Introduction to Summary Judgment Before the TTAB

Summary judgment plays a unique and often misunderstood role in Trademark Trial and Appeal Board proceedings. While many practitioners associate summary judgment primarily with federal court litigation, the TTAB applies similar legal standards with procedural nuances that are critical to understand. Under TBMP 528, the Board incorporates Federal Rule of Civil Procedure 56, but it does so within the framework of an administrative tribunal focused on trademark registrability rather than broader questions of infringement or damages. For brand owners and trademark professionals, understanding how and when summary judgment can be used effectively before the TTAB can save significant time and expense.

Summary judgment is designed to resolve cases, or at least specific claims or defenses, where there is no genuine dispute as to any material fact and the moving party is entitled to judgment as a matter of law. In practice, however, achieving summary judgment before the TTAB requires careful attention to evidentiary rules, timing, and strategic positioning.

The Legal Foundation of Summary Judgment Under TBMP 528

TBMP 528 provides the procedural roadmap for summary judgment motions in TTAB cases. The Board looks to Rule 56 for the substantive standard, meaning the moving party bears the initial burden of demonstrating that no genuine issue of material fact exists. A material fact is one that could affect the outcome of the case under applicable trademark law. If such a dispute exists, summary judgment is improper, even if the Board believes one party is more likely to prevail at trial.

Importantly, the TTAB views summary judgment as a “drastic remedy,” a phrase often echoed in Board decisions. This reflects the Board’s preference for resolving factual disputes through a full trial record rather than on motion practice alone. As a result, summary judgment motions are frequently denied when they hinge on subjective determinations such as likelihood of confusion, intent, or consumer perception, unless the evidentiary record is unusually clear.

Timing and Procedural Requirements for Filing

Timing is a critical element of summary judgment practice before the TTAB. Under TBMP 528.02, summary judgment motions may be filed at any time after the answer is filed, but they must be submitted early enough so as not to delay trial. In many cases, parties wait until discovery has progressed sufficiently to develop an evidentiary record capable of supporting or opposing the motion.

A properly filed summary judgment motion automatically suspends proceedings with respect to matters not germane to the motion. This procedural pause can be strategically valuable, particularly in cases where discovery costs are escalating. However, practitioners should be mindful that filing a weak or premature motion can backfire by educating the opposing party about litigation strategy while failing to resolve any issues.

Evidentiary Standards and the TTAB Record

One of the most common reasons summary judgment motions fail before the TTAB is improper or insufficient evidence. The Board only considers evidence that would be admissible at trial, and all evidence must be properly submitted and authenticated. Declarations, discovery responses, admissions, and official records are commonly used, but they must comply strictly with TBMP evidentiary rules.

Unlike trial, the Board views the evidence in the light most favorable to the nonmoving party and draws all reasonable inferences in that party’s favor. This standard makes summary judgment particularly challenging in cases involving likelihood of confusion, where factual inferences about consumer perception often dominate the analysis. That said, summary judgment can be effective in cases involving purely legal issues, such as standing, priority based on undisputed dates, abandonment under clear factual circumstances, or claims barred by statute.

Partial Summary Judgment and Issue Narrowing

While full summary judgment is difficult to obtain, partial summary judgment is often a more realistic and strategic goal. TBMP 528 allows parties to seek judgment on discrete claims, defenses, or issues, even if the entire case cannot be resolved. For example, a party may seek summary judgment on certain pleaded grounds for opposition or cancellation, effectively narrowing the scope of trial.

This approach can significantly streamline TTAB proceedings by eliminating weaker claims early and focusing trial on the core disputes. It can also shift settlement dynamics, as parties reassess litigation risk once certain issues are resolved as a matter of law.

Likelihood of Confusion and Summary Judgment Challenges

Likelihood of confusion claims are notoriously resistant to summary judgment. The Board has repeatedly emphasized that such determinations involve weighing multiple DuPont factors, many of which depend on factual findings. Unless the parties agree on the relevant factors or the evidence overwhelmingly favors one side, the Board is reluctant to resolve confusion claims without trial.

That said, summary judgment may still be appropriate in likelihood of confusion cases where the marks are clearly dissimilar, the goods or services are unrelated as a matter of law, or the record contains undisputed evidence eliminating key factors. Practitioners must carefully evaluate whether the factual record truly supports a no-dispute scenario before pursuing this route.

Strategic Considerations for Trademark Litigants

From a strategic perspective, summary judgment should be viewed as both a legal and tactical tool. A well supported motion can pressure an opposing party, clarify the Board’s view of the case, and potentially lead to early resolution. Conversely, a poorly conceived motion can waste resources and undermine credibility with the Board.

Before filing, parties should assess whether discovery has sufficiently matured, whether the evidentiary record is clean and admissible, and whether the issues presented are truly legal rather than factual. Consulting experienced TTAB counsel at this stage can be invaluable in determining whether summary judgment aligns with broader litigation goals.

Conclusion

Summary judgment in TTAB proceedings is governed by familiar Rule 56 standards but applied within a specialized trademark context under TBMP 528. While the Board sets a high bar for granting such motions, summary judgment remains a powerful mechanism when used thoughtfully and supported by a strong evidentiary record. For brand owners and practitioners navigating oppositions and cancellations, understanding the procedural and strategic realities of summary judgment can make a meaningful difference in protecting valuable trademark rights.

Your brand is everything, and safeguarding it requires not only creative vision but also procedural precision. When summary judgment becomes part of the strategy, careful planning and experienced guidance can help ensure that the effort advances, rather than distracts from, your ultimate brand protection goals.