Opposition Brief — T-Mobile US, Inc., fka T-Mobile USA, Inc., et al., Petitioners v. Simply Wireless Inc.

NO. 24-637

In the

Supreme Court of the United States

________________

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

AL.,

Petitioners,

v.

SIMPLY WIRELESS, INC.,

________________

Respondent.

On Petition for Writ of Certiorari to the United

States Court of Appeals for the Fourth Circuit

________________

BRIEF IN OPPOSITION

________________

SEAN PATRICK ROCHE

ROBERT D. LITOWITZ

CAMERON/MCEVOY

Counsel of Record

PLLC

SAUL COHEN

4100 Monument

SHELBY A. MCGOWAN

Corner Dr., Suite 420 KELLY IP, LLP

Fairfax, VA 22030

1300 19th Street, NW,

Suite 420

JOHN R. GERSTEIN

Washington, D.C. 20036

CLYDE & CO US LLP

(202) 808-3570

1775 Pennsylvania

robert.litowitz@kelly-ip.com

Ave, NW, 4th Floor

Washington, DC 20006

QUESTION PRESENTED

Under the Lanham Act, a “mark,” expressly

defined to include both registered and unregistered (or

“common law”) marks, “shall be deemed to be

‘abandoned’ … [w]hen its use has been discontinued

with intent not to resume such use.” 15 U.S.C. § 1127.

The Fourth Circuit rejected T-Mobile’s novel

argument that any gap in use of an unregistered mark

renders it unprotectable, regardless of the trademark

owner’s history of use, its reasons for pausing use, and

its intent to resume use. Instead, following the

statutory test applied across the circuits, the Fourth

Circuit held that once established through bona fide

use, trademark rights in all marks (common law or

registered) persist unless they have been abandoned.

That test for abandonment expressly requires nonuse

and the intent not to resume use.

The question presented is:

Are unregistered marks subject to a non-statutory

“continuous use” requirement?

ii

CORPORATE DISCLOSURE STATEMENT

Respondent Simply Wireless, Inc. has no

outstanding shares or debt securities in the hands of

the public, and it does not have a parent company. No

publicly held company has a 10% or greater ownership

interest in Respondent.

iii

TABLE OF CONTENTS

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

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

TABLE OF CONTENTS............................................ iii

TABLE OF AUTHORITIES ...................................... iv

RELEVANT STATUTORY PROVISIONS ................. 1

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

STATEMENT OF THE CASE .................................... 3

A. Factual background ...................................... 3

B. Proceedings below ........................................ 5

REASONS FOR DENYING THE PETITION ........... 6

I.

The Fourth Circuit faithfully applied the

Lanham Act, this Court’s precedent, and

common law principles. ....................................... 6

A. The Lanham Act’s abandonment test is

the sole criterion for loss of rights. .............. 6

B. T-Mobile’s “any gap in use” test conflicts

with other provisions of the Lanham Act.

....................................................................... 8

C. T-Mobile’s proposed rule has no common

law pedigree. ................................................. 9

II. There is no genuine circuit split. ...................... 10

A. The circuits apply the abandonment test

to unregistered marks. ............................... 10

B. T-Mobile’s cases do not establish a

genuine split. .............................................. 11

III. T-Mobile’s policy arguments are not a basis

for review............................................................ 15

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

iv

TABLE OF AUTHORITIES

Cases

Page

62 Cases, More or Less, Each Containing Six

Jars of Jam v. United States,

340 U.S. 593 (1951) .................................................. 7

Abitron Austria GmbH v. Hetronic

International, Inc.,

600 U.S. 412 (2023) ................................................ 16

Airs Aromatics LLC v. Victoria’s Secret

Stores Brand Management, Inc.,

744 F.3d 595 (9th Cir. 2014) .................................. 14

B&B Hardware, Inc. v. Hargis Industries,

Inc.,

575 U.S. 138 (2015) .................................................. 9

Blue Bell, Inc. v. Farah Manufacturing Co.,

508 F.2d 1260 (5th Cir. 1975) .......................... 11, 12

Casual Corner Associates, Inc. v. Casual

Stores of Nevada, Inc.,

493 F.2d 709 (9th Cir. 1974) .................................. 11

Commerce National Insurance Services Inc.

v. Commerce Insurance Agency, Inc.,

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

Cumulus Media, Inc. v. Clear Channel

Communications, Inc.,

304 F.3d 1167 (11th Cir. 2002) ............................... 10

Department of Parks & Recreation v. Bazaar

del Mundo,

448 F.3d 1118 (9th Cir. 2006) ................................. 15

v

Dewberry Group, Inc. v. Dewberry Engineers

Inc.,

604 U. S. ____ (2025) ............................................. 16

Electro Source, LLC v. Brandess-Kalt-Aetna

Group, Inc.,

458 F.3d 931 (9th Cir. 2006) .................................. 17

Emergency One, Inc. v. American FireEagle,

Ltd.,

228 F.3d 531 (4th Cir. 2000) .................................... 5

General Healthcare Ltd. v. Qashat,

364 F.3d 332 (1st Cir. 2004) ................................... 10

Hall Street Associates, L.L.C. v. Mattel, Inc.,

552 U.S. 576 (2008) ................................................ 13

Herb Reed Enterprises, LLC v. Florida

Entertainment Management, Inc.,

736 F.3d 1239 (9th Cir. 2013) ................................ 10

Homeowners Group, Inc. v. Home Marketing

Specialists, Inc.,

931 F.2d 1100 (6th Cir. 1991) ................................ 13

Imperial Tobacco Ltd. v. Philip Morris, Inc.,

899 F.2d 1575 (Fed. Cir. 1990)............................... 18

ITC Ltd. v. Punchgini, Inc.,

482 F.3d 135 (2d Cir. 2007) .................................... 17

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

LLC,

599 U.S. 140 (2023) ................................................ 18

Jama v. Immigration & Customs

Enforcement,

543 U.S. 335 (2005) ................................................ 14

Kars 4 Kids Inc. v. America Can!,

8 F.4th 209 (3d Cir. 2021) ................................ 12, 13

vi

Kirtsaeng v. John Wiley & Sons, Inc.,

568 U.S. 519 (2013) ................................................ 15

La Societe Anonyme des Parfums le Galion v.

Jean Patou, Inc.,

495 F.2d 1265 (2d Cir. 1974) .................................. 18

Larsen v. Terk Technologies Corp.,

151 F.3d 140 (4th Cir. 1998) .................................. 12

Marshak v. Treadwell,

240 F.3d 184 (3d Cir. 2001) .................................... 10

Matal v. Tam,

582 U.S. 218 (2017) ................................................ 17

Natural Answers, Inc. v. SmithKline

Beecham Corp.,

529 F.3d 1325 (11th Cir. 2008) ........................ 10, 13

Romag Fasteners, Inc v. Fossil, Inc.,

590 U.S. 212 (2020) ............................................ 7, 16

Rust Environment & Infrastructure, Inc. v.

Teunissen,

131 F.3d 1210 (7th Cir. 1997) ................................ 10

Saxlehner v. Eisner & Mendelson Co.,

179 U.S. 19 (1900) .................................................... 9

Silverman v. CBS Inc.,

870 F.2d 40 (2d Cir. 1989) ...................................... 10

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

877 F.3d 522 (4th Cir. 2017) ................................ 3, 5

Southern California Darts Association v.

Zaffina,

762 F.3d 921 (9th Cir. 2014) .................................. 10

Stilson & Associates, Inc. v. Stilson

Consulting Group, LLC,

129 F. App’x 993 (6th Cir. 2005) ............................ 10

vii

Tally-Ho, Inc. v. Coast Community College

District,

889 F.2d 1018 (11th Cir. 1989) .............................. 13

Timothy B. O’Brien LLC v. Knott,

No. 3:18-cv-00684, 2018 WL 5456550 (W.D.

Wis. Oct. 29, 2018) ................................................. 14

TRW Inc. v. Andrews,

534 U.S. 19 (2001) .................................................... 8

Two Pesos, Inc. v. Taco Cabana, Inc.,

505 U.S. 763 (1992) ............................................ 9, 16

Vais Arms, Inc. v. Vais,

383 F.3d 287 (5th Cir. 2004) ...................... 10, 11, 18

Watec Co., v. Liu,

403 F.3d 645 (9th Cir. 2005) ............................ 14, 15

West Florida Seafood, Inc. v. Jet Restaurants,

Inc.,

31 F.3d 1122 (Fed. Cir. 1994) ................................. 11

Statutes

Page

15 U.S.C. § 1052 ................................................. 2, 3, 8

15 U.S.C. § 1065 ..................................................... 3, 8

15 U.S.C. § 1115 ...................................................... 3, 8

15 U.S.C. § 1117 ........................................................ 16

15 U.S.C. § 1125........................................................ 16

15 U.S.C. § 1127...................... 1, 2, 6, 7, 14, 16, 17, 18

Treatises

Page

Callmann on Unfair Competition,

Trademarks and Monopolies (4th ed.) .................... 2

viii

McCarthy on Trademarks and Unfair

Competition (5th ed.) ................................... 8, 10, 18

Restatement (Third) of Unfair Competition

(1995) ...................................................................... 10

RELEVANT STATUTORY PROVISIONS

Section 45 of the Lanham Act provides, in

relevant part:

A mark shall be deemed to be “abandoned”

if either of the following occurs:

(1) When its use has been discontinued

with intent not to resume such use. Intent

not to resume may be inferred from

circumstances. Nonuse for 3 consecutive

years shall be prima facie evidence of

abandonment. “Use” of a mark means the

bona fide use of such mark made in the

ordinary course of trade, and not made

merely to reserve a right in a mark….

15 U.S.C. § 1127 (emphasis added).

Section 2 of Lanham Act provides, in relevant

part:

No trademark by which the goods of the

applicant may be distinguished from the

goods of others shall be refused registration

on the principal register on account of its

nature unless it— ….

(d) Consists of or comprises a mark which

so resembles a mark registered in the

Patent and Trademark Office, or a mark

or trade name previously used in the

United States by another and not

abandoned, as to be likely, when used on

or in connection with the goods of the

2

applicant, to cause confusion, or to cause

mistake, or to deceive ….

15 U.S.C. § 1052 (emphasis added).

INTRODUCTION

T-Mobile seeks review of the portion of the Fourth

Circuit’s decision rejecting the argument that common

law marks are subject to a “continuous use”

requirement while registered trademarks are not.

T-Mobile concedes that registered marks cannot be

taken by another unless abandoned, i.e., discontinued

“with intent not to resume … use.” 15 U.S.C. § 1127.

But under T-Mobile’s proposed double standard,

common law trademarks can be appropriated during

any gap in use, even where the trademark owner

maintains the intent to resume use and has not

abandoned its mark.

T-Mobile pins its petition on various circuit court

decisions mentioning “continuous use” as shorthand

for abandonment or as a prerequisite for establishing

common law trademark rights, an unremarkable

principle that the Fourth Circuit acknowledged in the

opinion below. But none of those circuit courts has

deliberately chosen T-Mobile’s “any gap in use” test

over the statutory abandonment test. It is

uncontroversial that “once common-law mark rights

are established, gaps in use are irrelevant unless they

constitute abandonment.” 3 Callmann on Unfair

Competition, Trademarks and Monopolies § 20:7 (4th

ed.).

As the Fourth Circuit panel recognized, T-Mobile’s

theory conflicts with the Lanham Act’s sole provision

concerning loss of rights. Under that provision, which

3

applies to registered and common marks law alike,

trademark owners maintain their rights even if they

discontinue use for weeks, months, or even years,

unless they act with an “intent not to resume such

use.” 15 U.S.C. § 1127. Elsewhere in the Lanham Act,

Congress provided that common law trademarks

remain in force unless abandoned. See 15 U.S.C. §

1052(d). It also legislated “continuous use alone”

requirements related to trademark incontestability

that are absent from the abandonment provision. See,

e.g., 15 U.S.C. §§ 1065, 1115(b)(5).

Finally, T-Mobile’s policy arguments do not

warrant granting review. Congress legislated many

incentives for registration into the Lanham Act,

including the presumption of validity and

“incontestable” status. But it did not legislate different

standards for maintaining rights in registered and

unregistered marks.

The Court should decline to review the Fourth

Circuit’s decision.

STATEMENT OF THE CASE

A. Factual background

Simply Wireless is a telecommunications

company founded in 1997 that has offered, promoted,

and sold cellular phones, prepaid airtime, and

accessories, including through brick-and-mortar

stores, TV sales channels, and the internet. Pet. App.

3a-4a. Simply Wireless has both “compete[d] in the

same industry” as, and “partnered on several projects”

with, the telecommunications giant T-Mobile. Simply

Wireless, Inc. v. T-Mobile US, Inc., 877 F.3d 522, 524

(4th Cir. 2017).

4

From 2002 through 2008, Simply Wireless offered

prepaid airtime for cell phones under the SIMPLY

PREPAID trademark, earning over $20 million in

revenues. Pet. App. 4a. In 2009, Simply Wireless made

the strategic decision to pause its sales under that

trademark, always intending to resume use. Pet. App.

4a-5a. In the years following its strategic pause,

Simply Wireless maintained the SimplyPrepaid.com

domain name and took various steps to resume use.

Pet. App. 5a. One such step was negotiating with a

third party to promote SIMPLY PREPAID offerings on

the third party’s successful online retail platform. Pet.

App. 5a-7a. Those negotiations resulted in resumed

use of the mark in commerce beginning in July 2012

and continuing into 2013. Pet. App. 7a. Simply

Wireless also later sold prepaid phones under SIMPLY

PREPAID through a revamped SimplyPrepaid.com

website and through Amazon. Pet. App. 8a.

In or around August 2014, while planning to

again resume use of its SIMPLY PREPAID mark,

Simply Wireless learned of T-Mobile’s plan to open

hundreds of stores selling prepaid cell phone products

using the exact same SIMPLY PREPAID trademark.

Pet. App. 7a-8a. T-Mobile’s actions immediately led to

questions and confusion about Simply Wireless’s

involvement. C.A.J.A. 682, 1128-30, 1548-49. T-Mobile

refused to stop using SIMPLY PREPAID in response

to Simply Wireless’s requests. After being put on

express notice of Simply Wireless’s rights in SIMPLY

PREPAID, T-Mobile merely pivoted to using the mark

with prepaid cell phone plans instead of brick-andmortar stores. C.A.J.A. 1217-24.

5

B. Proceedings below

Simply Wireless sued T-Mobile for trademark

infringement in the U.S. District Court for the Eastern

District of Virginia in 2015, shortly after it learned of

T-Mobile’s actions. Pet. App. 8a-9a. T-Mobile

successfully moved to dismiss in favor of arbitration.

See Simply Wireless, 877 F.3d at 526. After an

arbitrator determined that Simply Wireless’s

trademark infringement claims are not subject to

arbitration, Simply Wireless again filed suit in 2021.

Pet. App. 8a-9a.

T-Mobile moved for summary judgment, arguing

that Simply Wireless had lost its trademark rights by

failing to make “continuous use” of the SIMPLY

PREPAID mark. Pet. App. 51a. The district court

found that T-Mobile’s “view conflicts with

fundamental principles of trademark law.” Pet. App.

56a. It noted that “the general rule … is that the

‘deliberate and continuous’ test applies only to the

initial accrual of trademark rights, not whether a

common law owner has maintained such rights.” Pet.

App. 58a. “Whether a common law trademark owner

has retained their property rights in a mark is more

properly analyzed through an abandonment analysis.”

Id.

The district court then turned to that statutory

abandonment analysis, an argument that T-Mobile

had raised in a footnote. Pet. App. 50a n.17, 59a-69a.

Under Fourth Circuit precedent, non-use by the

trademark owner “for three consecutive years”

establishes a rebuttable “inference of intent not to

resume use.” Emergency One, Inc. v. American

FireEagle, Ltd., 228 F.3d 531, 536 (4th Cir. 2000). The

6

trademark owner rebuts that presumption by

“producing evidence of … intent to resume use” during

the three-year “presumption period.” Id. Simply

Wireless presented a declaration of its CEO and

corroborating documents showing that it began

making concrete plans to resume use during the

presumption period, and that it in fact resumed use

mere months later. Pet. App. 4a-7a. The district court

nonetheless granted summary judgment on

abandonment grounds. Pet. App. 69a.

The Fourth Circuit reversed the district court’s

summary judgment order, holding that the evidence

“strongly supports Simply Wireless’s essential and

timely intent to resume use of its contested

trademark.” Pet. App. 22a. It then rejected T-Mobile’s

alternative ground for affirmance, i.e., that lack of

continuous use alone forfeits trademark rights,

holding that “when common law ownership of a

trademark has accrued, those rights persist until—

and unless—they are legally abandoned.” Pet. App.

30a-31a. T-Mobile seeks this Court’s review only of the

latter holding.

REASONS FOR DENYING THE PETITION

I.

The Fourth Circuit faithfully applied the Lanham

Act, this Court’s precedent, and common law

principles.

A. The Lanham Act’s abandonment test is the

sole criterion for loss of rights.

T-Mobile seeks to displace the abandonment test

with its intent-free “any gap in use” test, but the

statute is clear. Under the Lanham Act, “[a] mark

7

shall be deemed to be ‘abandoned’ if … [1] its use has

been discontinued [2] with intent not to resume such

use.” 15 U.S.C. § 1127. “Mark” is a defined term that

includes

both

registered

and

unregistered

1

trademarks. This Court noted in another trademark

case that it does not “usually read into statutes words

that aren’t there.” Romag Fasteners, Inc v. Fossil, Inc.,

590 U.S. 212, 215 (2020). It is equally true that this

Court does not excise words—“with intent not to

resume such use,” 15 U.S.C. § 1127—that are there.2

Hoping to sidestep this statutory construction

conundrum, T-Mobile claims that both the

abandonment and “any gap in use” tests apply to

unregistered marks. Pet. at 12 and n.3. But

defendants like T-Mobile would never have reason to

assert abandonment if any gap in use were enough to

disarm common law trademarks.3 T-Mobile’s test

would thus make the statutory abandonment analysis

1 “Mark” is defined as “any trademark, service mark, collective

mark, or certification mark.” 15 U.S.C. § 1127. “Registered

mark”—another term defined in the same section of the Lanham

Act—is not used in the abandonment test.

See 62 Cases, More or Less, Each Containing Six Jars of Jam

v. United States, 340 U.S. 593, 596 (1951) (“Congress expresses

2

its purpose by words. It is for us to ascertain—neither to add nor

to subtract, neither to delete nor to distort.”).

3 T-Mobile tries to square the circle by positing that its “any gap

in use” test becomes irrelevant once a lawsuit is filed while

abandonment remains relevant during the pendency of a suit.

See Pet. at 12 n.3. It never explains the reason for this

inconsistency. Nor does T-Mobile explain the numerous decisions

applying the statutory abandonment test to common law marks

even where use was discontinued before the lawsuit. See infra

note 6.

8

redundant, a result that would defy the “cardinal

principle of statutory construction” that “no clause,

sentence, or word shall be superfluous, void, or

insignificant.” TRW Inc. v. Andrews, 534 U.S. 19, 31

(2001).

B. T-Mobile’s “any gap in use” test conflicts with

other provisions of the Lanham Act.

Congress deliberately required continuous use in

some provisions of the Lanham Act, but not for

maintenance of rights. For example, a trademark

registration can become incontestable only after it

“has been in continuous use for five consecutive

years.” 15 U.S.C. § 1065. And a senior user who has

“continuously used” its mark has a defense against an

incontestable mark. See 15 U.S.C. § 1115(b)(5). In the

context of those incontestability provisions,

“‘[c]ontinuous’ from a date prior to registration is not

the same as a lack of abandonment.” 4 McCarthy on

Trademarks and Unfair Competition § 26:44 (5th ed.)

(“McCarthy”). Congress thus knew how to impose

stricter “continuous use alone” standards when it

wanted to.

Furthermore, under Section 2(d) of the Lanham

Act, only a prior unregistered mark that “has not been

abandoned” can block registration of a competing

trademark.4 This is another conclusive example where

the statute speaks of “abandonment” rather than

4 15 U.S.C. § 1052(d) (“No trademark … shall be refused

registration … unless it … [c]onsists of or comprises a mark

which so resembles a mark registered in the Patent and

Trademark Office, or a mark or trade name previously used in

the United States by another and not abandoned, as to be likely

… to cause confusion …” (emphasis added)).

9

continuous use. Because the same likelihood-ofconfusion test applies to trademark registration and

trademark infringement, see B&B Hardware, Inc. v.

Hargis Industries, Inc., 575 U.S. 138, 154 (2015),

T-Mobile’s “any gap in use” theory would create an

anomaly—unless abandoned, a prior common law

mark would prohibit registration of an infringing

mark, but that same mark could not be enforced

during a gap in use falling short of abandonment. The

plain language of the Lanham Act precludes such a

paradoxical result.5 See Two Pesos, Inc. v. Taco

Cabana, Inc., 505 U.S. 763, 768 (1992) (“the general

principles qualifying a mark for registration under § 2

of the Lanham Act are for the most part applicable in

determining whether an unregistered mark is entitled

to protection”).

C. T-Mobile’s proposed rule has no common law

pedigree.

Instead of citing the statute, T-Mobile falls back

on generalized statements about “the core purpose of

trademark law” of protecting against consumer

confusion. Pet. at 8. But intent has been a crucial part

of the test for maintaining trademark rights since long

before the Lanham Act. See, e.g., Saxlehner v. Eisner

& Mendelson Co., 179 U.S. 19, 31 (1900) (“To establish

the defence of abandonment it is necessary to show not

only acts indicating a practical abandonment, but an

5 This result would likely materialize here if T-Mobile’s position

were adopted, because Simply Wireless is opposing registration

of T-Mobile’s SIMPLY PREPAID trademark in addition to

pursuing infringement claims. See Simply Wireless, Inc. v.

T-Mobile USA, Inc., Opp. No. 91220938 (T.T.A.B. filed Mar. 6,

2015).

10

actual intent to abandon.”). The common law test for

loss of trademark rights is identical to the Lanham

Act’s, defining “abandonment in the same two part

way as does federal law.” McCarthy § 17:1; see also

Restatement (Third) of Unfair Competition § 30(2)(a)

(1995) (“A trademark … is abandoned if: (a) the party

asserting rights in the designation has ceased to use

the designation with an intent not to resume use ….”).

II. There is no genuine circuit split.

A. The circuits apply the abandonment test to

unregistered marks.

Every circuit that T-Mobile claims has adopted its

“any gap in use” test has applied the abandonment

test to unregistered marks.6 For example, in Vais

Arms, there was no dispute about whether the

plaintiff had discontinued use of its unregistered VAIS

trademark. 383 F.3d at 293. To assess abandonment,

the Fifth Circuit examined the evidence of the

plaintiff ’s intent to abandon and the plaintiff ’s

arguments to the contrary before determining that the

See, e.g., Southern Cal. Darts Ass’n v. Zaffina, 762 F.3d 921,

932 (9th Cir. 2014); Herb Reed Enters., LLC v. Florida Entm’t

Mgmt., Inc., 736 F.3d 1239, 1247-48 (9th Cir. 2013); Natural

Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325, 1329

(11th Cir. 2008); Stilson & Assocs., Inc. v. Stilson Consulting Grp.,

LLC, 129 F. App’x 993, 995 (6th Cir. 2005); General Healthcare

Ltd. v. Qashat, 364 F.3d 332, 337-38 (1st Cir. 2004); Vais Arms,

Inc. v. Vais, 383 F.3d 287, 293 (5th Cir. 2004); Cumulus Media,

Inc. v. Clear Channel Commc’ns, Inc., 304 F.3d 1167, 1173-78 &

n.6 (11th Cir. 2002); Marshak v. Treadwell, 240 F.3d 184, 198-200

(3d Cir. 2001); Rust Env’t & Infrastructure, Inc. v. Teunissen, 131

F.3d 1210, 1214 (7th Cir. 1997); Silverman v. CBS Inc., 870 F.2d

40, 45 (2d Cir. 1989).

6

11

plaintiff had in fact abandoned its rights. Id. at 29395. That analysis would have been unnecessary if

T-Mobile’s “any gap in use” test applied.

Only one court of appeals besides the Fourth

Circuit has squarely addressed the issue implicated by

T-Mobile’s petition. In West Florida Seafood, Inc. v. Jet

Restaurants, Inc., the Federal Circuit expressly

rejected the argument T-Mobile makes here,

explaining in a discussion of whether a common law

mark had priority over a registration that the Lanham

Act “does not speak of ‘continuous use,’ but rather

whether the mark or trade name has been ‘previously

used in the United States by another and not

abandoned.’” 31 F.3d 1122, 1128 (Fed. Cir. 1994)

(emphasis in original).

B. T-Mobile’s cases do not establish a genuine

split.

T-Mobile seeks to manufacture a circuit split

where none exists.

For example, T-Mobile claims (at 11-12) that the

Ninth Circuit adopted its “any gap in use” test in

Casual Corner Associates, Inc. v. Casual Stores of

Nevada, Inc., 493 F.2d 709, 712 (9th Cir. 1974). But

Casual Corner was interpreting the statutory

prerequisites to a prior use defense to an incontestable

trademark. See id. (addressing “continuing use” in the

context of 15 U.S.C. §§ 1115 and 1065); see also supra

at 8. Absence of a similar requirement from the

statutory test for abandonment means that Casual

Corner supports Simply Wireless, not T-Mobile.

T-Mobile’s citation to Blue Bell, Inc. v. Farah

Manufacturing Co., 508 F.2d 1260, 1265 (5th Cir.

12

1975), is misleading for a different reason. There, the

Fifth Circuit held that the plaintiff ’s one instance of

use—attaching tags to a single shipment of goods

already bearing a different mark—was a “bad faith

attempt to reserve a mark” and thus insufficient to

“create trademark rights.” Id. at 1267 (emphasis

added). Thus, the Fifth Circuit’s statement that “even

a single use in trade may sustain trademark rights if

followed by continuous commercial utilization,” id.,

concerned the standard for establishing trademark

rights in the first place, not maintaining existing

rights. As the district court noted below, “the

‘deliberate and continuous’ test applies only to the

initial accrual of trademark rights, not whether a

common law owner has maintained such rights.” Pet.

App. 58a (discussing Larsen v. Terk Techs. Corp., 151

F.3d 140, 146 (4th Cir. 1998)). Blue Bell is thus

consistent with the Fourth Circuit’s case law.

To be sure, courts sometimes note the

unremarkable truth that loss of trademark rights

requires a lack of continuous use. But that is not the

same as holding that non-use alone is sufficient.

For example, both of T-Mobile’s Third Circuit

cases merely remark that, “[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 commerce.” Kars 4 Kids

Inc. v. America Can!, 8 F.4th 209, 219 (3d Cir. 2021);

Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins.

Agency, Inc., 214 F.3d 432, 438 (3d Cir. 2000). The

Fourth Circuit recognized that its own precedent

contains similar statements but found them

13

consistent with the statutory abandonment test.7 In

Kars 4 Kids, the prior user had continuously used its

mark, thus precluding any defense based on non-use

as a threshold matter. See 8 F.4th at 219. The Third

Circuit did not suggest, much less hold, that infringers

can escape liability based on any gap in use by a

plaintiff that has established common law rights

through years of continuous and successful prior use.

Other cases state in dicta that prior continuous

use is a requirement of a claim for infringement of an

unregistered mark, using “continuous use” as

shorthand

for

non-abandonment.

See,

e.g.,

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, 1022-23 (11th

Cir. 1989) (per curiam). Indeed, the Eleventh Circuit

later quoted its dicta from Tally-Ho that “actual and

continuous use is required” before applying the

abandonment test to a common law mark. Natural

Answers, 529 F.3d at 1329-30. Using shorthand for an

established statutory doctrine is not the same as

adopting a new one. See Hall St. Assocs., L.L.C. v.

Mattel, Inc., 552 U.S. 576, 585 (2008). And even if

those decisions had endorsed T-Mobile’s rule, none

actually applied it. Such “[d]ictum settles nothing,

even in the court that utters it.” Jama v. Immigration

7 See Pet. App. 30a (“We … ruled that the putative owner of a

common law trademark (such as Simply Wireless) is entitled to

assert priority over a junior user (such as T-Mobile) ‘so long as

that owner continues to make use of the mark.’ … But that

decision did not preclude the district court from applying the

statutory abandonment inquiry.”).

14

& Customs Enforcement, 543 U.S. 335, 352 n.12

(2005).

Airs Aromatics LLC v. Victoria’s Secret Stores

Brand Management, Inc., 744 F.3d 595 (9th Cir. 2014),

likewise falls short of establishing a genuine circuit

split. There, the plaintiff did not use its mark for seven

years, far longer than necessary to establish the

statutory presumption of abandonment. Id. at 599600; see also 15 U.S.C. § 1127 (“3 consecutive years

shall be prima facie evidence of abandonment”). The

plaintiff asserted no facts showing an intent to resume

use that could have rebutted the presumption. 744

F.3d at 599-600; see also infra at 17. Because Airs

Aromatics would thus have come out the same way

even if the court had expressly applied abandonment,

it does not stand for the proposition that T-Mobile’s

test is the law in the Ninth Circuit. Subsequent courts

have interpreted Airs Aromatics as finding

abandonment. See Timothy B. O’Brien LLC v. Knott,

No. 3:18-cv-00684, 2018 WL 5456550, at *4 (W.D. Wis.

Oct. 29, 2018).

Even assuming Airs Aromatics adopted T-Mobile’s

position, it fails to establish a mature circuit split that

warrants review. The court’s ruling on the viability of

the plaintiff ’s trademark rights was based on an

argument made for the first time in a reply brief. 744

F.3d at 599. The Ninth Circuit’s statement that “the

owner must ‘establish not only that he or she used the

mark before the mark was registered, but also that

such use has continued to the present,’” relied solely

on a quote from Watec Co. v. Liu, 403 F.3d 645, 654

(9th Cir. 2005), which in turn quoted Casual Corner.

Like Casual Corner, Watec was a case involving

15

incontestable trademark rights, where the Lanham

Act does prescribe continuous use alone as a

requirement. See id. at 652-54; see also supra at 8.8

Thus, the only decisions T-Mobile cites that even

arguably applied its “any gap in use” rule relied on a

misreading of the court’s own precedent, addressing

arguments for which it did not have the benefit of

adversarial briefing. One court’s plainly incorrect

decisions weighed against unambiguous statutory text

and otherwise unanimous practice—including in the

same court—does not warrant this Court’s review. Cf.

Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519,

548 (2013) (declining to give significant “legal weight”

to a statement on an issue that “was not … fully

argued”).

III. T-Mobile’s policy arguments are not a basis for

review.

T-Mobile spends much of its petition on policy

arguments—asserting, for example, that the Fourth

Circuit’s

approach

encourages

“opportunistic

lawsuits”

or

undermines

“public-notice

considerations.” Pet. at 3. As noted below, public policy

favors Simply Wireless’s approach. But either way,

these arguments are immaterial, because “the place

for reconciling competing and incommensurable policy

goals like these is before policymakers.” Romag

8 Department of Parks & Recreation v. Bazaar del Mundo , 448

F.3d 1118, 1127 (9th Cir. 2006), also incorrectly relied on Casual

Corner.

16

Fasteners, 590 U.S. at 219.9 As the Court recently

reiterated in Dewberry Group, Inc. v. Dewberry

Engineers Inc., the text of the Lanham Act—there, the

“defendant’s profits,” 15 U.S.C. § 1117(a), here “with

intent not to resume such use,” 15 U.S.C. § 1127—

controls over any policy concerns, no matter how

legitimate they may be. 604 U. S. ____, slip op. at 4

(2025).

In this case, however, T-Mobile’s concerns are

unfounded. For example, T-Mobile asserts that

applying the statutory abandonment analysis to

common law marks disincentivizes registration. Pet.

at 18. Yet Congress made registration optional and

included in the Lanham Act a statutory cause of action

for infringement of unregistered marks. See 15 U.S.C.

§ 1125(a). Indeed, this Court has recognized that,

under the Lanham Act, “an unregistered trademark …

should receive essentially the same protection as those

that are registered.” Two Pesos, 505 U.S. at 776

(Stevens, J., concurring) (describing majority opinion);

see also Abitron Austria GmbH v. Hetronic Int’l, Inc.,

600 U.S. 412, 416 (2023) (the Lanham Act “prohibits

the ‘us[e] in commerce’ of a protected mark, whether

registered or not, that ‘is likely to cause confusion’”)

(alteration in original).

9 T-Mobile had ample notice of Simply Wireless’s prior rights

here. First, T-Mobile executives were aware of the prior SIMPLY

PREPAID mark from T-Mobile’s long association with Simply

Wireless and its owners, who they referred to as the “Simply

Guys.” C.A.J.A. 2087. Second, Simply Wireless promptly notified

T-Mobile that its SIMPLY PREPAID stores were infringing.

C.A.J.A. 682-83, 968-69. Rather than stop, T-Mobile expanded its

infringement.

17

The benefits of registration are not imperiled by

the Fourth Circuit’s rejection of T-Mobile’s proposed

test. This Court in prior cases has listed such benefits,

including the presumption of validity, the opportunity

to attain “incontestable” status, and the ability to stop

the importation of infringing articles into the United

States. See Matal v. Tam, 582 U.S. 218, 226-27 (2017).

Neither this nor any other court lists a less strict

standard for maintaining trademark rights, i.e., the

right to pause use, as one of the advantages of

registration. Yet the volume of applications and

registrations on record at the USPTO evidences the

ample incentive for registration.

T-Mobile also overstates the threat of

“opportunistic litigation over sporadically used

trademarks.” Pet. at 18. The law already contains

safeguards that balance the rights of prior common

law trademark owners against those of newcomers.

For example, Congress legislated a statutory

presumption that “[n]onuse for 3 consecutive years

shall be prima facie evidence of abandonment.” 15

U.S.C. § 1127. That presumption has teeth. As the

Fourth Circuit explained below, “a trademark owner

‘cannot defeat an abandonment claim … by simply

asserting a vague, subjective intent to resume use of a

mark at some unspecified future date.’” Pet. App. 22a

(quoting Emergency One, 228 F.3d at 537).10 The

See also ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 150 (2d

Cir. 2007) (“a trademark owner cannot rebut a presumption of

abandonment merely by asserting a subjective intent to resume

use of the mark at some later date”); Electro Source, LLC v.

Brandess-Kalt-Aetna Grp., Inc., 458 F.3d 931, 937 (9th Cir. 2006)

10

18

Lanham Act also instructs courts to disregard use

“made merely to reserve a right in a mark.” 15 U.S.C.

§ 1127; see, e.g., La Societe Anonyme des Parfums le

Galion v. Jean Patou, Inc., 495 F.2d 1265, 1272 (2d Cir.

1974) (plaintiff ’s sale of 89 bottles of perfume over 20

years to block imports did not create trademark

rights).

Additionally, “the law’s central purpose of

preventing consumer confusion,” about which

T-Mobile claims to be concerned, Pet. at 13, is enforced

through the longstanding likelihood-of-confusion test

applied by every circuit and the USPTO. See

McCarthy § 24:30.

T-Mobile fails to mention the other of the Lanham

Act’s “twin goals”—namely, “protecting producers’

good will.” Jack Daniel’s Props., Inc. v. VIP Prods.

LLC, 599 U.S. 140, 147 (2023). In addition to

penalizing trademark owners like Simply Wireless

that are forced to pause use of their common law

marks due to market conditions, T-Mobile’s proposed

test would impede businesses’ ability to maintain

protectable goodwill in trademarks through use in

(“In cases where there is a presumption of abandonment from

nonuse, … a mere statement declaring an intent not to abandon,

or an intent to resume, use is not dispositive.”);Vais Arms, 383

F.3d at 294 (“At most, [the mark owner’s] affidavit establishes

only his subjective, uncommunicated desire not to abandon the

mark, without any indication of when or how he intended to

resume its commercial use; it does not establish a genuine issue

as to his intent to abandon.”); Imperial Tobacco Ltd. v. Philip

Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir. 1990) (“An averment

of no intent to abandon is little more than a denial in a pleading,

which is patently insufficient to preclude summary judgment on

the ground the facts are disputed.”).

19

connection with seasonal businesses (e.g., boardwalk

ice cream stands), limited-time promotional releases

(e.g., the McDonald’s McRib sandwich), expensive

offerings sold at irregular intervals (e.g., construction

services for skyscrapers), and other endeavors that

necessarily involve gaps in use. T-Mobile’s rule would

thus encourage the same “token use” that Congress

sought to prohibit.

T-Mobile uses this case as the poster child for its

parade of horribles, repeatedly and gratuitously

denigrating Simply Wireless’s motives. Pet. at 3, 13,

17-18. But the Fourth Circuit saw it differently, noting

that under the summary judgment standard, the

evidence “strongly supports Simply Wireless’s

essential and timely intent to resume use of its

contested trademark,” including by negotiating with

specific third parties to engage in a sales campaign

that came to fruition shortly thereafter. Pet. App. 22a23a. (emphasis added). And T-Mobile has never

disputed that these activities occurred long before

Simply Wireless had any inkling that T-Mobile

planned to use SIMPLY PREPAID.

This case involves one of the most sophisticated

and profitable companies in the world choosing to use

the exact mark of a known competitor for the same

types of prepaid cell phone products for which Simply

Wireless used the mark. If anything, it demonstrates

precisely why trademark law has always required

more than mere discontinuance of use before

trademark rights are forfeited.

20

CONCLUSION

For the foregoing reasons, the Court should deny

the petition for certiorari.

March 4, 2025,

Respectfully submitted,

SEAN PATRICK ROCHE

ROBERT D. LITOWITZ

CAMERON/MCEVOY

Counsel of Record

PLLC

SAUL COHEN

4100 Monument

SHELBY A. MCGOWAN

Corner Dr., Suite 420 KELLY IP, LLP

Fairfax, VA 22030

1300 19th Street, NW,

Suite 420

JOHN R. GERSTEIN

Washington, D.C. 20036

CLYDE & CO US LLP

(202) 808-3570

1775 Pennsylvania

robert.litowitz@kelly-ip.com

Ave, NW, 4th Floor

Washington, DC 20006

Counsel for Respondent