Virginia Lawyers Weekly VA Lawyers Weekly
Where a wireless provider used the mark “SIMPLY PREPAID” deliberately and continuously from 2002-08, it obtained common-law rights in the mark. But because the provider then effectively abandoned the mark, the use of the mark by a different telecommunications company didn’t constitute trademark infringement.
Background
This long-running trademark dispute concerns the ownership of the mark SIMPLY PREPAID. Simply Wireless alleges that T-Mobile has infringed its common law ownership of the SIMPLY PREPAID mark; and based on that contention has asserted claims for: (1) trademark infringement under the Lanham Act (Count One); (2) trademark infringement under Virginia law (Count Two); (3) unfair competition, passing off, trade name infringement, trademark infringement and false designation of origin under the Lanham Act (Count Three) and the common law (Count Four) and (4) trademark dilution under the Lanham Act (Count Five).
T-Mobile contends that since Simply Wireless discontinued its use of the SIMPLY PREPAID mark prior to T-Mobile’s first use of the mark, it now has priority over the mark’s use. Both sides have filed cross motions for summary judgment.
Common law
Simply Wireless contends that by virtue of its actual first use in 2002 of SIMPLY PREPAID, which it contends is a “distinctive mark,” it has priority over T-Mobile’s subsequent first use in June 2014. In response, T-Mobile argues that Simply Wireless lacks ownership of the mark for two separate reasons: (1) Simply Wireless fails to show continuous use of the mark from 2002 up to and until T-Mobile’s first use in June 2014 and (2) Simply Wireless had abandoned the mark, thereby allowing T-Mobile to take ownership of the mark and become the senior user.
To establish common law trademark ownership of the mark, Simply Wireless need only establish that it (1) used the mark first and (2) that such use was deliberate and continuous, not sporadic, casual or transitory. The court finds that Simply Wireless sufficiently established that it had engaged in “deliberate and continuous” use of the SIMPLY PREPAID Mark from 2002-08 and therefore acquired certain common law rights in the mark as the first or senior user of the mark.
Nevertheless, the court concludes, as a matter of law, that Simply Wireless failed to “use” the mark, as that term is defined in the Lanham Act, from 2009 to July, 2012, and failed to rebut the mandatory inference of intent not to resume use established by those more than three-and-a-half years of non-use. Accordingly, as a matter of law, Simply Wireless abandoned the mark as of 2012 and it did not accrue a new protectible ownership interest through its intermittent, limited use of the mark during a nine-month period from late-July 2012 to April 2013 or through its subsequent use. For the above reasons, the court grants summary judgment in favor of defendants on Count Four.
Remaining claims
Simply Wireless’s Counts One and Three concern trademark infringement under the Lanham Act; Count Two is a claim of trademark infringement under Virginia Code § 59.1-92.1. These counts may be considered together, because “[t]he test for trademark infringement and unfair competition under the Lanham Act is essentially the same as that for common law unfair competition under Virginia law.”
Critical to claims of trademark infringement under the Lanham Act and the Virginia Code is ownership of a mark. Here, Simply Wireless never registered the SIMPLY PREPAID mark before T-Mobile’s first use or its own registration application, which, if Simply Wireless had, would have granted Simply Wireless a presumption of ownership.
And, for the reasons stated above concerning common law ownership, Simply Wireless cannot otherwise show that it owns the mark, which precludes these claims. Accordingly, the court grants summary judgment in favor of defendants on Counts One, Two and Three. Finally Simply Wireless has abandoned its dilution claim. The court will therefore enter judgment in favor of defendants on Count Five.
Plaintiff’s motion for summary judgment denied. Defendant’s motion for summary judgment granted.
Simply Wireless Inc. v. T-Mobile US Inc., Case No. 1:21-cv-00597, Nov. 1, 2022. EDVA at Alexandria (Trenga). VLW 022-3-492. 30 pp.
