Simply Wireless Can't Establish Common Law Rights to Simply Prepaid, Says T-Mobile
The district court correctly decided there was no “genuine dispute of material fact” that Simply Wireless had abandoned any rights it may have had to the Simply Prepaid trademark, said T-Mobile’s answering brief Tuesday (docket 22-2236) in the 4th U.S. Circuit Court of Appeals. Appellant Simply Wireless wants the 4th Circuit to set aside the U.S. District Court for the Eastern District of Virginia’s grant of summary judgment for T-Mobile on grounds that it paused use of Simply Prepaid for legitimate business reasons (see 2303170025).
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Simply Wireless asserts it owns common law trademark rights to Simply Prepaid, though it hasn’t used the term in commerce for more than five years, said T-Mobile’s brief. It also never tried to register the term with the Patent and Trademark Office until after T-Mobile filed its own registration for Simply Prepaid, it said.
Simply Wireless ownership “consciously decided” in 2009 to rebrand the business and “completely ceased” any use it may have previously made of Simply Prepaid, said T-Mobile’s brief. When T-Mobile began using that term five years later in 2014, Simply Wireless “briefly attempted to resurrect use of the term in order to manufacture a trademark dispute,” it said.
It’s “undisputed” that Simply Wireless didn’t use Simply Prepaid at all for at least three years and seven months between 2009 and mid-2012, “triggering a presumption of abandonment,” said T-Mobile’s brief. Simply Wireless nevertheless argues on appeal the evidence it presented on summary judgment “raised a genuine dispute” about whether it intended to resume use of Simply Prepaid, it said. “But the evidence Simply Wireless cites falls far short of raising a genuine dispute on abandonment,” it said. Evidence of an intent to resume use must speak to the mark holder’s intent during the three-year statutory period -- here, 2009 through 2011 -- and “must indicate an intent to resume bona fide commercial use” that’s not sporadic, casual or transitory, it said.
Simply Wireless’s cited evidence “does neither,” said T-Mobile’s brief. Simply Wireless instead relies on the “self-serving 2022 declaration” of its co-owner, Steven Qureshi, along with its minimal, sporadic and transitory alleged use of Simply Prepaid after the statutory presumption period, it said. The district court “correctly found this evidence insufficient to raise a dispute of fact as a matter of law,” it said. The lower court’s grant of summary judgment in T-Mobile’s favor “should be affirmed,” it said.
The 4th Circuit also can affirm the district court’s grant of summary judgment on the “alternative ground” that Simply Wireless failed to establish “common law ownership” of a Simply Prepaid mark when T-Mobile first used it, said T-Mobile’s brief. Simply Wireless never registered Simply Prepaid as a trademark with the PTO, it said. It therefore can establish rights to that term “only if it can establish common law trademark rights,” it said.
As courts, including the 4th Circuit, “uniformly found,” ownership of a common law trademark “requires the alleged owner to establish that it maintained continuous use of the mark,” said T-Mobile’s brief. There’s “no genuine dispute” that Simply Wireless didn’t maintain “continuous use” of Simply Prepaid between at least 2009 and T-Mobile’s first use in 2014, it said. Simply Wireless can’t establish common law trademark rights to Simply Prepaid as a matter of law, it said.