuine issues of material fact, or that a trial is unnecessary.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • The mere fact that cross-motions for summary judgment have been filed does not necessarily mean that there are no genuine issues of material fact, or that a trial is unnecessary. See, University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994).
  • The parties should note that all evidence submitted in support of and in opposition to the motion for summary judgment is of record only for consideration of said motion. Any such evidence to be considered in final hearing must be properly introduced in evidence during the appropriate trial periods.
    • University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008)
      • The parties should note that all evidence submitted in support of and in opposition to the motion for summary judgment is of record only for consideration of said motion. Any such evidence to be considered in final hearing must be properly introduced in evidence during the appropriate trial periods. See Levi Strauss & Co. v. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); and Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983).
  • The party seeking summary judgment bears the initial burden of demonstrating the absence of any genuine issue of material fact.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • The party seeking summary judgment bears the initial burden of demonstrating the absence of any genuine issue of material fact. See, Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987).
  • The plain language of Rule 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial. In such a situation, there can be no genuine issue as to any material fact, since a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial.
    • Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010)
      • "As stated by the Supreme Court in Celotex: ""The plain language of Rule 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial. In such a situation, there can be "no genuine issue as to any material fact," since a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial."" Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986)."
  • The statutory claim under Section 2(d) is likelihood of confusion and the law is clear that proof of actual confusion is not necessary to find likelihood of confusion
    • Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010)
      • FOOTNOTE 6 "The statutory claim under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), is likelihood of confusion and the law is clear that proof of actual confusion is not necessary to find likelihood of confusion. Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). Of course, persuasive evidence of actual confusion is also evidence of likelihood of confusion.
  • The TTAB has long recognized that summary judgment is not appropriate on an unpleaded issue.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Indeed, the Board has long recognized that summary judgment is not appropriate on an unpleaded issue. See TBMP § 528.07 (2nd ed. rev. 2004).
  • The TTAB may not resolve issues of material fact, but can only ascertain whether genuine disputes exist regarding such issues.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • The Board may not resolve issues of material fact, but can only ascertain whether genuine disputes exist regarding such issues.
  • The TTAB views the evidence in a light most favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant's favor.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • The Board views the evidence in a light most favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant's favor. Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA, supra. 2
  • The TTAB will not hesitate to deny any motion for summary judgment on an unpleaded claim or defense unless the motion for summary judgment is accompanied by an appropriate motion to amend or is withdrawn and refiled with such a motion to amend.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • However, in future cases, the Board will not hesitate to deny any motion for summary judgment on an unpleaded claim or defense unless the motion for summary judgment is accompanied by an appropriate motion to amend or is withdrawn and refiled with such a motion to amend.
  • A defendant may not obtain summary judgment on an unasserted defense.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • We recognize that a defendant may not obtain summary judgment on an unasserted defense. Fed. R. Civ. P. 56(a) and 56(b); see also Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 961 (TTAB 1986).
  • Where a party has filed a motion for summary judgment on an unpleaded issue and subsequently files a motion to amend its pleading to add the unpleaded issue only after the non-moving party has responded by noting that a party may not obtain summary judgment on an unpleaded claim or defense, the TTAB has found that an acceptable cure for the procedural defect would be to withdraw the motion for summary judgment and refile it on a date subsequent to the filing of the moving party's motion to amend its pleading.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • But, in instances where, as here, a party has filed a motion for summary judgment on an unpleaded issue and subsequently files a motion to amend its pleading to add the unpleaded issue only after the non-moving party has responded by noting that a party may not obtain summary judgment on an unpleaded claim or defense, the Board has found that an acceptable cure for the procedural defect would be to withdraw the motion for summary judgment and refile it on a date subsequent to the filing of the moving party's motion to amend its pleading. See Karsten Manufacturing Corp. v. Editoy AG, 79 USPQ2d 1783, 1785-86 (TTAB 2006).
  • Case Finding: TxDOT is entitled to judgment.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • Having carefully considered the evidence and arguments submitted by the parties in connection with this motion for summary judgment, we find that Tucker has failed to demonstrate that there are any genuine issues of material fact as to priority and the likelihood of confusion between the marks, and that TxDOT therefore is entitled to judgment.See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
  • An opposer may rely on prior intrastate use of its mark.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • Tucker also argues that TxDOT has not made significant use of its mark outside of Texas. Accepting this assertion as true for the sake of deciding the pending motion, it does not aid Tucker, as prior significant use in Texas, a use not in genuine dispute, is sufficient. See First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (an opposer may rely on prior intrastate use of its mark), and National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1429 (Fed. Cir. 1991) (a petitioner may rely on prior intrastate use of its mark).
  • Accordingly, as unpleaded issues, no consideration has been given to alternative requests.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • As a second alternative in the same footnote, petitioner asked that the registration be determined to be void ab initio because respondent's mark was not in use in commerce as of the filing date of the Statement of Use. However, petitioner had not asserted these allegations as grounds for cancellation in any pleading. Accordingly, as unpleaded issues, no consideration has been given to these alternative requests.7 See Fed. R. Civ. P. 56(a); and TBMP §528.07(a) (2d ed. rev. 2004).
  • Questions of intent are typically unsuited to resolution by summary judgment (or other pretrial motions).
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • We note, too, that questions of intent are typically unsuited to resolution by summary judgment (or other pretrial motions). See, e.g., Copelands' Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1299 Fed. Cir. 1991).
  • Submission of status and title copies of pleaded registrations may establish standing to bring an action.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • As TxDOT has submitted status and title copies of its pleaded registrations, there is no genuine issue that TxDOT has established its standing to bring these actions. King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2008).
  • The standard for finding intent to deceive is stricter than the standard for negligence or gross negligence.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • The standard for finding intent to deceive is stricter than the standard for negligence or gross negligence.5 See Bose, 91 USPQ2d at 1941.
  • The TTAB may not resolve issues of material fact; it may only ascertain whether issues of material fact exist.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • The Board may not resolve issues of material fact; it may only ascertain whether issues of material fact exist. See Lloyd's Food Products, 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1542.
  • The suspension of an application, pending final disposition of the involved application also evidences standing.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • Moreover, the suspension of TxDOT's application, pending final disposition of the involved Tucker application also evidences TxDOT's standing.
  • Because respondent's motion is based on materials from outside the pleadings, it is in fact a motion for summary judgment.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • Because respondent's motion is based on materials from outside the pleadings, it is in fact a motion for summary judgment. TBMP § 528.04 (2d ed. rev. 2004).
  • The TTAB may not resolve issues of material fact, but can only ascertain whether genuine disputes exist regarding such issues.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • The Board may not resolve issues of material fact, but can only ascertain whether genuine disputes exist regarding such issues.
  • In certain situations, the filing of a motion for summary judgment may serve as good cause for not responding to discovery requests.
    • Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010)
      • In certain situations, the filing of a motion for summary judgment may serve as good cause for not responding to discovery requests. It is our view, however, that in the circumstances of this case, the pendency of espondent's motion for summary judgment does not constitute good cause for not complying with the Board's order granting discovery sanctions. See Giant Food, Inc., v. Standard Terry Mills, Inc., 229 USPQ at 962 (the Board found that the filing of applicant's motion for summary judgment was a "convenient afterthought to applicant's counsel" and did not constitute good cause for not timely responding to opposer's outstanding discovery requests).
  • There is no fraud if a false representation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • There is no fraud if a false representation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive. Bose, 91 USPQ2d at 1940.
  • Case Finding: Opposer is entitled to summary judgment because the permanent injunction prohibits applicant from using or registering his mark.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • In view thereof, opposer is entitled to summary judgment in its favor as a matter of law because the terms of the permanent injunction prohibit applicant from using or registering his FORADODGE mark for any goods or services. Accordingly, judgment is hereby entered against applicant, regi stration to applicant is refused, and the opposition is sustained.
  • A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party. See Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
  • While the parties have not yet exchanged initial disclosures, because the basis for respondent's motion is res judicata, the motion may be timely.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • While the parties have not yet exchanged initial disclosures, because the basis for respondent's motion is res judicata, the motion is timely under Trademark Rule 2.127(e)(1).
  • All doubts as to whether any particular factual issues are genuinely in dispute must be resolved in the light most favorable to the non-moving party.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • Thus, all doubts as to whether any particular factual issues are genuinely in dispute must be resolved in the light most favorable to the non-moving party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
  • All doubts as to whether any particular factual issues are genuinely in dispute must be resolved in the light most favorable to the non-moving party.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • Thus, all doubts as to whether any particular factual issues are genuinely in dispute must be resolved in the light most favorable to the non-moving party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
  • All doubts as to whether any particular factual issues are genuinely in dispute must be resolved in the light most favorable to the non-moving party.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • Thus, all doubts as to whether any particular factual issues are genuinely in dispute must be resolved in the light most favorable to the non-moving party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
  • The parties should note that evidence submitted in connection with applicant's motion for judgment is of record only for consideration of that motion.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • FOOTNOTE 7 "The parties should note that evidence submitted in connection with applicant's motion for judgment is of record only for consideration of that motion. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983); American Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB 1981)."
  • Still open is the question whether a submission to the PTO with reckless disregard of its truth or falsity would satisfy the intent to deceive requirement.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • FOOTNOTE 5 "Still open is the question whether a submission to the PTO with reckless disregard of its truth or falsity would satisfy the intent to deceive requirement. Bose, 91 USPQ2d at 1942, fn. 2."
  • Summary judgment is only appropriate where there are no genuine issues of material fact in dispute, thus allowing the case to be resolved as a matter of law.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • Summary judgment is only appropriate where there are no genuine issues of material fact in dispute, thus allowing the case to be resolved as a matter of law. Fed. R. Civ. P. 56(c).
  • The TTAB's decision granting partial summary judgment is interlocutory in nature and may not be appealed until a final decision is rendered in the proceeding.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • FOOTNOTE 5 "The parties are reminded that the Board's decision granting partial summary judgment is interlocutory in nature and may not be appealed until a final decision is rendered in the proceeding. See Copeland's Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 12 USPQ2d 1562 (Fed. Cir. 1989)."
  • A trademark is obtained fraudulently only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the USPTO.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • "[A] trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO." Bose, 91 USPQ2d at 1941. See also Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 48, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986).
  • The evidence on summary judgment must be viewed in a light most favorable to the non-movant and all justifiable inferences are to be drawn in the non-movant's favor.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • The evidence on summary judgment must be viewed in a light most favorable to the non-movant and all justifiable inferences are to be drawn in the non-movant's favor. See Lloyd's Food Products, Inc. v. Eli's, Inc., 987 F.2d 766, 767, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993).
  • The evidence on summary judgment must be viewed in a light most favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant's favor.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • The evidence on summary judgment must be viewed in a light most favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant's favor. Lloyd's Food Products, Inc. v. Eli's, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472.
  • The evidence of record and any inferences which may be drawn from the underlying undisputed facts, must be viewed in the light most favorable to the non-moving party.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • The evidence of record and any inferences which may be drawn from the underlying undisputed facts, must be viewed in the light most favorable to the non-moving party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
  • A genuine dispute with respect to a material fact exists if sufficient evidence is presented that a reasonable fact finder could decide the question in favor of the non-moving party.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • A genuine dispute with respect to a material fact exists if sufficient evidence is presented that a reasonable fact finder could decide the question in favor of the non-moving party. See Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
  • A genuine dispute with respect to a material fact exists if sufficient evidence is presented that a reasonable fact finder could decide the question in favor of the non-moving party.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • A genuine dispute with respect to a material fact exists if sufficient evidence is presented that a reasonable fact finder could decide the question in favor of the non-moving party. See Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
  • A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law. Fed. R. Civ. P. 56(c); and Celotex Corp. v. Catrett, 477 U.S. 317 (1986).
  • The party seeking summary judgment bears the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to a judgment under the applicable law.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • The party seeking summary judgment bears the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to a judgment under the applicable law. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987).
  • In considering the propriety of summary judgment, the TTAB may not resolve issues of material fact against the non-moving party; it may only ascertain whether such issues are present.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • In considering the propriety of summary judgment, the Board may not resolve issues of material fact against the non-moving party; it may only ascertain whether such issues are present. See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); and Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1993.
  • Deceptive intent may be established by direct evidence or may be inferred from indirect or circumstantial evidence, but no matter the type of evidence, it must be clear and convincing.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • Deceptive intent may be established by direct evidence or may be inferred from indirect or circumstantial evidence, but no matter the type of evidence, it must be clear and convincing. Id., citing Star Scientific, Inc. V. R.J. Reynolds Tobacco Co., 537 F3d. 1357, 1366, 88 USPQ2d 1001, 1007 (Fed. Cir. 2008).
  • The burden is on the party moving for summary judgment to demonstrate the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • The burden is on the party moving for summary judgment to demonstrate the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law. Fed. R. Civ. P. 56(c). See also Celotex Corp. v. Catrett, 477 U.S. 317 (1986).
  • On a motion for summary judgment, the moving party has the burden of establishing the absence of any genuine issue of material fact and that it is entitled to judgment as a matter of law.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • On a motion for summary judgment, the moving party has the burden of establishing the absence of any genuine issue of material fact and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56.
  • In a motion for summary judgment, the moving party has the burden of establishing the absence of any genuine issue of material fact and that it is entitled to judgment as a matter of law.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • In a motion for summary judgment, the moving party has the burden of establishing the absence of any genuine issue of material fact and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c).
  • Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving such cases to be resolved as a matter of law.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving such cases to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
  • De Minimus evidence of actual confusion may not conclusively establish actual confusion and may be unnecessary to a conclusion that there is no genuine issue regarding likelihood of confusion.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • Nothing Tucker has pointed to in his arguments against the motion give rise to a genuine issue of material fact regarding a likelihood of confusion. Tucker argues that the evidence of actual confusion24 is de minimis. We agree that the evidence may not conclusively establish actual confusion. Cf. Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993) ("In this case, the Flachs were not actually confused; they only 'wondered' at a possible relationship."). However, such evidence is unnecessary to our conclusion that there is no genuine issue regarding likelihood of confusion.
  • Where priority and likelihood of confusion are established as to any of the goods identified in an opposed class, the opposition to registration of the mark as to the entire class will be sustained.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • FOOTNOTE 5 "Although Danone's motion does not seek summary judgment against Precision's "medicated skin creams" in International Class 5, we note that all of the goods in International Class 5 were opposed in the notice of opposition. Where priority and likelihood of confusion are established as to any of the goods identified in an opposed class, the opposition to registration of the mark as to the entire class will be sustained. See Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004) and cases cited therein."
  • The party opposing the motion must point to an evidentiary conflict created on the record at least by a counter statement of a fact or facts set forth in detail in an affidavit by a knowledgeable affiant.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • The party opposing the motion must point to an evidentiary conflict created on the record at least by a counter statement of a fact or facts set forth in detail in an affidavit by a knowledgeable affiant. Mere denials or conclusory statements are insufficient. Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1795 (Fed. Cir. 1987).
  • It is clear that under the holding of Bose that intent must be separately proved; and on a motion for summary judgment it must be shown that there is no genuine issue about the existence of intent to deceive the Office.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • It is clear that under the holding of Bose that intent must be separately proved; and on a motion for summary judgment it must be shown that there is no genuine issue about the existence of intent to deceive the Office.
  • Priority is not in issue given submission of district court reports and recommendations and rulings, and certified copies of registrations showing that such registrations are valid and subsisting and are owned by opposer.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • In addition to the district court's reports and recommendations and rulings, and the decision of the Sixth Circuit, opposer has introduced with its motion for summary judgment certified copies of its pleaded DODGE registrations showing that such registrations are valid and subsisting and are owned by opposer. Consequently, for purposes of this motion for summary judgment, priority is not in issue with respect to such marks. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
  • Admission conclusively establishes the matter that is the subject of the request for admission; subsequent argument to the contrary in response to a motion for summary judgment insufficient to raise a genuine issue of material fact.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • Tucker has admitted that TxDOT has prior use of the mark (Request for Admissions (hereinafter "R/A") No. 72).19 Therefore, priority in TxDOT is established, notwithstanding the previously-referenced argument by Tucker asserting that TxDOT's evidence fails to show opposer's actual date of its first use of the mark on clothing. Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1036 n.8 (TTAB 2007) (admission conclusively establishes the matter that is the subject of the request for admission; subsequent argument to the contrary in response to a motion for summary judgment insufficient to raise a genuine issue of material fact.)
  • As petitioner's motion for summary judgment was only brought on the fraud claim and not on the abandonment claim, the existence of a genuine issue of material fact as to intent precludes granting petitioner judgment on the fraud claim.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • As to the falsity of the statements in question, it appears that applicant may not, in fact, be using the mark sufficiently to maintain a registration.9 However, petitioner's motion for summary judgment was only brought on the fraud claim and not on the abandonment claim and the existence of a genuine issue of material fact as to intent precludes granting petitioner judgment on the fraud claim.
  • Though applicant's response is admittedly late; in view of the importance of ensuring adequate consideration of the ramifications of the disposition of the civil action, the TTAB may choose to consider both parties' submissions on that subject.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • Finally, applicant's response is admittedly late. However, in view of the importance of ensuring that we adequately consider the ramifications of the disposition of the civil action, we have chosen to consider both parties' submissions on that subject.3
        FOOTNOTE 3 "Regarding our consideration of applicant's late brief, we note that, as discussed in more detail later in this order, the court's decision is binding on the Board. Thus, because both parties were before the court, there is no prejudice to opposer. This situation, as with situations presenting claim and issue preclusion, is distinguishable from other cases in which briefs are filed late and not considered by the Board because of their tardiness. See Trademark Rules 2.127(a) and 2.127(e); and TBMP §502.02(b) (2d ed. rev. 2004)."
  • The timing of alternative requests first presented in petitioner's reply on its summary judgment motion effectively deprived respondent from any opportunity to respond thereto, because the TTAB does not permit the filing of surreplies on motions.
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • FOOTNOTE 7 "Moreover, the timing of such alternative requests, i.e., being first presented in petitioner's reply on its summary judgment motion, effectively deprived respondent from any opportunity to respond thereto, because the Board does not permit the filing of surreplies on motions. 37 C.F.R. § 2.127(e)(1)."
  • The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine issue of material fact for trial.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine issue of material fact for trial.
  • A motion for summary judgment is a pretrial device, intended to save the time and expense of a full trial when a party is able to demonstrate, prior to trial, that there is no genuine issue of material fact, and that it is entitled to judgment as a matter of law.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • A motion for summary judgment is a pretrial device, intended to save the time and expense of a full trial when a party is able to demonstrate, prior to trial, that there is no genuine issue of material fact, and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548 (1986); Franpovi SA v. Wessin, 89 USPQ2d 1637, 1638 (TTAB 2009).
  • In inter partes proceedings commenced after November 1, 2007, a party may not file a motion for summary judgment under Trademark Rule 2.127(e)(1) until the party has made its initial disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction by the TTAB.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • In inter partes proceedings commenced after November 1, 2007, a party may not file a motion for summary judgment under Trademark Rule 2.127(e)(1) until the party has made its initial disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction by the Board.7
  • The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
  • When the moving party's motion is supported by evidence sufficient to indicate that there is no genuine issue of material fact, and that it is entitled to judgment, the burden shifts to the nonmoving party to demonstrate the existence of specific genuinely disputed facts that must be resolved at trial.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • When the moving party's motion is supported by evidence sufficient to indicate that there is no genuine issue of material fact, and that it is entitled to judgment, the burden shifts to the nonmoving party to demonstrate the existence of specific genuinely disputed facts that must be resolved at trial.
  • The purpose of summary judgment is one of judicial economy, that is, to save the time and expense of a useless trial where no genuine issue of material fact remains and more evidence than is already available in connection with the summary judgment motion could not reasonably be expected to change the result.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • The purpose of summary judgment is one of judicial economy, that is, to save the time and expense of a useless trial where no genuine issue of material fact remains and more evidence than is already available in connection with the summary judgment motion could not reasonably be expected to change the result. Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741, 743 (Fed. Cir. 1984).
  • The plain language of Rule 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • As stated by the Supreme Court in Celotex: "The plain language of Rule 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial. In such a situation, there can be "no genuine issue as to any material fact," since a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial." Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986).
  • Case Finding: Rather than providing justification for the failure to comply with the Board's order, the filing of respondent's clearly meritless motion for summary judgment, one day before respondent's discovery responses were due, can only be viewed as an effort to further obstruct petitioner's rights to obtain discovery.
    • Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010)
      • Rather than providing justification for the failure to comply with the Board's order, the filing of respondent's clearly meritless motion for summary judgment just one day before respondent's discovery responses were due can only be viewed as an effort to further obstruct petitioner's rights to obtain discovery under the Board's rules, the Board's order compelling discovery, and the Board's order granting discovery sanctions.
  • Summary judgment is appropriate when there is no genuine issue of material fact in dispute and the moving party is entitled to judgment as a matter of law. A genuine dispute with respect to a material fact exists if sufficient evidence is presented that a reasonable fact finder could decide the question in favor of the nonmoving party.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • Summary judgment is appropriate when there is no genuine issue of material fact in dispute and the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c). A genuine dispute with respect to a material fact exists if sufficient evidence is presented that a reasonable fact finder could decide the question in favor of the nonmoving party. See Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
  • Because a party's initial disclosures are not filed with the TTAB if a party moves for summary judgment prior to the deadline for making initial disclosures it should indicate in its motion that the disclosures have been made, or are not required because the motion seeks judgment on claim or issue preclusion, or on a jurisdictional issue.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • FOOTNOTE 7 "Moreover, because a party's initial disclosures are not filed with the Board, if a party moves for summary judgment prior to the deadline for making initial disclosures it should indicate in its motion that the disclosures have been made, or are not required because the motion seeks judgment on claim or issue preclusion, or on a jurisdictional issue."
  • A party moving for summary judgment in its favor on a priority and likelihood of confusion claim must establish that there is no genuine dispute that (1) it has standing to maintain the proceeding; (2) it is the prior user of its pleaded mark or marks or the owner of a valid and subsisting federally registered mark; and (3) contemporaneous use of the parties' respective marks in connection with their respective goods or services would be likely to cause confusion, mistake or to deceive consumers.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • A party moving for summary judgment in its favor on a priority and likelihood of confusion claim must establish that there is no genuine dispute that (1) it has standing to maintain the proceeding; (2) it is the prior user of its pleaded mark or marks or the owner of a valid and subsisting federally registered mark; and (3) contemporaneous use of the parties' respective marks in connection with their respective goods or services would be likely to cause confusion, mistake or to deceive consumers. See Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733 (TTAB 2001); see also, King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
  • Evidence submitted in connection with a motion for summary judgment is of record only for consideration of that motion. Any such evidence to be considered at final hearing must be properly introduced in evidence during the appropriate trial period or the parties may seek Accelerated Case Resolution by stipulating, inter alia, to facts on which they agree and to procedures that will allow the parties to make their presentations on the merits of the remaining issues without the need for a formal trial procedure.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • FOOTNOTE 6 "The parties should note that evidence submitted in support of or in opposition to a motion for summary judgment is of record only for consideration of that motion. Any such evidence to be considered at final hearing must be properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
        In the alternative, the parties may seek Accelerated Case Resolution (ACR) by stipulating, inter alia, to facts on which they agree and to procedures that will allow the parties to make their presentations on the merits of the remaining issues without the need for a formal trial procedure. See Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511 (TTAB 2009)."
  • When an applicant amends its application to the Supplemental Register in response to a descriptiveness refusal, if the examining attorney determines that the designation is a generic name for the applicant's goods, the statutory basis for such a refusal is Section 23.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • Upon applicant's amendment to the Supplemental Register, the examining attorney refused registration under Section 23 of the Trademark Act, 15 U.S.C. § 1091, on the ground that applicant's proposed mark is generic and, as such, unregistrable. Trademark Manual of Examining Procedure ("TMEP") §§815.04 and 1209.02(a)(i) (6th ed. 2009) (when an applicant amends its application to the Supplemental Register in response to a Section 2(e)(1) descriptiveness refusal, if the examining attorney determines that the designation is a generic name for the applicant's goods, the statutory basis for such a refusal is Section 23 of the Trademark Act). See also In re Controls Corp. of America, 46 USPQ2d 1308, 1309 n. 2 (TTAB 1998).
Qualcomm Incorporated v. FLO Corporation, Opposition No. 91182244, (TTAB 2010) Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010) American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010) Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010) The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010) Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010) Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010) DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010) Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010) Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009) Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2009) Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009) Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009) Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008) University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008) Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008) Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008) Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008) Apple Computer v.  TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007) Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007) Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007) Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007) Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007) Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007) Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007) Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007) Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007) Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436, (TTAB 2006) Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006) KARSTEN MANUFACTURING CORPORATION v. EDITOY AG; EDITOY B.V.; PINGU B.V.; AND JOKER, INC., Opposition No. 91101408, (TTAB 2006) Interpayment Services Limited, and Travelex Global and Financial Services Ltd. v. Docters & Thiede, Opposition No. 119,852, (TTAB 2003) Callaway Vineyard & Winery v. Endsley Capital Group, Inc., Opposition No. 121,583, (TTAB 2002) Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc., Opposition No. 120,101, (TTAB 2002) Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002) Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., Opposition No. 121,784, (TTAB 2002) Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001) Grand Total
Compagnie Gervais Danone v. Precision Formulations LLC, 89 USPQ2d 1251, 1255 (TTAB 2009) 1
Franpovi SA v. Wessin, 89 USPQ2d 1637 (TTAB 2009) 1
Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511 (TTAB 2009) 1
Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008) 1
L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008) 2
Star Scientific, Inc. V. R.J. Reynolds Tobacco Co., 537 F3d. 1357, 88 USPQ2d 1001 (Fed. Cir. 2008) 1
Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032 (TTAB 2007) 1
First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375 (Fed. Cir. 2007) 1
Karsten Manufacturing Corp. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006) 1
Gardiner, Kamya & Associates, P.C. v. Jackson, 467 F.3d 1348 (Fed. Cir. 2006) 1
Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB 2004) 1
Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733 (TTAB 2001) 3
M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001) 1
Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998) 1
Vaughn Russell Candy Co. v. Coolies in Bloom Inc., 47 USPQ2d 1635 (TTAB 1998) 1
Levi Strauss & Co. v. R. Josephs Sportwear Inc., 36 USPQ2d 1328 (TTAB 1994) 1
Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994) 1
University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994) 3
Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993) 1
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993) 15
Levi Strauss & Co. v. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993) 4
Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992) 21
Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992) 25
Interstate Gen. Gov't Contractors, Inc. v. Stone, 980 F.2d 1433 (Fed. Cir. 1992) 1
Kellogg Co. v. Pack-Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1889), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991) 1
National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991) 1
Copelands' Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991) 2
Octocom Services Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) 5
Societe des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241 (TTAB 1989) 1
Copeland's Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 12 USPQ2d 1562 (Fed. Cir. 1989) 1
Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987) 12
Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548 (1986) 26
Giant Food Inc. v. Standard Terry Mills Inc., 229 USPQ 955 (TTAB 1986) 2
Torres v. Cantine Torresella S.r.l, 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986) 1
Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 221 USPQ 561 (Fed. Cir. 1984) 4
Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984) 1
Giant Food Inc. v. Nation's Foodservice Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983) 1
Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983) 2
Selva & Sons Inc. v. Nina Footwear Inc., 705 F.2d 1316, 217 USPQ 641 (CAFC 1983) 1
American Meat Institute v. Horace W. Longacre Inc., 211 USPQ 712 (TTAB 1981) 2
King Candy Co. v. Eunice King's Kitchen Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974) 3
Grand Total 1 6 7 5 3 9 1 5 5 9 1 7 5 3 4 11 3 2 1 6 5 5 5 2 5 5 2 5 5 4 4 1 5 2 2 5 156
No Statutes Listed.

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