Welcome Back to TTAB Trial Tactics

In the first three installments, we covered the first 30 days, the Answer, and discovery. Now the case is fully developed. You have exchanged interrogatories, documents, and perhaps taken a deposition. Both sides know the strengths and weaknesses of the other’s evidence.

This is the moment to ask: Can this case be decided without a trial?

Summary judgment is a procedural tool that allows the TTAB to decide a case (or specific issues) when there is no genuine dispute of material fact and one party is entitled to judgment as a matter of law. If you win summary judgment, the case ends – no trial, no further discovery, no additional legal fees. If you lose, the case proceeds to trial, but the judge’s opinion may narrow the issues.

The tactical truth: Summary judgment is not for every case. A poorly drafted motion can waste resources and even strengthen the opponent’s position. This post teaches you when to move, when to oppose, and how to maximize your chances of success.

The Legal Standard – What You Must Prove

The TTAB applies the same summary judgment standard as federal courts under Fed. R. Civ. P. 56. The moving party (the one asking for summary judgment) must show that:

1. There is no genuine dispute as to any material fact – meaning a reasonable jury could not find for the non‑moving party on that fact.

2. The moving party is entitled to judgment as a matter of law – based on the undisputed facts.

The non‑moving party gets the benefit of all reasonable inferences. The judge does not weigh credibility or resolve factual disputes; that’s for trial.

Key takeaway: Summary judgment is possible only when the facts are essentially undisputed. If both sides have competing evidence (e.g., conflicting expert reports, different dates of first use, contradictory consumer surveys), summary judgment will likely be denied.

When to Move for Summary Judgment (As Opposer or Respondent)

As the Opposer (Plaintiff in the opposition)

You should consider moving for summary judgment if:

• Priority is undisputed – You have clear documentary evidence (e.g., a registered mark with a constructive use date that precedes the applicant’s filing date) and the applicant does not genuinely contest it.
• The marks and goods are so similar that confusion is inevitable – For example, identical marks for identical goods, with no plausible defense.
• The applicant has no evidence – They failed to respond to discovery, or their responses are legally insufficient to raise a genuine dispute.

Example: Opposer owns a registration for “SUNRISE” for coffee. Applicant seeks registration for “SUNRISE” for coffee. Applicant admits both marks and goods are identical. No other facts are in dispute. Summary judgment for opposer on likelihood of confusion is appropriate.

As the Respondent (Defendant)

You should move for summary judgment if:

• Opposer lacks standing – Opposer cannot show ownership of a valid mark (e.g., their registration is cancelled or abandoned).
• Opposer’s mark is generic or descriptive without acquired distinctiveness – You have evidence (dictionary definitions, third‑party use, consumer surveys) that the mark is not protectable.
• No likelihood of confusion as a matter of law – The marks are clearly different, or the goods are so unrelated that no consumer would be confused. This is harder to win because likelihood of confusion is usually fact‑intensive, but extreme cases can succeed.
• Opposer’s claims are barred by laches or acquiescence – Opposer waited an unreasonably long time to oppose, and you have evidence of prejudice.

Example: Opposer owns “ATLAS” for heavy construction equipment. Applicant seeks “ATLAS” for boutique children’s clothing. The trade channels, consumers, and nature of goods are completely different. No reasonable factfinder could find confusion. Summary judgment for respondent.

When NOT to Move for Summary Judgment

Filing a motion when the case is not ripe is a common tactical error. Avoid moving if:

• Discovery is incomplete – You have not yet obtained key documents or depositions that could create factual disputes. The non‑moving party can argue under Rule 56(d) that more discovery is needed.
• The facts are genuinely disputed – For example, both sides have competing declarations about the date of first use. The judge cannot resolve that dispute on summary judgment.
• The legal standard requires weighing evidence – Likelihood of confusion involves multiple DuPont factors, many of which are fact‑intensive. Unless the case is extreme, the TTAB often denies summary judgment on likelihood of confusion and sends it to trial.
• You have a weak case – A failed summary judgment motion can lead to an adverse inference or, worse, an award of fees if the motion was frivolous.

Procedural caution: If you are the respondent and the opposer files a weak summary judgment motion, you can oppose it. But you can also file a cross‑motion for summary judgment in your favor if the undisputed facts support your position. Cross‑motions are common.

How to Build a Winning Summary Judgment Motion

A summary judgment motion has three core components:

1. Statement of Undisputed Material Facts (SUMF)

This is a numbered list of facts that you claim are not genuinely disputed. Each fact must be supported by a citation to evidence (e.g., “Ex. A, Declaration of John Smith ¶ 4”; “Ex. B, Opposer’s Response to Interrogatory No. 3”).

Tactical tip: Keep your SUMF concise – 15–30 well‑chosen facts are more persuasive than 100 minor details. Focus on facts that legally compel judgment.

2. Memorandum of Law

The memo explains why the undisputed facts entitle you to judgment. For a likelihood of confusion case, you walk through the relevant DuPont factors and show that, based on the undisputed evidence, confusion is (or is not) likely as a matter of law.

Tactical tip: Cite TTAB and Federal Circuit precedent. Use headings to organize the DuPont factors. Do not argue disputed facts – that is for trial.

3. Evidence Appendix

Attach all exhibits cited in the SUMF and memo: declarations, documents, interrogatory answers, admission responses, deposition excerpts, and any expert reports. Ensure each exhibit is properly authenticated (e.g., a declaration from a custodian or a party under oath).

Tactical tip: Do not overwhelm the judge with irrelevant documents. Include only what is necessary to support your undisputed facts.

Responding to a Summary Judgment Motion

If you are the non‑moving party, your response must:

• Admit or deny each fact in the movant’s SUMF. If you deny a fact, you must cite evidence creating a genuine dispute.
• Submit your own statement of additional disputed facts (if any).
• File a memorandum arguing why summary judgment should be denied – either because there are genuine factual disputes or because the law does not support judgment even on the undisputed facts.

Tactical tip: Do not simply argue that the motion is “premature.” If you need more discovery, file a Rule 56(d) declaration explaining what discovery you need and why it could create a factual dispute.

What Happens After the Motion Is Filed?

The TTAB will issue a scheduling order for briefing. Typically:

• Moving party files motion (opening brief + SUMF + evidence)
• Non‑moving party files opposition (response brief + counter‑SUMF + evidence)
• Moving party files reply (optional, limited to new arguments)

The Board then considers the motion. It may:

• Grant summary judgment – Case over. The moving party wins.
• Deny summary judgment – Case proceeds to trial. The judge may also identify undisputed facts that will be treated as established at trial.
• Deny in part, grant in part – Some claims or defenses are decided, others go to trial.

The decision can take several months. While waiting, the case is not automatically stayed unless the Board orders a stay. Parties often continue discovery and trial preparation.

Strategic Considerations – To Move or Not to Move?

Cost of Summary Judgment Motions – Flat‑Fee Options

Drafting a summary judgment motion is intensive legal work. It requires a deep understanding of the record, careful citation to evidence, and persuasive legal writing. Most firms bill this work by the hour – often $5,000\text{–}$15,000 for a motion and opposition combined.

We offer flat‑fee packages for summary judgment practice:

No hourly billing. You know the cost before you start drafting.

Next in the Series

TTAB Trial Tactics #5: Preparing for Trial – Testimony, Exhibits, and the Trial Brief

We will cover how to submit testimony by declaration (the TTAB’s preferred method), how to prepare exhibits, and how to write a trial brief that persuades the Board.

Is your TTAB case ripe for summary judgment?
Contact us for a flat‑fee case evaluation. We will review the discovery record, identify undisputed facts, and tell you whether moving for summary judgment is a winning strategy – or a waste of resources.

TTAB Trial Tactics #1: The First 30 Days

TTAB Trial Tactics #2: The Answer

TTAB Trial Tactics #3: Discovery

TTAB Trial Tactics #5: Preparing for Trial

TTAB Trial Tactics #6: The Final Decision