TTAB Refuses to Allow Second Bite at Summary Judgment Apple

The Board refused to entertain a second summary judgment motion filed by Respondent in a cancellation proceeding because the second motion (again aimed at knocking out the Petitioner's abandonment claim) was based on evidence available to Respondent when it filed its first motion. Borland Software Corp. v. EMSoftware Solutions, Inc., Cancellation No. 92042159 (October 18, 2005) [not citable].

Borland Software seeks to cancel, on the ground of abandonment, a registration for the mark SNAP for "computer software used in the design of other computer software programs." In February 2004, Respondent filed its first summary judgment motion, relying "primarily on its president's 'vague' declaration and 'heavily redacted' copies of an asset purchase agreement and two licensing and maintenance agreements asserted by respondent to show continuous use of the subject mark." In October 2004, the Board denied the motion because Respondent failed to demonstrate the absence of a factual dispute. As part of its decision denying the motion, the Board imposed its standard protective order on the parties.

In January 2005, Respondent filed its second summary judgment motion. Respondent contended that the new motion was based on more complete information regarding its use of the SNAP mark, including confidential business information. It claimed that the confidential information could be disclosed only under a protective order.


The Board observed that the new motion was "based on evidence that was available to respondent or was within respondent's control at the time the first motion for summary judgment was filed."

"The underlying purpose of motions for summary judgment is judicial economy. See TBMP Section 528.01 (2d ed. rev. 2004). To allow a party to file repeated motions for summary judgment on the same ground based on evidence that was available to it when it filed its first motion for summary judgment is in contravention of that purpose and unhelpful to the judicial process. ***

"[w]e are unwilling to allow respondent to use the parties' failure to reach agreement with regard to the filing and handling of confidential materials prior to the filing of its first motion for summary judgment as a means of filing a renewed motion for summary judgment on the same ground."

In a parting shot, the Board noted that, even if it had considered the new motion on its merits, the motion still would have failed because Respondent again failed to show the lack of a genuine issue of material fact on the abandonment issue.

Text Copyright John L. Welch 2005