Court Improperly Gave T-Mobile Rights to ‘Simply Prepaid’ Mark, Says Simply Wireless
The U.S. District Court for Eastern Virginia “improperly discredited sworn testimony” when it granted summary judgment in T-Mobile’s favor and incorrectly ruled Simply Wireless had abandoned rights to the “Simply Prepaid” trademark, said Simply’s reply brief Wednesday (docket 22-2236) in the 4th U.S. Circuit Court of Appeals.
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T-Mobile’s June 13 answering brief said Simply wrongly asserts it owns common law trademark rights to Simply Prepaid, though it hasn’t used the term in commerce for more than five years (see 2306140001). Simply also never tried to register Simply Prepaid with the Patent and Trademark Office until after T-Mobile filed its own registration for Simply Prepaid, said T-Mobile.
The district court also “disregarded corroborating documentary evidence and made multiple “implicit and explicit fact determinations” in granting summary judgment on the “intensely factual” abandonment issue, said Simply’s reply brief. T-Mobile hadn’t pressed abandonment in its summary judgment motion, it said: “It relegated that issue to a footnote and led with the novel (and incorrect) theory that any gap in use of an unregistered trademark results in loss of rights.”
The district court “rejected that argument,” said Simply’s reply brief. It instead “delved into a traditional abandonment analysis,” which requires both discontinuance of use and lack of intent to resume use, that T-Mobile “barely asserted,” it said. T-Mobile now “opportunistically doubles down on abandonment,” and on the district court’s errors, in its opposition brief, it said.
T-Mobile’s abandonment argument “takes a reductive and myopic view of the record,” said Simply’s reply brief. It “mischaracterizes” Simply co-founder Steven Qureshi’s testimony “and tries to isolate it from the ample corroborating evidence,” it said. Qureshi didn’t merely say Simply always intended to continue using Simply Prepaid, as T-Mobile asserts, it said.
Qureshi also described “specific steps taken during the presumption period to effectuate that intent,” said Simply’s reply brief. He bolstered that testimony with a document “reflecting negotiations during the presumption period to relaunch the mark,” it said. He also produced evidence of a Simply Prepaid marketing campaign that reached more than 500,000 consumers, and demonstrated “a long history of bona fide use” of the Simply Prepaid mark “before and after T-Mobile’s infringement,” it said.
The most “plausible conclusion” is that Simply had the intent to resume use of Simply Prepaid during the presumption period, therefore rebutting “the presumption of abandonment,” said Simply’s reply brief. T-Mobile’s answering brief, “illuminated by a curious light that shines only in T-Mobile’s direction, is a case study in doing the opposite of what Rule 56 requires,” it said. That illustrates why the district court “erred in granting summary judgment for T-Mobile on its half-hearted abandonment defense,” it said.