News & Events

Feb 1, 2016

Robert T. Conway, Esq., of HoustonHogle, LLP Announces Important Trademark Dispute Decision


In a case that is of significant interest to those interested in trademark disputes, Robert T. Conway, Esq., IP and Licensing Counsel with HoustonHogle, LLP in Lexington, MA, has announced that he and Pabla Bros., Inc. of Boston have achieved an important legal victory over One World Cuisine Group, LLC of Boston before The Trademark Trial and Appeal Board (TTAB) in the U.S. Patent and Trademark Office (USPTO).

For over a year, Mr. Conway had been working on two trademark opposition cases in the USPTO. In both of these cases, Mr. Conway's client was the opposer of One World's attempt to register the two trademarks and contested the defendant's ownership of those trademarks.

At the close of discovery and before the opening of testimony, Mr. Conway was able to establish that no genuine dispute existed as to any material fact regarding ownership of the trademarks and that his client was entitled to judgment in its favor. Mr. Conway filed his motion for Summary Judgment arguing that the defendant did not own the trademarks and therefore should be denied registration. This motion for Summary Judgment was recently granted in the two trademark oppositions before the TTAB in the USPTO.

"I am quite pleased that my client and I prevailed in this course of action in the early stages of this litigation even in the face of long odds for success," said Mr. Conway. "Although summary judgment motions are granted only about one-third of the time, ownership disputes often are not suitable for summary judgment, because there is usually a dispute to the facts. Our motion was persuasive in overcoming these hurdles," he added.

To put this decision in context, there are approximately 5,000 oppositions to trademark registrations filed annually. Only about 200 motions for summary judgment are filed per year and of these, less than one third are granted. In particular, ownership disputes not based on contracts are considered a type of claim least amenable to summary judgment.

For more information or questions regarding any aspect of intellectual property protection including trademarks, patents and licensing, please contact Robert T. Conway, Esq. at Robert.Conway@HoustonLLP.com or call 781-863-9991.