December 15 2005 - USA

Knobbe Martens Olson & Bear LLP

No second bite of the apple for SNAP mark owner

In Borland Software Corporation v EMSoftware Solutions Inc, the US Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) has denied EMSoftware Solutions Inc's renewed motion for summary judgment in relation to its claim that it had not abandoned its SNAP mark.

EMSoftware is the owner of a US trademark registration for the mark SNAP in connection with "computer software used in the design of other computer software programs". On May 1 2003 Borland Software Corporation filed a petition to cancel the registration on the grounds of abandonment. On February 17 2004, after the close of the discovery period, EMSoftware filed a motion for summary judgment, stating that its SNAP mark had not been abandoned and continues to be used. On October 28 2004 the TTAB denied the motion as it was not persuaded by the evidence in support of it. As part of its decision, the TTAB imposed its standard form protective order on the parties.

Less than three months after the TTAB's denial of the first motion for summary judgment, EMSoftware filed a renewed motion again asserting that its SNAP mark has not been abandoned. The renewed motion was based on evidence that was available to EMSoftware or was in its control at the time the first motion was filed, but that was not submitted. To explain why the evidence was not submitted in support of the first motion, EMSoftware contended that the evidence identified customers and thus could only be disclosed under a protective order.

Nonetheless, the TTAB denied EMSoftware's renewed motion, stating that the underlying purpose of motions for summary judgment is judicial economy. It noted that to allow a party to file repeated motions for summary judgment on the same grounds, based on evidence that was available to it when it filed its first motion for summary judgment is contrary to that purpose and unhelpful to the judicial process. The TTAB was unwilling to allow EMSoftware to use the parties' failure to reach agreement with regard to the filing and handling of confidential materials prior to the filing of the first motion as a means for filing a renewed motion on the same grounds. It further noted that if EMSoftware was concerned about disclosing confidential information, it could have produced copies of the additional documents with the confidential information, such as customer names, redacted.

Susan Natland, Knobbe Martens Olson & Bear LLP, Irvine

© Copyright 2002 - 2006
Globe Business Publishing Ltd

 

*This article first appeared in World Trademark Law Report