Precedential No. 8: You Can't Move for Summary Judgment Until After Serving Initial Disclosures, Says TTAB

Here's a primer on how not to file for summary judgment. Opposer Qualcomm's motion was ill-timed, procedurally deficient, and substantively lacking. As a result, it FLOed right down the TTAB drain. Qualcomm Incorporated v. FLO Corporation, 93 USPQ2d 1768 (TTAB 2010) [precedential].


Bad Timing: Under Rule 2.127(e)(1): "A party may not file a motion for summary judgment until the party has made its initial disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction by the Trademark Trial and Appeal Board." Qualcomm's motion did not fall within the exception. Applicant Flo pointed out in its opposition brief that Qualcomm did not serve initial disclosures, but Flo did not expressly object on that ground. The Board held that this requirement "cannot be waived." Therefore the Board denied the motion as premature.

Unpleaded grounds: Qualcomm did not plead in its notice of opposition any of the grounds on which it sought summary judgment. For that reason, too, the motion was denied. See FRCP 56(a) and (b) and TBMP Section 528.07(a).

Improper ground for summary judgment: One of Qualcomm's grounds for summary judgment, abandonment, is "not available when the opposed application is based on Section 1(b)." "Use of a mark that is the subject of an application alleging a bona fide intent to use is not required until the application files a statement of use."

Inadequate pleading of fraud: The Board took the opportunity to bash Qualcomm's fraud pleading, finding its allegations "legally insufficient." Qualcomm claimed that Flo "knew or should have known" of Opposer's prior use and registration of its pleaded marks and "therefore could not have formed the requisite good faith belief that [a]pplicant is the owner of the mark sought to be registered, and that no other person, firm, corporation or association has the right to use said mark in commerce."

Not good enough, said the Board. "[A]llegations that a party made material representations of fact that it 'knew or should have known' were false or misleading are insufficient."

Opposer has failed to allege that applicant knew that opposer had rights in the mark superior to applicant's, and either believed that a likelihood of confusion would result from applicant's use of its mark or had no reasonable basis for believing otherwise; and that applicant, in so failing to disclose, intended to procure a registration to which it was not entitled.

And so the Board denied the motion.

TTABlog comment: This business of whether you have to object on the ground that the other side didn't serve initial disclosures is getting a bit tricky, isn't it?

Note also the "no reasonable basis to believe" language. Isn't that like "knew or should have known"? I thought that, under Bose, reasonableness was not part of the equation.

TTABlog further comment: Note that in Boston Red Sox Baseball Club Limited Partnership v. Chaveriat III, 87 USPQ2d 1767 (TTAB 2008) [precedential], the Board held that the parties can stipulate to a waiver of the initial disclosure requirement. And in Amazon Technologies, Inc. v. Jeffrey S. Wax, 93 USPQ2d 1702 (TTAB 2009), the Board held that an objection to discovery on the ground that the other party has not made its initial disclosures must be made specifically.

Text Copyright John L. Welch 2010.