Petition for Writ of Certiorari — T-Mobile US, Inc., fka T-Mobile USA, Inc., et al., Petitioners v. Simply Wireless Inc.

No. 24IN THE

Supreme Court of the United States

T-MOBILE US, INC., F/K/A T-MOBILE USA, INC.,

T-MOBILE USA, INC.,

Petitioners,

v.

SIMPLY WIRELESS INC.,

Respondent.

ON PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

PETITION FOR A WRIT OF CERTIORARI

BRITTANY B. AMADI

ANDREW K. WAKS

WILMER CUTLER PICKERING

HALE AND DORR LLP

2100 Pennsylvania Ave., NW

Washington, DC 20037

GIDEON HANFT

WILMER CUTLER PICKERING

HALE AND DORR LLP

250 Greenwich Street

New York, NY 10007

JOSEPH J. MUELLER

Counsel of Record

MICHAELA P. SEWALL

RAUVIN A. JOHL

WILMER CUTLER PICKERING

HALE AND DORR LLP

60 State Street

Boston, MA 02109

(617) 526-6000

joseph.mueller@wilmerhale.com

QUESTION PRESENTED

Under the Lanham Act, an unregistered common

law mark must be in “use[]” in order to be protectible.

35 U.S.C. § 1127 (2006). This case arises from Respondent’s efforts to enforce a purported common law trademark that it concededly did not use for years at a time

and was not using at the time Petitioners began the activities that Respondent contends constitute trademark

infringement. The Fourth Circuit panel in this case held

that “use” under Section 1127 of the Lanham Act need

not be continuous, and that once common law trademark

rights are established through use over some unspecified period of time in the past, those rights persist until

abandoned as defined by Section 1127.

The question presented is:

Whether the “use” that creates a common law trademark right under Section 45 of the Lanham Act, 35

U.S.C. § 1127 (2006), must be continuous—at least up until the point at which the trademark defendant begins

the assertedly infringing activities—for the purported

holder of a common law trademark to maintain its rights

and preclude another from use.

(i)

PARTIES TO THE PROCEEDING

Petitioner is T-Mobile USA, Inc. Respondent is

Simply Wireless Inc.

CORPORATE DISCLOSURE STATEMENT

T-Mobile USA, Inc. is a subsidiary of T-Mobile US,

Inc. T-Mobile US, Inc. is a publicly traded company

listed on the NASDAQ Global Select Market of

NASDAQ Stock Market LLC (“NASDAQ”). Deutsche

Telekom Holding B.V. (“DT B.V.”), a limited liability

company organized and existing under the laws of the

Netherlands, owns more than 10% of the shares of T-Mobile US, Inc.

DT B.V. is a direct wholly-owned subsidiary of TMobile Global Holding GmbH, a Gesellschaft mit

beschränkter Haftung organized and existing under the

laws of the Federal Republic of Germany (“Holding”).

Holding is in turn a direct wholly-owned subsidiary of

TMobile Global Zwischenholding GmbH, a Gesellschaft

mit beschränkter Haftung organized and existing under

the laws of the Federal Republic of Germany (“Global”).

Global is a direct wholly-owned subsidiary of Deutsche

Telekom AG, an Aktiengesellschaft organized and existing under the laws of the Federal Republic of Germany

(“Deutsche Telekom”). The principal trading market for

Deutsche Telekom’s ordinary shares is the trading platform “Xetra” of Deutsche Börse AG. Deutsche Telekom’s ordinary shares also trade on the Frankfurt, Berlin, Düsseldorf, Hamburg, Hannover, München and

Stuttgart stock exchanges in Germany. Deutsche Telekom’s American Depositary Shares (“ADSs”), each representing one ordinary share, trade on the OTC market’s

highest tier, OTCQX International Premier (ticker symbol: “DTEGY”).

(ii)

STATEMENT OF RELATED PROCEEDINGS

The petition arises from the following proceedings:

•

Simply Wireless, Inc. v. T-Mobile US, Inc.,

f/k/a T-Mobile USA, Inc.; T-Mobile USA, Inc.,

No. 22-2211 (4th Cir. Aug. 13, 2024)

•

Simply Wireless, Inc. v. T-Mobile US, Inc.,

f/k/a T-Mobile USA, Inc., et al.,

No. 1:21-cv-00597 (E.D. Va. Nov. 1, 2022)

Counsel for Petitioners is not aware of any other

proceedings that are directly related to this case within

the meaning of Rule 14.1 (b)(iii).

(iii)

TABLE OF CONTENTS

Page

QUESTION PRESENTED................................................... i

PARTIES TO THE PROCEEDING .................................. ii

CORPORATE DISCLOSURE STATEMENT ............... ii

STATEMENT OF RELATED PROCEEDINGS............ iii

TABLE OF AUTHORITIES .............................................. vi

OPINIONS BELOW .............................................................. 1

JURISDICTION ..................................................................... 1

STATUTORY PROVISIONS INVOLVED ..................... 2

INTRODUCTION................................................................... 2

STATEMENT OF THE CASE ........................................... 4

REASONS FOR GRANTING THE PETITION ............ 8

I.

THE FOURTH CIRCUIT’S ELIMINATION OF

THE CONTINUOUS-USE REQUIREMENT FOR

COMMON LAW MARKS CREATES A CIRCUIT

CONFLICT....................................................................... 8

II. THE DECISION BELOW IS WRONG ............................ 13

III. THE QUESTION PRESENTED IS EXCEPTIONALLY IMPORTANT, AND THIS IS AN

EXCELLENT VEHICLE TO RESOLVE IT ................... 17

CONCLUSION ...................................................................... 20

APPENDIX

(v)

vi

TABLE OF AUTHORITIES

CASES

Page(s)

Airs Aromatics, LLC v. Victoria’s Secret

Stores Brand Management, Inc.,

744 F.3d 595 (9th Cir. 2014) .............................. 4, 9, 15

Blue Bell, Inc. v. Farah Manufacturing.

Company, 508 F.2d 1260 (5th Cir. 1975) ............. 3, 10

Casual Corner Associates, Inc. v. Casual

Stores of Nevada, Inc., 493 F.2d 709 (9th

Cir. 1974) ...................................................................... 12

Commerce National Insurance Services, Inc.

v. Commerce Insurance Agency, Inc.,

214 F.3d 432 (3d Cir. 2000) .................................... 4, 12

Department of Parks & Recreation v. Bazaar

del Mundo, 448 F.3d 1118 (9th Cir. 2006) ............. 8, 9

George & Company, LLC v. Imagination

Entertainment Limited, 575 F.3d 383

(4th Cir. 2009).............................................................. 15

George Nelson Foundation v. Modernica, Inc.,

12 F. Supp. 3d 635 (S.D.N.Y. 2014) .......................... 11

Homeowners Group, Inc. v. Home Marketing

Specialists, Inc., 931 F.2d 1100 (6th Cir.

1991) ......................................................................... 4, 10

In re International Flavors & Fragrances,

Inc., 183 F.3d 1361 (Fed. Cir. 1999) ......................... 18

Jack Daniel’s Properties, Inc. v. VIP Products

LLC, 599 U.S. 140 (2023) ........................................... 13

Kars 4 Kids Inc. v. America Can!, 8 F.4th 209

(3d Cir. 2021) ......................................................... 10, 15

vii

TABLE OF AUTHORITIES—Continued

Page

Larsen v. Terk Technologies Corporation,

151 F.3d 140 (4th Cir. 1998) ................................ 15, 17

Lucent Information Managment, Inc. v.

Lucent Technologies, Inc., 986 F. Supp. 253

(D. Del. 1997) ............................................................... 14

Natural Answers, Inc. v. SmithKline Beecham

Corporation, 529 F.3d 1325 (11th Cir. 2008) .... 15, 16

Natural Footwear Limited v. Hart, Schaffner

& Marx, 760 F.2d 1383 (3d Cir. 1985) ...................... 18

Rosenshine v. A. Meshi Cosmetics Industries

Ltd., 2020 WL 1914648 (E.D.N.Y. Mar. 30,

2020) ............................................................................. 11

Simply Wireless, Inc. v. T-Mobile US, Inc. ,

638 F. Supp. 3d 644 (E.D. Va. 2022 .......................... 19

Tally-Ho, Inc. v. Coast Community College

District, 889 F.2d 1018 (11th Cir. 1989) ......... 4, 10, 12

United Drug Company v. Theodore Rectanus

Company, 248 U.S. 90 (1918) .................................. 3, 8

Vais Arms, Inc. v. Vais, 383 F.3d 287 (5th Cir.

2004) ............................................................................. 15

Watec Company v. Liu, 403 F.3d 645 (9th Cir.

2005) ............................................................................... 9

STATUTORY PROVISIONS

15 U.S.C.

§ 1057................................................................................. 14

§ 1065................................................................................. 14

§ 1115................................................................................. 14

viii

TABLE OF AUTHORITIES—Continued

Page

28 U.S.C. § 1254 ........................................................................ 2

35 U.S.C. § 1127 (2006) .................................................. 2, 7, 10

OTHER AUTHORITIES

2

McCarthy on Trademarks and Unfair

Competition (5th ed.) ............................................. 2, 9, 19

IN THE

Supreme Court of the United States

No. 24T-MOBILE US, INC., F/K/A T-MOBILE USA, INC.,

T-MOBILE USA, INC.,

Petitioners,

v.

SIMPLY WIRELESS INC.,

Respondent.

ON PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

PETITION FOR A WRIT OF CERTIORARI

OPINIONS BELOW

The Fourth Circuit’s opinion (App.1a-36a) is reported at 115 F.4th 266. The court’s order denying rehearing and rehearing en banc is unreported. App.73a.

The order of the U.S. District Court for the Eastern District of Virginia granting T-Mobile’s motion for summary judgment (App.37a-72a) is reported at 638 F.

Supp. 3d 644.

JURISDICTION

The Fourth Circuit entered judgment on August 13,

2024 (App.1a) and denied T-Mobile’s petition for

2

rehearing and rehearing en banc on September 10, 2024.

(App. 73a). This Court has jurisdiction under 28 U.S.C.

§ 1254(1).

STATUTORY PROVISIONS INVOLVED

Section 45 of the Lanham Act, 35 U.S.C. § 1127

(2006), provides in relevant part:

The term “trademark” includes any word, name,

symbol, or device, or any combination thereof—

(1) used by a person, or

(2) which a person has a bona fide intention to use in

commerce and applies to register on the principal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold

by others and to indicate the source of the goods, even if

that source is unknown.

INTRODUCTION

This case presents a clear circuit split regarding a

fundamental question of trademark law: Can the putative holder of a common law trademark maintain rights

to a mark that it elects not to use on a continuous basis?

The majority of circuits answer—correctly—that it cannot. The Fourth Circuit, by contrast, has joined a handful of district courts in holding the opposite. This split

has injected significant uncertainty into the law (as

acknowledged by the leading trademark law treatise, see

2 McCarthy on Trademarks and Unfair Competition

§ 16:9 (5th ed.)), and this Court should grant certiorari to

resolve the circuit split created by the Fourth Circuit’s

decision and clarify the proper scope of common law

trademark rights.

3

The Fourth Circuit’s position—that the common law

does not require continuous use of a trademark to establish ownership rights—could incentivize plaintiffs to

bring trademark claims in pursuit of a windfall, rather

than to prevent marketplace confusion that may arise

from two parties actually using the same mark. That is,

plaintiffs could do exactly what the Respondent has done

here: point to intermittent past use of a mark as a basis

for targeting another company’s present activities, and

seeking a windfall (here, the damages demand exceeds a

billion dollars). Common law trademark rights are intended to provide a mechanism for preventing marketplace confusion—not a mechanism for enabling opportunistic lawsuits.

Moreover, the Fourth Circuit’s ruling undermines

critical public-notice considerations. By registering a

mark, the trademark registrant places the marketplace

on notice that it claims ownership of that mark in connection with its business. For unregistered marks, however, there is no such formal system to place the industry on notice of a putative trademark holder’s claim. As

this Court has recognized, the right to a common law

mark grows out of its use in connection with an existing

business. United Drug Co. v. Theodore Rectanus Co.,

248 U.S. 90, 97 (1918) (“[T]he right to a particular mark

grows out of its use, not its mere adoption; its function is

simply to designate the goods as the product of a particular trader and to protect his good will against the sale

of another’s product as his; and it is not the subject of

property except in connection with an existing business.”). Most circuit courts have interpreted this to require a putative common law trademark holder to establish that its initial use of the mark is “followed by continuous commercial utilization.” Blue Bell, Inc. v. Farah

Mfg. Co., 508 F.2d 1260, 1265 (5th Cir. 1975). The Third,

4

Sixth, Ninth, and Eleventh Circuits have all required a

showing of continuous use to establish common law

trademark rights. See Airs Aromatics LLC v. Victoria’s

Secret Stores Brand Mgmt., Inc., 744 F.3d 595, 599 (9th

Cir. 2014); Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 438 (3d Cir. 2000);

Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc.,

931 F.2d 1100, 1105 (6th Cir. 1991); Tally-Ho, Inc. v.

Coast Cmty. Coll. Dist., 889 F.2d 1018, 1022-1023 (11th

Cir. 1989) (per curiam). The actual, continuous use of a

trademark gives the marketplace notice of another’s use

of that mark.

Rather than require “continuous use,” however, the

Fourth Circuit panel held that ownership over a common

law mark could be established by “extensive use” of the

mark at some unspecified point in time before the junior

user’s first use—even where that use takes place only

sporadically, with lengthy periods of non-use, and where

that episodic use has ceased altogether at the time of the

junior user’s first use. In such circumstances, the public

lacks proper notice of the asserted trademark. And

without proper notice, there is a significant risk of companies wasting resources in developing products and

services that will later be subject to opportunistic lawsuits.

STATEMENT OF THE CASE

In 2021, Simply Wireless sued T-Mobile in the Eastern District of Virginia asserting that T-Mobile infringed Simply Wireless’s purported common law trademark, “SIMPLY PREPAID.” It is undisputed that

Simply Wireless did not register SIMPLY PREPAID in

the Patent and Trademark Office, and failed to make any

use of SIMPLY PREPAID between at least the beginning of 2009 and July 31, 2012; between April 25, 2013

5

and October 4, 2015; and from March 31, 2018 to the present. App.41a-47a. It is also undisputed that T-Mobile

first began using the term SIMPLY PREPAID in June

2014—at a time when Simply Wireless was making no

use of SIMPLY PREPAID at all. App.67a-68a.

T-Mobile sought summary judgment, arguing that,

among other things, Simply Wireless could not show

ownership of SIMPLY PREPAID because it could not

prove continuous use before T-Mobile’s use. See

App.10a. Specifically, T-Mobile argued that because

SIMPLY PREPAID was not registered, Simply Wireless was not entitled to the presumptions that the mark

had been in continual use nationwide or that it owned the

mark. App.39a-40a. Instead, to establish common law

rights in SIMPLY PREPAID, Simply Wireless was required to show continuous use of SIMPLY PREPAID at

least until T-Mobile’s first use. App.54a-55a. Although

Simply Wireless claimed to have made sales using

SIMPLY PREPAID intermittently between 2008 and

2018, it did not dispute that it had also periodically

ceased use. App.43a-45a. Thus, T-Mobile asserted that

Simply Wireless could not establish common law ownership of SIMPLY PREPAID as of the date T-Mobile began using the mark. App.51a. In addition, T-Mobile separately argued that even if Simply Wireless could establish ownership of SIMPLY PREPAID, it had abandoned

those rights by failing to use the mark for three years

with no intent to resume use. Id.

The district court rejected T-Mobile’s summary

judgment argument that Simply Wireless failed to meet

its burden to show continuous use, finding that the term

“continuous” only applied to the “initial accrual of trademark rights.” App.58a. The district court held, at the

summary judgment stage, that Simply Wireless had provided evidence that it used SIMPLY PREPAID in the

6

past and thereby “accrued common law ownership.”

App.58a-59a. However, the district court found the

mark was later abandoned, and granted judgment in favor of T-Mobile on that basis. App.59a-69a.

Simply Wireless appealed, arguing that disputed issues of material fact precluded summary judgment of

abandonment. App.16a. In response, T-Mobile explained that the district court’s abandonment decision

was correct, see C.A. T-Mobile Br. 1-3, and that the decision could alternatively be affirmed because Simply

Wireless had not established common law trademark

ownership because its alleged use of SIMPLY PREPAID was not deliberate and continuous. Id.; see also

C.A. T-Mobile Br. 44-58. T-Mobile emphasized that it

was undisputed that prior to T-Mobile’s use in June 2014,

Simply Wireless had made no use of SIMPLY PREPAID between at least 2009 and July 2012 and beginning

in April 2013. See C.A. T-Mobile Br. 1-2, 10.

The panel vacated and remanded, concluding that

genuine disputes of material fact existed on abandonment. App.17a-28a. The panel did not indicate that

Simply Wireless was likely to prevail on that defense—

indeed, the concurrence noted that Simply Wireless had

“barely” established the requisite fact dispute. App.33a36a.1

On T-Mobile’s alternative ground for affirmance (the

subject of this petition), the panel held that “Simply

Wireless’s extensive use of the trademark SIMPLY

PREPAID—as the district court recognized in its

1

Although T-Mobile maintains that Simply Wireless abandoned the SIMPLY PREPAID trademark, this Petition does not

address the Fourth Circuit’s decision regarding abandonment,

which is currently on remand before the district court.

7

Summary Judgment Order—resulted in Simply Wireless’s legal ownership of SIMPLY PREPAID as a valid

‘common law trademark.’” App.8a n.6. The panel

reached this determination despite the fact that, in that

district court’s words, Simply Wireless had used the

mark “in only essentially nine of the approximately

sixty-five months that preceded T-Mobile’s first use,”

and then in only a “transitory, limited, and economically

marginal manner.” App.37a-38a. Under the district

court’s approach, adopted by the panel opinion, Simply

Wireless’s sporadic and transitory past use of SIMPLY

PREPAID was sufficient to maintain common law

trademark rights—with continuous use relevant “only

to the initial accrual of trademark rights, not whether a

common law owner has maintained such rights.”

App.58a. The panel held, as Simply Wireless had urged

it to, that “the § 1127 statutory abandonment test is the

only proper inquiry for a judicial assessment of whether

ownership rights in a trademark have been lost.”

App.30a (emphasis added). The court thus rejected TMobile’s argument that Simply Wireless’s “transitory,

limited, and economically marginal” use of its purported

mark was insufficient to maintain ownership of that

mark. App.38a.2

2

Judge Rushing concurred in the judgment, writing separately

“to clarify the applicable legal standard for abandonment cases at

summary judgment and to explain how that standard applies here.”

App.33a. Judge Rushing’s concurrence did not address the continuous-use requirement. Id.

8

REASONS FOR GRANTING THE PETITION

I.

THE FOURTH CIRCUIT’S ELIMINATION OF THE CONTINUOUS-USE REQUIREMENT FOR COMMON LAW MARKS

CREATES A CIRCUIT CONFLICT

The Fourth Circuit’s decision creates a split in authority that upsets the uniformity of national trademark

law, and unduly dilutes the requirements for asserting

common law trademark rights. The Fourth Circuit held

that a purported common law trademark owner seeking

to exclude another’s use need not show continuous use of

a common law mark up until the time of the allegedly infringing use to establish legal ownership. That holding

conflicts with policy considerations that lie at the heart

of the trademark system—policy considerations that

other Circuits have properly recognized, but the Fourth

Circuit did not.

The core purpose of trademark law is to protect consumers from confusion regarding marks in actual use in

the marketplace. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918) (“[T]he right to a particular mark grows out of its use, not its mere adoption;

its function is simply to designate the goods as the product of a particular trader and to protect his good will

against the sale of another’s product as his; and it is not

the subject of property except in connection with an existing business.”). In accordance with this principle, numerous courts have held that a common law owner must

demonstrate that it has “continue[d] to use” the mark in

commerce when it seeks to exclude others from use. See

Department of Parks & Recreation v. Bazaar del

Mundo, 448 F.3d 1118, 1127 (9th Cir. 2006) (rejecting

common law ownership and holding that even if the

plaintiff “acquired seniority of use at one time, its failure

to continue to use the marks in commerce … allowed

9

[defendant] as a junior user to acquire priority”); see also

2 McCarthy on Trademarks and Unfair Competition §

16:9 (5th ed.) (“To establish ownership and priority of

use of a mark, the user must establish not only that at

some date in the past it began use of the mark, but that

there has been a continuity of use up to the present.”).

1. In accordance with the plain meaning of “continuous,” the Ninth Circuit has expressly held that a purported common law trademark owner must show “such

use has continued to the present.” Airs Aromatics LLC

v. Victoria’s Secret Stores Brand Mgmt., Inc., 744 F.3d

595, 599 (9th Cir. 2014) (quoting Watec Co. v. Liu, 403

F.3d 645, 654 (9th Cir. 2005)). In Airs Aromatics, as

here, the Ninth Circuit assessed whether an alleged

common law mark holder had adequately pleaded an infringement claim against a junior user. See 744 F.3d. at

599-600. The Ninth Circuit concluded that the plaintiff

failed to show “the kind of continuous, public usage of a

trademark that serves to identify the marked goods to

the public as those of the mark’s owner.” Id. at 600. Similarly, in Bazaar del Mundo, 448 F.3d at 1127, the Ninth

Circuit rejected a senior user’s effort to assert ownership in a common law mark, finding its prior use was

“merely transitory” and holding that even if the plaintiff

“acquired seniority of use at one time, its failure to continue to use the marks in commerce … allowed [defendant] as a junior user to acquire priority.”

Several other circuits likewise have recognized that

to prove ownership of a common law trademark, a plaintiff must show continuous use up through the point at

which it seeks to exclude another’s use of the mark. In

Kars 4 Kids Inc. v. America Can!, the Third Circuit

held: “‘[W]ith respect to ownership of an unregistered

mark, the first party to adopt a mark can assert ownership so long as it continuously uses the mark in

10

commerce.’” 8 F.4th 209, 219 (3d Cir. 2021). The continuous-use requirement has also been cemented in precedent from the Fifth, Sixth, and Eleventh circuits, each of

which have described continuous use as requiring ongoing use. See Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1105 (6th Cir. 1991) (holding

that a claim of infringement requires a plaintiff to

demonstrate “continuous use of the service mark”);

Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018,

1022-1023 (11th Cir. 1989) (per curiam) (“[A]ctual and

continuous use is required to acquire and retain a protectible interest in a mark.”); Blue Bell, Inc. v. Farah

Mfg. Co., 508 F.2d 1260 (5th Cir. 1975) (“[E]ven a single

use in trade may sustain trademark rights if followed by

continuous commercial utilization.”).

2. The Fourth Circuit, however, held that common

law trademark ownership can be shown by “extensive”

use at some point in the past—even where the purported

mark owner has halted use of the mark for long stretches

of time, including non-use at the time the junior user began the allegedly infringing activities. App.7a-8a & n.6,

30a-31a. This approach departs from the consensus of

other circuits and untethers common law ownership

rights from actual use in commerce. By disconnecting

rights from use, the Fourth Circuit has opened the door

to opportunistic lawsuits based on past use, and has undermined the ability of the public to have fair notice of

trademarks.

The Fourth Circuit held that “when common law

ownership of a trademark has accrued, those rights persist until—and unless—they are legally abandoned.”

App.30a-31a. That is, the court agreed with Respondent

that once a purported common law trademark holder has

shown use at some point in the past, “the § 1127 statutory abandonment test is the only proper inquiry.”

11

App.30a. And under that abandonment test, it suffices

that a purported mark holder merely “intended to resume use of its trademark” at some point in the future,

even if it has ceased use of that trademark for years.

App.17a. In cabining the continuous-use test to the initial acquisition of ownership rights at some point in the

past—and declaring it irrelevant to the question

whether a mark holder has retained its rights to the present—the Fourth Circuit effectively rewrote the continuous-use requirement as “continuous use for a period of

time in the past.”

That logic had previously appeared only in a handful

of district court decisions. See, e.g., Rosenshine v. A.

Meshi Cosms. Indus. Ltd., 2020 WL 1914648, at *8

(E.D.N.Y. Mar. 30, 2020) (argument that plaintiffs

lacked “‘common law right to a trademark through actual and continuous use of the mark’ … is more properly

characterized as an abandonment argument”); George

Nelson Found. v. Modernica, Inc., 12 F. Supp. 3d 635,

645 (S.D.N.Y. 2014) (“Defendant does not assert the initial use was insufficient to establish rights to the mark,

but instead asserts Plaintiff has failed to use the mark

through the present period. This argument is more

properly framed as a question of abandonment, rather

than a failure to establish rights to the mark.”). The

Fourth Circuit’s adoption of this approach created a circuit-level split of authority.

The Fourth Circuit held that the Third Circuit’s decision in Kars 4 Kids and the Ninth Circuit’s decision in

Airs Aromatics, each of which inquired into whether the

purported mark holder had continuously used the mark

in commerce, should be “cabined to the initial accrual of

ownership rights in a common law trademark.” App.30a

n.15. But neither the Third Circuit nor the Ninth Circuit

takes such a narrow view. Indeed, as the Ninth Circuit

12

stated fifty years ago, “argu[ing] that there is a continuing use unless the user has abandoned the mark creates

a false issue.” Casual Corner Assocs., Inc. v. Casual

Stores of Nev., Inc., 493 F.2d 709, 712 (9th Cir. 1974). In

the Third and Ninth circuits—as well as several others—a mark holder attempting to demonstrate it has retained its rights to a common law mark must show that

it has continuously used a mark in commerce and overcome any evidence of abandonment.3 See Commerce

Nat’l Ins. Servs., 214 F.3d at 438 (“With respect to ownership of an unregistered mark, the first party to adopt

a mark can assert ownership so long as it continuously

uses the mark in commerce.” (emphasis added)); TallyHo, 889 F.2d at 1022-1023 (“actual and continuous use is

required to acquire and retain a protectible interest in a

mark” (emphasis added)). The Fourth Circuit now dispenses with the first of those inquiries. The Fourth Circuit has now lowered the bar for legal ownership of common law trademarks by limiting the continuous-use requirement to use in the past.

The circuit conflict just described means businesses

seeking to use a trademark within the Third, Fifth,

Sixth, Ninth, and Eleventh Circuits can rely on the

3

As a practical matter, the continuous-use requirement for

common law marks means that it may not always be necessary to

reach abandonment in cases involving common law trademarks; if a

mark is not continuously used, that will end the inquiry and moot

the need to analyze abandonment. But the continuous-use requirement does not preclude the relevance of abandonment in common

law trademark cases. For example, if a party continuously used a

mark up until the point at which the junior user began the allegedly

infringing activities, but then later affirmatively abandoned the

mark, that party could maintain a trademark claim against the junior user up until the point of abandonment. That is, the party could

properly bring suit against the junior user, but the damages period

would be circumscribed by the abandonment.

13

trademark registry and a search of marks in actual use

by active businesses to learn what trademarks are available. In the Fourth Circuit, these businesses will never

have certainty that an unregistered mark without indications of active business use is available for adoption.

For example, as is common in the industry, in this case

T-Mobile conducted a comprehensive clearance search

before adopting the name SIMPLY PREPAID.

C.A.J.A.3596. This search consisted of reviewing both

registered marks and marks in actual use in commerce.

Id. Through that search, T-Mobile concluded that

SIMPLY PREPAID was not registered, was not in use,

and was available for adoption. Id. It then invested substantial resources to bring stores and prepaid cellular

plans to market using that name, only to have Simply

Wireless bring suit and seek over a billion dollars in purported damages. To remedy the circuit split created by

the Fourth Circuit’s decision, this Court should grant

the petition and require plaintiffs seeking to exclude others from use to demonstrate continuous use to establish

ownership in a common law trademark.

II. THE DECISION BELOW IS WRONG

The Fourth Circuit’s decision departing from the

majority view was incorrect. It ignores two core principles of trademark law: the law’s central purpose of preventing consumer confusion, and the importance the law

places on notice to the marketplace of trademark rights.

First, the Fourth Circuit’s decision to abandon a

continuous-use requirement is detached from the “primary mission” of trademark law: preventing consumers

from being “confuse[d] … about source,” i.e., ensuring

they do not “think that one producer’s products are another’s.” Jack Daniel’s Props., Inc. v. VIP Prods. LLC,

599 U.S. 140, 156-157 (2023). Few consumers are likely

14

to be confused as to the source of a good simply because

the mark was once—years ago, and only sporadically—

used on another good. The continuous-use requirement

ensures that the enforcement of a common law trademark in fact serves consumers’ interests in avoiding confusion of the sources of goods and services, rather than a

sporadic trademark user’s interest in obtaining a windfall in court.

Second, the Fourth Circuit’s opinion ignores the importance of notice in trademark law. Because a trademark registration places the marketplace on notice that

the registrant claims ownership of that mark in connection with its business, the act of registration creates a

presumption of validity and shifts the burden to the

party challenging validity of the mark. See 15 U.S.C.

§ 1057(b)). And in the case of registered, incontrovertible marks under 15 U.S.C. § 1115—those marks registered for more than 5 years for which the owner has filed

an affidavit of incontestability, see id. § 1065—this presumption of validity becomes conclusive, with only a set

number of defenses against the validity of the mark remaining pursuant to § 1115(b), including abandonment.

By contrast, for unregistered marks, no formal vehicle

exists to place the industry on notice of a putative trademark holder’s claim to rights in the mark. For that very

reason, courts have long noted that establishing rights

in a common law mark may require more extensive use

than that necessary to register the mark with the Patent

and Trademark Office. See, e.g., Lucent Info. Mgmt.,

Inc. v. Lucent Techs., Inc., 986 F. Supp. 253, 258-259 (D.

Del. 1997) (“The ‘use’ that satisfies the registration requirement may not be sufficient ‘if [the] owner seeks to

use the mark to stifle the efforts of others.’ Thus, the

standard for determining which activities will establish

ownership of a trademark without registration is much

15

stricter than the standard for determining whether a

mark is registrable.” (internal citations omitted)), aff’d,

186 F.3d 311 (3d Cir. 1999). And correspondingly, until

the panel’s decision, the circuit courts—including the

Fourth Circuit—agreed that to establish ownership of a

common law trademark, the alleged trademark holder’s

use must be “deliberate and continuous, not sporadic,

casual or transitory.” Larsen v. Terk Techs. Corp., 151

F.3d 140, 146 (4th Cir. 1998); see also George & Co., LLC

v. Imagination Ent. Ltd., 575 F.3d 383, 400-401 (4th Cir.

2009) (“[S]o long as a person is the first to use a particular mark … and so long as that owner continues to make

use of the mark, he is entitled to prevent others from using the mark.”) (quotation marks omitted); Airs Aromatics, 744 F.3d at 599; Kars 4 Kids, 8 F.4th at 219.

The Fourth Circuit’s decision discards these principles, effectively conferring on common law trademark

claimants one of the powerful protections until now reserved for trademark registrants. Despite contravening

longstanding principles of trademark law, the Fourth

Circuit rested its departure on a slender legal thread. In

rejecting T-Mobile’s argument as to the continuous-use

requirement, the Fourth Circuit cited two cases from

other circuits analyzing abandonment for a common law

trademark. See App.32a (citing Vais Arms, Inc. v. Vais,

383 F.3d 287, 293-294 (5th Cir. 2004); Natural Answers,

Inc. v. SmithKline Beecham Corp., 529 F.3d 1325, 13291330 (11th Cir. 2008)). However, the question whether

abandonment can apply to common law trademarks was

not in dispute here, and neither Vais Arms nor Natural

Answers rejects the requirement of continuous use to

establish common law ownership rights. In Vais Arms,

the alleged common law trademark owner made his intent to abandon a mark explicit by selling the mark and

moving to a foreign country. See 383 F.3d at 290 (finding

16

“no genuine issue of material fact existed as to whether

[defendant] had abandoned the … mark in selling his

business … and leaving the country.”). And similarly, in

Natural Answers, the defendant’s evidence of abandonment was unrebutted save for the defendant’s CEO’s

“bare assertion … that it intended to resume use” if certain “inchoate and speculative” conditions were satisfied. 529 F.3d at 1330. Nothing in those fact patterns

negates the continuous-use requirement—an owner’s

expressed intent to abandon could cause loss of trademark rights even where an owner can show continuous

use. See also supra note 4.

Rather than confronting the weight of authority establishing that continuous use is required to establish

common law rights, the Fourth Circuit simply presumed

that common law ownership is established through allegedly “extensive” use at some point in the past. See

App.7a-8a & n.6, 30a-31a. But as several circuits have

held, a party seeking to exclude others from use of a

mark can demonstrate ownership of the mark only by

continuing to use it in commerce. See supra pp. 9-10.

This standard aligns with the core purposes of trademark law and avoids fundamental unfairness. Where a

company fails to register a mark (and thus fails to place

the public on notice of its claim to exclusive use), the continuous-use requirement rightly requires that the company actually use the mark that it claims to own, and

thereby ensures that companies seeking to adopt a mark

may ascertain what is available and what has been

claimed. The Court should grant certiorari in order to

correct the Fourth Circuit’s erroneous elimination of the

continuous-use requirement.

17

III. THE QUESTION PRESENTED IS EXCEPTIONALLY

IMPORTANT, AND THIS IS AN EXCELLENT VEHICLE TO

RESOLVE IT

The question presented also warrants this Court’s

review because of its exceptional importance. As explained in the preceding section, the Fourth Circuit’s decision unmoors common law trademark rights from

trademark law’s two most important animating principles: the avoidance of consumer confusion, and the provision of notice to the marketplace. By allowing a putative common law trademark holder to preclude another’s

use based on sporadic past use, the Fourth Circuit allowed for such exclusionary rights even where (as in this

case) there is no present marketplace confusion—and

even where (as in this case) a party conducting a diligent

clearance search would be unable to find evidence of

those rights. The conceptual importance of the Fourth

Circuit severing the link between common law trademark rights and the core principles of the trademark

system is alone reason to grant certiorari, and further

cause for certiorari is the likelihood of significant practical problems arising from the Fourth Circuit’s decision.

First, the Fourth Circuit’s decision is likely to generate wasteful expenditures by many firms in situations

like T-Mobile’s. Absent the continuous-use requirement, companies—like T-Mobile in this case—could invest in a mark, only to find those resources wasted when

an alleged prior user later asserts common law rights to

a sporadically used mark. Under the Fourth Circuit’s

legal framework, businesses adopting marks will be under constant risk of litigating those marks if a supposedly senior mark-holder who used the mark in the past

in a “‘sporadic, casual or transitory’” manner emerges to

capitalize on its unused mark. Larsen, 151 F.3d at 146.

For example, under the Fourth Circuit’s new standard,

18

a “senior” mark holder could begin using a mark to identify its goods, cease use for years, and then bring suit

when a “junior” user, unaware of this earlier use and

having confirmed the mark is neither registered nor in

use in commerce, enters the market. The “junior” user

would then be faced with a choice—forfeit its investment

in the mark and cease use to avoid litigation or incur the

cost of litigation in the hopes that an abandonment defense can be established. The continuous-use requirement prevents that unfair dilemma by requiring either

(a) truly continuous use or (b) registration of the mark.

Second, the Fourth Circuit’s rejection of the continuous-use requirement threatens to create opportunistic

litigation over sporadically used trademarks. Indeed, it

incentivizes businesses to eschew the formal registration system entirely, in favor of common law protection

allowing ownership of a mark to be maintained notwithstanding non-use. A trademark claimant that chooses

the common law path can lay a trap for unwary firms,

who can no longer “rely on a search of the trademark

registry and their own knowledge of whether the mark

has been used” when choosing how to invest their own

resources in promoting their goods. Natural Footwear

Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 1395 (3d

Cir. 1985). That is contrary to the purpose of trademark

law, which is meant “to encourage trademark owners to

register their marks,” not only because such registration

serves the interest of market participants but also because it benefits consumers by “‘help[ing] to prevent

confusion about the source of products.’” In re International Flavors & Fragrances, Inc., 183 F.3d 1361, 1367

(Fed. Cir. 1999) (quoting Natural Footwear, 760 F.2d at

1395). If the Court does not step in to end the confusion

the Fourth Circuit’s decision has generated, the Fourth

Circuit could become a haven for forum-shopping for

19

common law trademark holders seeking to enforce dubious marks against unsuspecting businesses. That is not

a result consistent with prior precedent or the basic policies underlying trademark law.

Because the Fourth Circuit’s decision is so out of

step with the approach of other circuits, it has injected

significant uncertainty into the law, as recognized by the

leading trademark treatise following the district court’s

ruling. See McCarthy on Trademarks and Unfair Competition § 16:9 (“The case law is unclear as to which of

two possible rules apply to priority and ownership of unregistered, common law trademarks: (1) Having once

properly used and acquired a trademark, to maintain it,

the owner must continue that use at some indeterminate

level of ‘continuity,’ or (2) Having once properly used

and acquired a trademark, the owner cannot lose that

priority unless it satisfies the requirements of trademark abandonment.” (citing Simply Wireless, Inc. v. TMobile US, Inc., 638 F. Supp. 3d 644, 654, 658 (E.D. Va.

2022))). This Court can and should resolve that uncertainty.

This case is the ideal vehicle to do so. The key factual issue—whether Simply Wireless continuously used

the SIMPLY PREPAID name prior to T-Mobile’s use—

is undisputed. It did not. The parties agree that Simply

Wireless ceased using the name SIMPLY PREPAID for

at least three years prior to T-Mobile’s adoption of the

name and repeatedly engaged in significant periods of

non-use thereafter. App.7a, 11a n.12; App.37a. As a result, the question presented is plainly outcome-determinative: If continuous and uninterrupted use of a common

law mark is required to retain common law ownership,

there is no dispute that Simply Wireless lacks rights in

SIMPLY PREPAID. Indeed, there is little doubt that

the other circuits that have addressed “continuous use”

20

would have reached a different result here, and that this

fact pattern presents a clearcut vehicle for addressing

this important legal issue.

The Court should accordingly take this opportunity

to resolve the question.

CONCLUSION

For the foregoing reasons, the petition for a writ of

certiorari should be granted.

Respectfully submitted.

BRITTANY B. AMADI

ANDREW K. WAKS

WILMER CUTLER PICKERING

HALE AND DORR LLP

2100 Pennsylvania Ave., NW

Washington, DC 20037

GIDEON HANFT

WILMER CUTLER PICKERING

HALE AND DORR LLP

250 Greenwich Street

New York, NY 10007

DECEMBER 2024

JOSEPH J. MUELLER

Counsel of Record

MICHAELA P. SEWALL

RAUVIN A. JOHL

WILMER CUTLER PICKERING

HALE AND DORR LLP

60 State Street

Boston, MA 02109

(617) 526-6000

joseph.mueller@wilmerhale.com