Let's ‘Have a Jury Decide’ if Simply Prepaid Mark Belongs to Simply Wireless, 4th Circuit Told

The November 2022 ruling in the U.S. District Court for Eastern Virginia granting T-Mobile summary judgment over its rights to use the Simply Prepaid trademark in commercial activity on grounds that Simply Wireless had abandoned it (see 2211250016) was “unprecedented,” Simply Wireless’ counsel, Robert Litowitz of Kelly IP, told the 4th U.S. Circuit Court of Appeals in oral argument Wednesday. Simply Wireless is asking the 4th Circuit to reverse the summary judgment decision and remand the case to the district court for a jury trial to win back its rights to Simply Prepaid as an “established common law” trademark, said Litowitz. “We’ve looked for a case finding summary judgment on these facts” but were unable to find one, said Litowitz. “Simply Wireless should be permitted to have a jury decide whether this valuable trademark, which it had used successfully,” belongs to Simply Wireless, he said. “Simply Wireless used Simply Prepaid very effectively, and it was known in the industry,” said Litowitz. When T-Mobile announced it was opening 500 Simply Prepaid retail stores, the then-CEO of Simply Wireless got calls from Sprint, falsely congratulating him for having sold the Simply Prepaid trademark to T-Mobile, he said. The owners of Simply Wireless “are shrewd, they’re savvy, they’re sophisticated,” but in 2012, “they were not clairvoyant,” he said. “They could not have dreamed that their former partner, T-Mobile, would take a Simply brand and use it,” he said. The district court's decision “should be affirmed on either of two grounds,” that Simply Wireless abandoned use of Simply Prepaid, a the lower court found, or that it was guilty of “no continuous use” of the trademark, countered T-Mobile attorney Joseph Mueller of WilmerHale. “The issue with abandonment is actually quite narrow,” said Mueller. “There’s no challenge to the district court findings” that Simply Wireless’ activities that began in July 2012 to rejuvenate its use of Simply Prepaid “were insufficient to create a new protectable interest in the Simply Prepaid mark,” he said. If the 4th Circuit were to uphold the district court’s analysis, and conclude that there was “no intent” by Simply Wireless to renew use of Simply Prepaid during the three-year “gap period” between 2009 and 2011 in which Simply Prepaid was dormant, “the case would end,” said Mueller.