Attachment B - APLHABETICAL LIST OF CASES

CASE NAME

POINT SUMMARY

TBMP §

REFERENCE

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

"the onus is on the party making the submissions to ensure that, at a minimum, all materials are clearly readable by the adverse party and the Board"

110.09 (c)(2) N. 3

107 USPQ2d 1750, 1758 n.16 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

witness qualified as an expert in the field of travel writing and journalism based on professional experience as a travel writer and editor

401.03 N. 2

107 USPQ2d 1750, 1757 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

declining to apply estoppel sanction with regard to opposer’s failure to supplement discovery in connection with nonparty witnesses and documents, which information was not available until after the close of discovery

408.03 N. 5

107 USPQ2d 1750, 1758 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

insofar as during briefing of petitioner'’s motion for summary judgment, respondent stated that it took no issue with the striking of respondent’s affirmative defenses, the Board struck these defenses

506.01 N. 1

107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

denying motion to strike trial brief based on appendix being "a subterfuge to avoid page limit"; appendix was devoted solely to evidentiary objections

517 N. 2

107 USPQ2d 1750, 1753-54 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

where party did not supplement its discovery responses prior to taking trial testimony of non-parties, Board declined to apply estoppel sanction with regard to trial exhibits

527.01(e) N. 3

107 USPQ2d 1750, 1757 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

Board does not generally strike testimony taken in accordance with the applicable rules

533.03 N. 1

107 USPQ2d 1750, 1755 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

Parties’ responsibility to ensure documents submitted as evidence meet basic requirements, such as legibility

703.01(i) N.10

107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

"It is reasonable to assume that it is opposer's responsibility to review the documents it submits as evidence to ensure that such submissions meet certain basic requirements, such as that they are legible . . . ."

704.08(a) N.10

107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

Board "routinely accepts printouts of articles obtained from the Lexis/Nexis database, when filed under notice of reliance, so long as the date and source of each article are clear."

704.08(a) N.3

107 USPQ2d 1750, 1759 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

Objection to Internet printouts from petitioner's website showing the dates accessed and printed and URL information on the grounds that petitioner failed to authenticate the documents by testimony overruled

704.08(b) N.1

107 USPQ2d 1750, 1759 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

Objection to Internet printouts from petitioner's website showing the dates accessed and printed and URL information on the grounds that petitioner failed to authenticate the documents by testimony overruled

704.08(b) N.2

107 USPQ2d 1750, 1759 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

Results from search engine introduced by testimony admissible but of limited probative value because they lack sufficient context

704.08(b) N.4

107 USPQ2d 1750, 1759 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

Relevant, representative sample of articles obtained from Internet database sufficient and preferred; parties discouraged from submitting all results

704.08(b) N.5

107 USPQ2d 1750, 1759 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

Search engine results are only probative of what they show on their face, not for the truth of the matters contained therein

704.08(b) N.6

107 USPQ2d 1750, 1759 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

Claims and defenses not argued in briefs deemed waived

801.01 N. 2

107 USPQ2d 1750, 1753 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.

Appropriate to raise evidentiary objections in appendix, not viewed as subterfuge to avoid page limit

801.03 NN. 3, 4 and 5

107 USPQ2d 1750, 1753-54 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.)

Amazon Technologies, Inc. v. Wax

parties expected to cooperate in the meet and confer process by presenting to each other the merits of their respective postions with candor, specificity and support

408.01 N. 2

93 USPQ2d 1702, 1705 (TTAB 2009)

Amazon Technologies, Inc. v. Wax

parties expected to cooperate in the meet and confer process by presenting to each other the merits of their respective postions with candor, specificity and support

408.01(c) N. 6

93 USPQ2d 1702, 1705 (TTAB 2009)

Amazon Technologies, Inc. v. Wax

pro se applicant hired outside attorney solely for purpose of reviewing opposer’s "trade secret/commercially sensitive" information and documents pursuant to the protective order

412.02(b) N. 1

95 USPQ2d 1865, 1867 n.6 (TTAB 2010)

Amazon Technologies, Inc. v. Wax

"[t]he purpose of the conference requirement is to promote a frank exchange between counsel to resolve issues by agreement or to at least narrow and focus the matters in controversy before judicial resolution is sought."

412.06 N. 6

93 USPQ2d 1702, 1705 (TTAB 2009)

Ashcroft v. Iqbal

Well pleaded factual matter

503.02 N. 4

556 U.S. 662, 678 (2009)

Ate My Heart, Inc. v. GA GA Jeans Ltd.

A party does not have to use an expert

401.03 N. 18

111 USPQ2d 1564, 1567 (TTAB 2014)

Ate My Heart, Inc. v. GA GA Jeans Ltd.

Redesignation of expert witness

401.03 N. 21

111 USPQ2d 1564, 1567, 1567 n.9 (TTAB 2014)

Ate My Heart, Inc. v. GA GA Jeans Ltd.

showing of exceptional circumstances required in case of noticed deposition (without subpoena) of party’s redesignated consulting expert

401.03 N. 22

111 USPQ2d 1564, 1568 (TTAB 2014

Ate My Heart, Inc. v. GA GA Jeans Ltd.

discussing the differences between testifying and consulting experts in connection with redesignation of a testifying expert as a consulting expert)

401.03 N. 5

111 USPQ2d 1564, 1567 (TTAB 2014)

Ate My Heart, Inc. v. GA GA Jeans Ltd.

notice of deposition of unwilling nonparty witness must include subpoena, and related motions must be filed with district court that issued subpoena, not Board

404.03(a)(2) N. 4

111 USPQ2d 1564, 1565 n.5 (TTAB 2014)

Ate My Heart, Inc. v. GA GA Jeans Ltd.

When deposition may be taken where expert redesignated

408.01(b) N. 11

111 USPQ2d 1564, 1568 (TTAB 2014)

Ate My Heart, Inc. v. GA GA Jeans Ltd.

Board may suspend proceedings to allow for taking of discovery on proposed expert

408.01(b) N. 9

111 USPQ2d 1564-65 (TTAB 2014)

Ate My Heart, Inc. v. GA GA Jeans Ltd.

protective order sought to prevent deposition of testifying expert redesignated as non-testifying expert

410 N. 9

111 USPQ2d 1564, 1566 (TTAB 2014)

Ate My Heart, Inc. v. GA GA Jeans Ltd.

motion to take deposition of consulting expert denied because opposer did not establish exceptional circumstances

412.06(a)

111 USPQ2d 1564, 1568 (TTAB 2014)

Ate My Heart, Inc. v. GA GA Jeans Ltd.

Board may suspend proceedings for necessary discovery of proposed expert

510.03(a) N. 17

111 USPQ2d 1564-65 (TTAB 2014)

Ate My Heart, Inc. v. GA GA Jeans Ltd.

if subpoena accompanies notice of deposition, motion to quash would be filed in district court for which subpoena issued, not with the Board

521 N, 11

111 USPQ2d 1564, 1565 n.5 (TTAB 2014)

Ate My Heart, Inc. v. GA GA Jeans Ltd.

motion to quash deposition of consulting expert noticed without subpoena

521 N. 2

111 USPQ2d 1564, 1565 (TTAB 2014)

Ate My Heart, Inc. v. GA GA Jeans Ltd.

protective order granted with regard to taking noticed deposition of expert after redesignation by party as non-testifying expert

526 N. 5

111 USPQ2d 1564, 1568 (TTAB 2014)

Ate My Heart, Inc. v. GA GA Jeans Ltd.

Notice of deposition of unwilling non-party witness must include subpoena, and related motions must be filed with district court that issued subpoena, not Board

703.01(f)(2) N.4

111 USPQ2d 1564, 1565 n.5 (TTAB 2014)

Autodesk, Inc. v. Lee

For proposition that parties have right to submit further evidence when an appeal by way of review in district court is taken

906.01 N. 2

113 USPQ2d 1161 (E.D.Va. 2014)

Ava Ruha Corp. v. Mother’s Nutritional Center, Inc.

Fed. R. Civ. P. 56(c)(4) allows testimony from personal knowledge based on review of files and records or position with company, and Board may not consider portions of affidavit or declaration not based on personal knowledge

528.05(b) N. 1

113 USPQ2d 1575, 1578 (TTAB 2015)

Ava Ruha Corp. v. Mother’s Nutritional Center, Inc.

Fed. R. Civ. P. 56(d) motion denied as moot because party filed substantive response to summary judgment motion

528.06 N. 8

113 USPQ2d 1575, 1578 (TTAB 2015)

Ava Ruha Corp. v. Mother’s Nutritional Center, Inc.

Objection based on lack of personal knowledge under Fed. R. Evid. 602 overruled

707.03(c) N.7

113 USPQ2d 1575, 1579 (TTAB 2015)

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

Discussion of Board procedure

102.03 N. 1 and 2

575 US ___ , 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015)

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

Plaintiff in opposition bears burden of proof

702.04(a) N.6

575 US ___ , 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015)

Birlinn Ltd. v. Stewart

Board applies opportunity to cure provision in 2.119(e) to improperly signed papers, which defines the time period for cure as "within the time limit set in the notification of this defect by the Office"

114.06 new N. 1

117.08 new N. 3

203.03 N. 3

309.02(b) n.1

309.04 N. 1

111 USPQ2d 1905 (TTAB 2014)

Birlinn Ltd. v. Stewart

Board suspended proceedings pending receipt of pleadings and other documentation to determine whether proceeding in the United Kingdom may have a bearing in Board proceeding

510.02(a) N. 5

111 USPQ2d 1905, 1909 (TTAB 2014)

Blackhorse v. Pro-Football, Inc.

Board’s jurisdiction limited to right to registration

102.01 N. 1

111 USPQ2d 1080, 1082-83 (TTAB 2014) , on appeal, Case No. 1:14-cv-01043 (E.D.Va.)

Blackhorse v. Pro-Football, Inc.

Disparagement claim

309.03(c) N. 13

111 USPQ2d 1080 (TTAB 2014), on appeal, Case No. 1:14-cv-01043 (E.D.Va.)

Blackhorse v. Pro-Football, Inc.

TTABVUE is the Board’s public online database that contains the electronic case file for the proceeding, available at the USPTO website

412.04 N 1

111 USPQ2d 1080, 1084 n.8 (TTAB 2014)

Blackhorse v. Pro-Football, Inc.

Stipulated record of prior proceeding entered under notice of reliance, objections based on relevance reserved

702.04(e) N.1

111 USPQ2d 1080, 1084-85 (TTAB 2014), on appeal, Case No. 1:14-cv-01043 (E.D.Va.)

Blackhorse v. Pro-Football, Inc.

Board takes judicial notice of census data

704.12(a) N.2

111 USPQ2d 1080, 1098 n.114 (TTAB 2014) , on appeal, Case No. 1:14-cv-01043 (E.D.Va.)

Blackhorse v. Pro-Football, Inc.

Stipulated record of prior proceeding entered under notice of reliance, objections based on relevance reserved

705 N.2

111 USPQ2d 1080, 1084-85 (TTAB 2014), on appeal, Case No. 1:14-cv-01043 (E.D.Va.)

Blackhorse v. Pro-Football, Inc.

Petitioner estopped from objection to certain evidence on any basis except relevance because it falls within the parties’ stipulation

705 N.3

111 USPQ2d 1080, 1088 (TTAB 2014), on appeal, Case No. 1:14-cv-01043 (E.D.Va.)

Board of Regents, University of Texas System v. Southern Illinois Miners, LLC

ACR-type efficiency stipulated to the admission and use of certain produced documents and waiver of objections based on authenticity or hearsay as to those documents

702.04(e) N.1

110 USPQ2d 1182, 1186 (TTAB 2014)

Board of Regents, University of Texas System v. Southern Illinois Miners, LLC

Motion to amend to add Section 18 counterclaim granted

309.03(d) N. 16

311.02(b) n. 22

110 USPQ2d 1182, 1186 (TTAB 2014)

Board of Regents, University of Texas System v. Southern Illinois Miners, LLC

Section 18 counterclaim

309.03(d) N. 6

110 USPQ2d 1182, 1196-97 (TTAB 2014)

Board of Regents, University of Texas System v. Southern Illinois Miners, LLC

proposed restrictions found not commercially significant because entry thereof would not avoid finding of likelihood of confusion, and "fairness" does not "demand" such restriction

313.01 N. 9

110 USPQ2d 1182, 1198 (TTAB 2014)

Board of Regents, University of Texas System v. Southern Illinois Miners, LLC

stipulation to the admission and use of produced documents and waiver of objections based on authenticity or hearsay

501.01 N. 1

110 USPQ2d 1182, 1186 (TTAB 2014)

Board of Regents, University of Texas System v. Southern Illinois Miners, LLC

prior to opening of the testimony period, leave to amend granted to add counterclaim to partially cancel registrations on basis of abandonment; parties briefed the counterclaim as a Section 18 restriction, and at oral hearing, party expressly consented to trying counterclaim in that manner; Board deemed pleadings amended under Fed. R. Civ. P. 15(b)(2)

507.03(b) N. 1

110 USPQ2d 1182, 1186 (TTAB 2014)

Board of Regents, University of Texas System v. Southern Illinois Miners, LLC

stipulation to the admission and use of produced documents and waiver of objections based on authenticity or hearsay

528.05(a)(2) N. 3

110 USPQ2d 1182, 1186 (TTAB 2014)

Board of Regents, University of Texas System v. Southern Illinois Miners, LLC

Board does not generally strike testimony taken in accordance with the applicable rules

533.03 N. 1

110 USPQ2d 1182, 1194 n.19 (TTAB 2014)

Board of Regents, University of Texas System v. Southern Illinois Miners, LLC

Stipulation to the admission and use of produced documents and waiver of objections based on authenticity or hearsay to accelerate resolution

702.04(a) N.2

110 USPQ2d 1182, 1186 (TTAB 2014)

Board of Regents, University of Texas System v. Southern Illinois Miners, LLC

Stipulation to the admission and use of certain produced documents and waiver of objections based on authenticity or hearsay as to those documents

705 n.5

110 USPQ2d 1182, 1186 (TTAB 2014)

Board of Regents, University of Texas System v. Southern Illinois Miners, LLC

Board will not strike testimony taken in accordance with the applicable rules on the basis of substantive objections; rather, Board will consider such objections when evaluating the probative value of the testimony at final hearing

707.03(c) N.9

110 USPQ2d 1182, 1194 n.19 (TTAB 2014)

Boi Na Braza , LLC v. Terra Sul Corp.

after its registration was cancelled, respondent filed a new application seeking a concurrent use registration with petitioner

1101.02

N. 4

110 USPQ2d 1386, 1388 (TTAB 2014)

Boi Na Braza , LLC v. Terra Sul Corp.

applicant’s claim of first use prior to the earliest filing dates of the involved applications and registration met the jurisdictional requirement

1103.01

(b)

N. 2

110 USPQ2d 1386, 1392 (TTAB 2014)

Boi Na Braza , LLC v. Terra Sul Corp.

applicant adopted its mark in good faith and without knowledge of defendant’s prior use

1103.01

(d)(2)

N. 1

110 USPQ2d 1386, 1392 (TTAB 2014)

Boi Na Braza , LLC v. Terra Sul Corp.

applicant entitled to registration for all of the United States except for prior users’ area of actual use due to defendant’s inaction and except for area "buffer area" ceded by applicant

1103.01

(d)(2)

N. 3

110 USPQ2d 1386, 1394-95 (TTAB 2014)

Boi Na Braza , LLC v. Terra Sul Corp.

For point that involved registrations includes every registration owned by concurrent use applicant unless there is no conflict between it and the mark of the other party

1104 N.4

110 USPQ2d 1386, 1389 n.10 (TTAB 2014)

Boi Na Braza , LLC v. Terra Sul Corp.

defendant entitled only to specific area in which it established prior rights in view of plaintiff’s ownership of a registration, the right to use of which has become incontestable

1105

N. 7

110 USPQ2d 1386, 1394-95 (TTAB 2014)

Boi Na Braza , LLC v. Terra Sul Corp.

noting that, had defendant not opposed plaintiff’s geographically restricted application, a concurrent use proceeding would have been instituted earlier and defendant would have maintained the option to contest plaintiff’s application

1113.01

N. 2

110 USPQ2d 1386, 1388 n.8 (TTAB 2014)

Boi Na Braza , LLC v. Terra Sul Corp.

after its registration was cancelled, respondent filed a new application seeking a concurrent use registration with petitioner

1113.02

N. 1

110 USPQ2d 1386, 1388 (TTAB 2014)

C. H. Stuart Inc. v. S.S. Sarna , Inc.

protective order granted as to discovery not tailored to issues in Board proceeding, including those seeking information regarding whether officers of applicant had been convicted of a crime or subject to a proceeding before the U.S. government

526 N. 3

212 USPQ 386, 387 (TTAB 1980)

Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc.

Board ruled on multiple motions to strike numerous notices of reliance or portions thereof

532 N. 1

77 USPQ 1492, 1497-1500 (TTAB 2005)

Central Manufacturing Inc. v. Third Millennium Technology Inc.

considering not only the pleading in the form of a notice of opposition but extensions of time to oppose as potential basis for applying Rule 11 sanctions

527.02 N. 1

61 USPQ2d 1210, 1213 (TTAB 2001)

Central Manufacturing Inc. v. Third Millennium Technology Inc.

Board does not impose monetary sanctions

527.02 N. 4

61 USPQ2d 1210, 1213 (TTAB 2001)

Central Manufacturing Inc. v. Third Millennium Technology Inc.

applying sanction for bad-faith conduct under the Board’s inherent authority to sanction, regardless of whether sanctions available under Fed. R. Civ. P. 11

527.03 N 2

61 USPQ2d 1210, 1215 (TTAB 2001)

Chanel, Inc. v. Makarczyk

Evidence from foreign publications may be refused consideration if no evidence of U.S. circulation is provided

1208.03 N.4

110 USPQ2d 2013, 2021 n.9 (TTAB 2014)

Chanel, Inc. v. Makarczyk

Dilution by blurring second prong of test

309.03(c) N. 30

110 USPQ2d 2013 (TTAB 2014)

Chanel, Inc. v. Makarczyk

approving parties’ stipulation to proceed via ACR

501.01 N. 5

110 USPQ2d 2013 (TTAB 2014)

Chanel, Inc. v. Makarczyk

Summary judgment ACR model

528.05(a)(2) N. 2

110 USPQ2d 2013, 2016 (TTAB 2014)

Chanel, Inc. v. Makarczyk

ACR stipulated to resolve proceeding under summary judgment model of ACR procedure

702.04(a) n. 1

110 USPQ2d 2013, 2016 (TTAB 2014)

Chanel, Inc. v. Makarczyk

Materials attached to answer not considered

704.05(a) N.1

110 USPQ2d 2013, 2016 n.5 (TTAB 2014)

Conolty v. Conolty O’Connor NYC LLC

Board’s jurisdiction limited to right to register

102.01 N. 1

111 USPQ2d 1302, 1039 (TTAB 2014)

Conolty v. Conolty O’Connor NYC LLC

Ownership claim in ACR case

309.03(c) N. 21

111 USPQ2d 1302 (TTAB 2014)

Conolty v. Conolty O’Connor NYC LLC

nonownership claim tried by implied consent under Fed. R. Civ. P. 15(b)(2)

507.03(b) N. 1

111 USPQ2d 1302, 1306 (TTAB 2014)

Conolty v. Conolty O’Connor NYC LLC

parties agreed to try case using cross-motions for summary judgment ACR model

528.05(a)(2) N. 2

111 USPQ2d 1302, 1304 (TTAB 2014)

Conolty v. Conolty O’Connor NYC LLC

ACR consists of a summary judgement model of ACR in lieu of creating a traditional trial record

702.04(a) N.1

111 USPQ2d 1302, 1304 (TTAB 2014)

Conolty v. Conolty O’Connor NYC LLC

ACR case on cross-motions for summary judgment where Board may resolve genuine issues of material fact and stipulated to likelihood of confusion and limited issue to priority

705 N.4

111 USPQ2d 1302, 1304 (TTAB 2014)

Consolidated Foods Corporation v. Berkshire Handkerchief Co., Inc.

Untimely brief may be stricken or given no consideration

517 N. 3

229 USPQ 619, 620 (TTAB 1986)

Consolidated Foods Corporation v. Berkshire Handkerchief Co., Inc.

Where response untimely, Board has discretion to treat motion as conceded or to determine motion on its merits

517 N. 4

229 USPQ 619, 620 (TTAB 1986)

Cooper Technologies Co. v. Denier Electric Co.

the page limitation for a "brief in response to a motion" applies to a brief in which an opposition to a motion and a cross-motion are combined but address the same issues; in other words, one cannot exceed the page limitation for a brief by combining an opposition brief and cross-motion addressing the same issue

528.02 N. 10

89 USPQ2d 1478, 1479 (TTAB 2008)

Couch/ Braunsdorf Affinity, Inc. v. 12 Interactive, LLC

Board proceedings are designed to be transparent to the public and the contents of proceeding files publicly available; improper designation of materials as confidential thwarts that intention

110 USPQ2d 1458, 1461 (TTAB 2014)

110 USPQ2d 1458, 1461 (TTAB 2014)

Couch/ Braunsdorf Affinity, Inc. v. 12 Interactive, LLC

discussing improper designation as confidential of testimony and exhibits submitted in Board proceeding

412.04 N. 4

110 USPQ2d 1458, 1460-61 (TTAB 2014)

Couch/ Braunsdorf Affinity, Inc. v. 12 Interactive, LLC

Treatment by the Board when a party over-designates submitted material as confidential

703.01(p) NN.7 & 8

110 USPQ2d 1458, 1461 (TTAB 2014)

Couch/ Braunsdorf Affinity, Inc. v. 12 Interactive, LLC

Judicial notice taken of status of pleaded registration made of record, but no further consideration because registration had been cancelled

704.03 (b)(1)(A) N.17

110 USPQ2d 1458, 1460 n.4 (TTAB 2014)

Couture v. Playdom , Inc.

amendment to substitute basis under 37 CFR § 2.135(b) contemplates substitution of basis during the pendency of the application, not after registration; no error in denial of amendment

514.01 N. 5

___F.3d ___, 2014-1480, 113 USPQ2d 2042, 2044 (Fed. Cir. 2015)

Covidien LP v. Masimo Corp.

Well pleaded factual matter

503.02 N. 4

109 USPQ2d 1696, 1697 (TTAB 2014)

Cutino v. Nightlife Media, Inc.

applicant admitted in its answer that opposer was the owner of the mark, and did not deny in the answer that opposer owned the pleaded registration sufficient to be an admission regarding ownership and status of the pleaded registration

534.02 N 4

575 Fed.App’x 888 (Fed. Cir. 2014)

Domond v. 37.37, Inc.

Board applied proportionality principle to interrogatories, document requests and requests for admission

402.01 N. 5

113 USPQ2d 1264, 1268 (TTAB 2015)

Domond v. 37.37, Inc.

Irrelevant and improper discovery requests

402.01 N. 9

113 USPQ2d 1264, 1267-68 (TTAB 2015)

Domond v. 37.37, Inc.

protective relief granted; service of over 1000 discovery requests the first two days of the discovery period was excessive, unduly burdensome, and harassing

410 N. 9

113 USPQ2d 1264, 1266 (TTAB 2015)

Domond v. 37.37, Inc.

granting protective order with regard to 980 discovery requests and limiting the overall total discovery requests (interrogatories, including subparts, document requests and requests for admission) to be propounded to 150

412.06 N. 1

113 USPQ2d 1264, 1268 (TTAB 2015)

Domond v. 37.37, Inc.

granting protective order with regard to 707 requests for admission, 247 document requests, and 26 enumerated interrogatories

412.06(b) N. 4

113 USPQ2d 1264, 1268 (TTAB 2015)

Domond v. 37.37, Inc.

when only one registration was at issue in cancellation, granting protective order with regard to 707 requests for admission, 247 document requests, and 26 enumerated interrogatories (some with subparts) and limiting the overall total discovery requests (interrogatories, including subparts, document requests and requests for admission) to be propounded to 150

412.06(b) N. 5

113 USPQ2d 1264, 1268 (TTAB 2015)

Domond v. 37.37, Inc.

protective order granted against 707 requests for admission, 247 document requests, and 26 enumerated interrogatories

526 N. 3

113 USPQ2d 1264, 1268 (TTAB 2015)

Domond v. 37.37, Inc.

Both parties are required to serve initial disclosures identifying witnesses having discoverable information and to serve pretrial disclosures naming the witnesses expected to testify at trial

702.01 NN.2 & 4

113 USPQ2d 1264, 1267 (TTAB 2015)

Double J of Broward Inc. v. Skalony Sportswear GmbH

protective order granted as to discovery relating to foreign activities

526 N. 3

21 USPQ2d 1609, 1613 (TTAB 1991)

Dow Corning Corp. v. The Doric Corp.

"tremendous and prolonged discovery" which lacked specificity and was "too comprehensive in scope" not warranted

402.01 N. 4

183 USPQ 377, 378 (TTAB 1974)

Dragon Bleu (SARL) v. VENM, LLC

Non-use claim at time of application filing unavailable for 66(a) application

309.03(c) N. 17

112 USPQ2d 1925, 1929-30 (TTAB 2014)

Dragon Bleu (SARL) v. VENM, LLC

Failure to plead claim of fraud

309.03(c) N. 33

112 USPQ2d 1925, 1928 (TTAB 2014)

Dragon Bleu (SARL) v. VENM, LLC

considering plausibility

503.02 N. 3

112 USPQ2d 1925, 1926 (TTAB 2014)

Dragon Bleu (SARL) v. VENM, LLC

motion to dismiss applicant’s fraud, non-use and abandonment counterclaims granted

503.02 N. 4

112 USPQ2d 1925, 1926 (TTAB 2014)

Dragon Bleu (SARL) v. VENM, LLC

finding first motion to dismiss moot in view of filing of amended pleading; considering amended pleading filed in response to second motion to dismiss

503.03 N, 2

112 USPQ2d 1925, 1926 (TTAB 2014)

Dragon Bleu (SARL) v. VENM, LLC

Board did not grant leave to replead fraud claim due to futility and lack of plausibility based on recited facts

503.03 N. 4

112 USPQ2d 1925, 1929 n.10 (TTAB 2014)

Electronic Industries Association v. Potega

as a sanction, party required to study certain TBMP sections and to file a statement with the Board certifying completion of the task, to prepare complete set of responses to discovery requests, to consult with opposing counsel to ensure responses are appropriate, and to forward copies to counsel

411.05 N. 1

50 USPQ2d 1775, 1778 (TTAB 1999)

Electronic Industries Association v. Potega

Can require party to take an action or refrain from an action it otherwise would not take under the rules as a sanction

411.05 N. 3

50 USPQ2d 1775, 1778 n.11 (TTAB 1999)

Embarcadero Technologies, Inc. v. RStudio , Inc.

successful use of Section 18 as an affirmative defense to a claim of likelihood of confusion in an opposition; amended applications allowed to proceed to registration

313.01 N. 9

105 USPQ2d 1825 (TTAB 2013)

Entravision Communications Corp. v. Liberman Television LLC

substitution of expert and expert report

401.03 N. 23

113 USPQ2d 1526, 1528 (TTAB 2015)

Entravision Communications Corp. v. Liberman Television LLC

Supplementing and correcting information included in expert report

401.03 N. 25

113 USPQ2d 1526, 1528 n.5 (TTAB 2015)

Entravision Communications Corp. v. Liberman Television LLC

Withdrawal and substitution of expert witness and report may be permitted

401.03 NN. 17, 19, 20

113 USPQ2d 1526, 1528-29 (TTAB 2015)

Entravision Communications Corp. v. Liberman Television LLC

Motion to substitute expert witness and report granted, where prior disclosed witness unavailable

707.03(b)(3) N.2

113 USPQ2d 1526 (TTAB 2015)

Fiserv, Inc. v. Electronic Transaction Systems Corp.

Early ACR stipulation

702.04(d) N.2

113 USPQ2d 1913, 1916 (TTAB 2015)

Fiserv, Inc. v. Electronic Transaction Systems Corp.

parties filed ACR stipulation, agreed to forego discovery, waived disclosures, stipulated to facts and attached documents, filed briefs with additional evidence

501.01 N. 5

113 USPQ2d 1913, 116 (TTAB 2015)

Fiserv, Inc. v. Electronic Transaction Systems Corp.

parties filed ACR stipulation, agreed to forego discovery, waived disclosures, stipulated to facts and attached documents, filed briefs with additional evidence

528.05(a)(2) N. 3

113 USPQ2d 1913 (TTAB 2015)

Fiserv, Inc. v. Electronic Transaction Systems Corp.

parties utilized ACR process and submitted clean and concise record

528.05(a)(2) N. 4

113 USPQ2d 1913, 1916 (TTAB 2015)

Fiserv, Inc. v. Electronic Transaction Systems Corp.

Parties filed ACR stipulation, agreed to forego discovery, waived disclosures, stipulated to facts and attached documents, filed briefs with additional evidence

702.04(a) NN.2 & 5

113 USPQ2d 1913, 1916 (TTAB 2015)

Fiserv, Inc. v. Electronic Transaction Systems Corp.

ACR case on cross-motions for summary judgment where board may resolve genuine issues of material fact and stipulated to likelihood of confusion and limited issue to priority

705 N.4

113 USPQ2d 1913, 1916 (TTAB 2015)

Fiserv, Inc. v. Electronic Transaction Systems Corp.

Entry of confidential exhibits and briefs in ACR case

801.03 N. 10

113 USPQ2d 1913 (TTAB 2015)

FMR Corp. v. Alliant Partners

"scope of discovery in a Board proceeding is governed by Fed. R. Civ. P. 26(b)(1)"

402.01 N. 1

51 USPQ2d 1759, 1761 (TTAB 1999)

FMR Corp. v. Alliant Partners

". . . the right to discovery is not unlimited. Both the Trademark Rules and the Federal Rules of Civil Procedure grant the Board discretion to manage the discovery process."

402.01 N. 4

51 USPQ2d 1759, 1761 (TTAB 1999)

FMR Corp. v. Alliant Partners

Board has discretion to limit discovery deposition

412.06(a) N. 1

51 USPQ2d 1759, 1761-62 (TTAB 1999)

Frito-Lay North America, Inc. v. Princeton Vanguard, LLC

ACR on evidence presented with prior motions for summary judgment and supplemental expert declarations, trial briefs were filed and an oral hearing was held

702.04(c) N.1

109 USPQ2d 1949, 1950 (TTAB 2014), on appeal, Case No. 14-1517 (Fed. Cir.)

Frito-Lay North America, Inc. v. Princeton Vanguard, LLC

Standing

309.03(b)N. 17

109 USPQ2d 1949 (TTAB 2014), on appeal (Fed. Cir.)

Frito-Lay North America, Inc. v. Princeton Vanguard, LLC

after suggestion by Board in order denying motion for summary judgment, parties stipulated to forego trial and rely on evidence submitted in support of the motions for summary judgment, supplemented by expert declarations, trial briefs and an oral hearing

501.01 N. 5

109 USPQ2d 1949, 1950 (TTAB 2014), on appeal (Fed. Cir.)

Frito-Lay North America, Inc. v. Princeton Vanguard, LLC

after suggestion by Board in order denying motion for summary judgment, parties stipulated to forego trial and rely on evidence submitted in support of the motions for summary judgment, supplemented by expert declarations, trial briefs and an oral hearing)

528.05(a)(2) N. 2

109 USPQ2d 1949 (TTAB 2014), on appeal (Fed. Cir.)

Frito-Lay North America, Inc. v. Princeton Vanguard, LLC

ACR on evidence presented with prior motions for summary judgment and supplemental expert declarations, trial briefs were filed and an oral hearing was held

702.04(a) N.1

109 USPQ2d 1949, 1950 (TTAB 2014), on appeal, Case No. 14-1517 (Fed. Cir.)

Frito-Lay North America, Inc. v. Princeton Vanguard, LLC

After suggestion by Board in order denying motion for summary judgment, parties stipulated to forego trial and rely on evidence submitted in support of the motions for summary judgment, supplemented by expert declarations, trial briefs and an oral hearing

705 N.4

109 USPQ2d 1949, 1950 (TTAB 2014), on appeal, Case No. 14-1517 (Fed. Cir.)

FUJIFILM SonoSite , Inc. v. Sonoscape Co., Ltd.

notice of reliance failed to sufficiently indicate the relevance of the material being offered by not specifying the relevance of the voluminous web pages submitted under two exhibits

532 N. 1

111 USPQ2d 1234, 1237 (TTAB 2014)

FUJIFILM SonoSite , Inc. v. Sonoscape Co., Ltd.

motion to strike exhibits under notice of reliance granted with leave to cure

532 N. 2

111 USPQ2d 1234, 1237 (TTAB 2014)

FUJIFILM SonoSite , Inc. v. Sonoscape Co., Ltd.

motion to strike unpleaded registration deferred as admissibility depends on purpose for which it was submitted

532 N. 4

111 USPQ2d 1234, 1236 (TTAB 2014)

FUJIFILM SonoSite , Inc. v. Sonoscape Co., Ltd.

notice of reliance failed to sufficiently indicate relevance of voluminous web pages; "Although opposer will have an opportunity to explain its exhibits in its trial brief, applicant is entitled to know, prior to its testimony period, which web pages assertedly support which likelihood of confusion factor."

704.02 N.1

111 USPQ2d 1234, 1237 (TTAB 2014)

FUJIFILM SonoSite , Inc. v. Sonoscape Co., Ltd.

Registration resulting from opposer’s unpleaded application akin to third-party registration, and may be made of record through notice of reliance for purposes other than the basis of the opposition, i.e., for "whatever probative value" it may have

704.03(b)(1)(A) N.2

111 USPQ2d 1234, 1236 (TTAB 2014)

FUJIFILM SonoSite , Inc. v. Sonoscape Co., Ltd.

Registration resulting from opposer’s unpleaded application akin to third-party registration, and may be made of record through notice of reliance for purposes other than the basis of the opposition, i.e., for "whatever probative value" it may have

704.03(b)(1)(A) N.8

111 USPQ2d 1234, 1236 (TTAB 2014)

FUJIFILM SonoSite , Inc. v. Sonoscape Co., Ltd.

Registration resulting from opposer’s unpleaded application akin to third-party registration, and may be made of record through notice of reliance for purposes other than the basis of the opposition, i.e., for "whatever probative value" it may have

704.03(b)(1)(B) N.1

111 USPQ2d 1234, 1236 (TTAB 2014)

FUJIFILM SonoSite , Inc. v. Sonoscape Co., Ltd.

Registration resulting from opposer’s unpleaded application akin to third-party registration, and may be made of record through notice of reliance for purposes other than the basis of the opposition, i.e., for "whatever probative value" it may have

704.03(b)(1)(B) N.7

111 USPQ2d 1234, 1236 (TTAB 2014)

FUJIFILM SonoSite , Inc. v. Sonoscape Co., Ltd.

Notice of reliance failed to specify the relevance of the voluminous web pages submitted under two exhibits; defect is curable

704.08(b) N.3

111 USPQ2d 1234, 1237 (TTAB 2014)

FUJIFILM SonoSite , Inc. v. Sonoscape Co., Ltd.

Notice of reliance failed to sufficiently indicate the relevance of the material being offered by not specifying the relevance of the voluminous web pages submitted under two exhibits

707.02(b)(2) N.1

111 USPQ2d 1234, 1237 (TTAB 2014)

FUJIFILM SonoSite , Inc. v. Sonoscape Co., Ltd.

Motion to strike exhibits under notice of reliance granted with leave to cure

707.02(b)(2) N.3

111 USPQ2d 1234, 1237 (TTAB 2014)

FUJIFILM SonoSite , Inc. v. Sonoscape Co., Ltd.

Motion to strike unpleaded registration deferred as admissibility depends on purpose for which it was submitted

707.02(b)(2) N.4

111 USPQ2d 1234, 1236 (TTAB 2014)

FUJIFILM SonoSite , Inc. v. Sonoscape Co., Ltd.

Motion to strike unpleaded registration deferred as admissibility depends on purpose for which it was submitted

707.02(c) N.3

111 USPQ2d 1234, 1236 (TTAB 2014)

Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC

after balancing relevant factors, untimely disclosure of expert opinion found neither substantially justified nor harmless under circumstances of cas

401.03 N. 17

111 USPQ2d 1559, 1563-64 (TTAB 2014)

Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC

untimely expert report

401.03 N. 23

111 USPQ2d 1559, 1562 (TTAB 2014)

Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC

discussing what is proper supplementation of an expert report

401.03 N. 24

111 USPQ2d 1559, 1561-62 (TTAB 2014)

Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC

Supplementing and correcting information included in expert report

401.03 N. 25

111 USPQ2d 1559, 1562 (TTAB 2014)

Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC

estoppel sanction applies to untimely disclosure of expert opinion

408.03 N. 5

111 USPQ2d 1559, 1562-63 (TTAB 2014)

Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC

What does not qualify as supplementing or correcting an expert report

408.03 N. 9

111 USPQ2d 1559, 1562

Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC

Motion to strike exhibit consisting of supplemental expert report by declaration granted, not covered by stipulation and not proper matter for notice of reliance pp.1560-1561

702.04(d) N.4

111 USPQ2d 1559, 1561 (TTAB 2014)

Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC

ACR stipulated evidence

705 N.5

111 USPQ2d 1559, 1561 (TTAB 2014)

General Council of the Assemblies of God v. Heritage Music Foundation

Board may suspend proceedings for necessary discovery of proposed witness

510.03(a) N. 17

97 USPQ2d 1890, 1893 (TTAB 2011)

General Mills Inc. v. Fage Dairy Processing Industry SA

no authority to determine damages

502.05 N. 1

100 USPQ2d 1584, 1591 (TTAB 2011) judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential)

Hard Rock Café International (USA) Inc. v. Elsea

Objections to testimony on grounds other than untimeliness must be maintained in brief or they are waived

533.03 N. 3

56 USPQ2d 1504, 1507 n. 5 (TTAB 2000)

Harry Winston, Inc. v. Bruce Winston Gem Corp.

Parties’ stipulation to submission of witness declarations and discovery depositions, the authenticity of certain documents, retail prices of opposers’ goods, the fact that advertisements and news articles refer to opposers, and press clippings are representative of the media in which opposers advertise

705 N.5

111 USPQ2d 1419, 1426 (TTAB 2014)

Harry Winston, Inc. v. Bruce Winston Gem Corp.

Standing found

309.03(b) N. 15

111 USPQ2d 1419, 1428 (TTAB 2014)

Harry Winston, Inc. v. Bruce Winston Gem Corp.

Plaintiff may not rely on unpleaded registrations

309.03(c) N. 5

111 USPQ2d 1419, 1424 n.14 (TTAB 2014)

Harry Winston, Inc. v. Bruce Winston Gem Corp.

Affirmative defenses deemed waived

311.02(b) N. 2

111 USPQ2d 1419, 1422-23 n.7 (TTAB 2014)

Harry Winston, Inc. v. Bruce Winston Gem Corp.

stipulation to the authenticity of certain documents, retail prices of opposers’ goods, the fact that advertisements and news articles refer to opposers, and press clippings are representative of the media in which opposers advertise

501.01 N. 2

111 USPQ2d 1419, 1426 (TTAB 2014)

Harry Winston, Inc. v. Bruce Winston Gem Corp.

stipulation to submission of witness declarations and discovery depositions

501.01 N. 3

111 USPQ2d 1419, 1426 (TTAB 2014)

Harry Winston, Inc. v. Bruce Winston Gem Corp.

discovery depositions of opposers’ own officers submitted by parties’ stipulation

529 N. 1

111 USPQ2d 1419, 1425 n.21 (TTAB 2014)

Harry Winston, Inc. v. Bruce Winston Gem Corp.

Declarations and discovery depositions of opposers’ own officers submitted by stipulation of the parties

702.04(e) N.1

111 USPQ2d 1419, 1426 (TTAB 2014)

Harry Winston, Inc. v. Bruce Winston Gem Corp.

Judicial notice taken of changes in title and status of pleaded and proven registrations

704.03(b)(1)(A) N.17

111 USPQ2d 1419, 1425 n.19 (TTAB 2014)

Harry Winston, Inc. v. Bruce Winston Gem Corp.

Discovery depositions of opposers’ own officers submitted by parties’ stipulation

704.09 N.2

111 USPQ2d 1419, 1425 n.21 (TTAB 2014)

Health-Tex Inc. v. Okabashi (U.S.) Corp.

granting protective relief in connection with a deposition on written questions in that party is free to object and refuse to answer those questions which it believes are not relevant; denying protective relief to the extent that the Board will review questions at issue to determine if they are relevant to the proceeding

526 N. 5

18 USPQ2d 1409, 1411 (TTAB 1990)

Hot Tamale Mama…and More, LLC v. SF Investments, Inc.

simply ignoring deadlines to serve discovery responses or seek an extension of time to do so is inconsistent with the Board’s expectation that the parties and their attorneys cooperate in the discovery process

408.01 N. 1

110 USPQ2d 1080, 1081 n.1 (TTAB 2014)

Hot Tamale Mama…and More, LLC v. SF Investments, Inc.

Board found that single email exchange alone was insufficient to satisfy the good faith effort obligation to resolve discovery dispute prior to filing motion to compel

408.01(c) N. 6

110 USPQ2d 1080, 1082 (TTAB 2014)

Hot Tamale Mama…and More, LLC v. SF Investments, Inc.

statement of good faith effort to be supported by recitation of communications conducted including dates, summary of telephone conversations and copies of correspondence exchanged, where applicable

408.01(c) N. 7

110 USPQ2d 1080, 1081 (TTAB 2014)

Hot Tamale Mama…and More, LLC v. SF Investments, Inc.

good faith effort in connection with motion to compel should be directed to understanding differences and investigating ways in which to resolve dispute

412.06 N. 6

110 USPQ2d 1080, 1081 (TTAB 2014)

Hot Tamale Mama…and More, LLC v. SF Investments, Inc.

discussing generally good faith effort requirement; finding single email exchange between the parties insufficient to establish good faith effort as it was incumbent upon applicant to make at least one additional inquiry

523.02 N. 2

110 USPQ2d 1080, 1081-82 (TTAB 2014)

Hot Tamale Mama…and More, LLC v. SF Investments, Inc.

Examples of types of things to be addressed in a showing of a good faith effort to resolve the discovery dispute

523.02 N. 3

110 USPQ2d 1080, 1081 (TTAB 2014)

Hot Tamale Mama…and More, LLC v. SF Investments, Inc.

Determination of good faith effort to resolve discovery dispute considers showing of sufficient effort to do so

523.02 N. 4

110 USPQ2d 1080, 1081-82 (TTAB 2014)

Hunter Industries, Inc. v. Toro Co.

Parties may not override Trademark Rule 2.126 provisions for form of submissions by agreement; however, video and audio recordings may be submitted on CD-ROM

106.03 N. 2

311.01 N. 3

110 USPQ2d 1651, 1654-55 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

Trademark Rule 2.126 does not allow for submission of materials on flash drive or compact disk

309.01 N. 1

110 USPQ2d 1651, 1654 n.5 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

while trade secret/commercially sensitive information as to witness identity was protectable during discovery, once party relied on testimony of so designated witness at trial, identity of witness designated as trade secret/commercially sensitive waived

412.01 N. 5

110 USPQ2d 1651, 1656 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

parties’ stipulation under ACR provided limitations on discovery, excluded the filing of motions for summary judgment and the use of expert testimony, streamlined the methods for introduction of evidence during trial, stipulated to fact regarding no actual confusion

501.01 N. 5

110 USPQ2d 1651, 1653 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

noting that because the Board does not entertain motions in limine, opposer was unable to raise the issue of over-designation of confidential identifying information of declarants until applicant submitted the declarations during its testimony period

502.01 N. 4

110 USPQ2d 1651, 1656 n.11 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

as Board does not entertain motions in limine, opposer was unable to raise the matter by motion until applicant submitted declarations during its testimony period) ), on appeal, Case No. 14-CV-4463 (D. Minn.

527.01(f)

110 USPQ2d 1651, 1656 n.11 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

parties’ stipulation under ACR provided limitations on discovery, excluded the filing of motions for summary judgment and the use of expert testimony, streamlined the methods for introduction of evidence during trial, stipulated to fact regarding no actual confusion

528.05(a)(2) N. 3

110 USPQ2d 1651, 1653 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

ACR proceeding experienced delay in issuing decision due to the number and nature of objections and precedential nature of decision

528.05(a)(2) N. 4

110 USPQ2d 1651, 1653 n.3 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

ACR proceeding experienced delay in issuing decision due to precedential nature of decision and the number and nature of objections

528.05(a)(2) N. 8

110 USPQ2d 1651, 1653 n.3 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

parties may not override Trademark Rule 2.126 provisions for form of submissions by agreement; however, video and audio recordings of evidence such as commercials may be submitted on CD-ROM

528.05(b) N. 6

110 USPQ2d 1651, 1654-55 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

evidence submitted on flash drive stricken from record, parties may not by agreement override 37 CFR § 2.126 provisions prescribing form of submission

532 N. 1

110 USPQ2d 1651, 1654 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

identity of trial witnesses may not be designated as confidential

702.01 NN. 2, 10, 15

110 USPQ2d 1651, 1655 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

ACR limited discovery excluded motions for summary judgment and expert testimony, permitted

testimony by affidavit or declaration, stipulated fact no actual confusion

702.04(a) N.2

110 USPQ2d 1651, 1653 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

ACR proceeding experienced delay in issuing decision due to precedential nature of decision and the number and nature of objections

702.04(a) N.5

110 USPQ2d 1651, 1653 n.3 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

ACR limited discovery excluded motions for summary judgment and expert testimony, permitted

testimony by affidavit or declaration, stipulated fact no actual confusion

702.04(d) N.2

110 USPQ2d 1651, 1653 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

Parties may not override Trademark Rule 2.126 provisions for form of submissions by agreement; however, video and audio recordings of evidence such as commercials may be submitted on CD-ROM

703.01(i) N.9

110 USPQ2d 1651, 1654-55 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

Parties’ stipulation under ACR provided limitations on discovery, excluded the filing of motions for summary judgment and the use of expert testimony, streamlined the methods for introduction of evidence during trial, stipulated to fact regarding no actual confusion

705 N.5

110 USPQ2d 1651, 1653 (TTAB 2014), on appeal Case No. 14-CV-4463 (D. Minn.)

Hunter Industries, Inc. v. Toro Co.

Flash drive stricken from record

706 N.1

110 USPQ2d 1651, 1654 (TTAB 2014), on appeal, Case No. 14-CV-4463 (D. Minn.)

In re ActiveVideo Networks, Inc.

Objection waived where examining attorney, in continuing a refusal, failed to advise applicant that mere listing of third-party registrations was insufficient to make them of record

1208.02 N.6

111 USPQ2d 1581, 1594 n.40 (TTAB 2014)

In re Datapipe , Inc.

Applicant’s alternative request for remand to consider informal nonpublic examination guide denied

1209.04 N.1

111 USPQ2d 1330, 1331 (TTAB 2014)

In re Datapipe , Inc.

Counsel for applicant appeared via videoconference at oral hearing

1216 N.3

111 USPQ2d 1330, 1332 (TTAB 2014)

In re Geller

Acceptance of online materials

1208.03 N.11

751 F.3d 1355, 110 USPQ2d 1867, 1868 n.2 (Fed. Cir. 2014)

In re Geller

Board may consider Internet blog postings as well as individual comments on blog

1208.03 N.16

751 F.3d 1355, 110 USPQ2d 1867, 1870 (Fed. Cir. 2014)

In re Manwin /RK Collateral Trust

Board may not take judicial notice of term based on English spoken in another country

1208.04 N.7

111 USPQ2d 1311, 1313 (TTAB 2014)

In re Michalko

Recommended that parties provide citations to the record

1203.01 N.10

110 USPQ2d 1949, 1951 (TTAB 2014)

In re Morrison & Foerster LLP

Parties may cite to non-precedential decisions, but the Board does not encourage this practice

1203.02 (f) N.2

110 USPQ2d 1423, 1427 n.6 (TTAB 2014)

In re Morrison & Foerster LLP

Consideration of blog postings in evidence

1208.03 N.16

110 USPQ2d 1423, 1424 n.2 (TTAB 2014)

In re Nieves & Nieves, LLC

Articles from non-U.S. publications may have probative value depending on the circumstance

1208.03 N.4

113 USPQ2d 1639, 1642 (TTAB 2015)

In re Nieves & Nieves, LLC

Judicial notice of two online government reports providing statistics of Internet use in the United States

1208.04 N.3

113 USPQ2d 1639, 1642 (TTAB 2015)

In re Red Bull GmbH

Board takes judicial notice of dictionary definitions

704.12(b) N.3

78 USPQ2d 1375, 1378 (TTAB 2006)

In re Swatch Group Management Services AG

Notice of online dictionary also found in print

1208.03 N.13

110 USPQ2d 1751, 1755 n.9 (TTAB 2014)

In re Swatch Group Management Services AG

Board considered Wikipedia evidence submitted with examining attorney’s first office action which applicant had an opportunity to rebut

1208.03 N.14

110 USPQ2d 1751, 1754 n.4 (TTAB 2014)

In re Tam

Disparagement claim

309.03(c) N.13

108 USPQ2d 1305 (TTAB 2013), on appeal, Case No. 14-1203 (Fed. Cir.)

Inter IKEA Systems B.V. v. Akea , LLC

ACR stipulated to testimony by declaration and produced documents deemed authentic

702.04(e) N.1

110 USPQ2d 1734, 1738 (TTAB 2014)

Inter IKEA Systems B.V. v. Akea , LLC

parties filed joint stipulation that all documents produced in response to a request for production of documents were deemed authentic business records and were admissible subject to any objections other than authenticity

501.01 N. 2

110 USPQ2d 1734, 1738 (TTAB 2014)

Inter IKEA Systems B.V. v. Akea , LLC

parties filed joint stipulation that testimony could be submitted by declaration or affidavit subject to cross-examination upon request

501.01 N. 2

110 USPQ2d 1734, 1738 (TTAB 2014)

Inter IKEA Systems B.V. v. Akea , LLC

parties filed joint stipulation that testimony could be submitted by declaration or affidavit subject to cross-examination upon request, and all documents produced in response to a request for production of documents were deemed authentic business records and were admissible subject to any objections other than authenticity

528.05(a)(2) N. 3

110 USPQ2d 1734, 1738 (2014)

Inter IKEA Systems B.V. v. Akea , LLC

ACR stipulated to testimony by declaration or affidavit subject to cross-examination and produced documents deemed authentic

702.04(a) N.2

110 USPQ2d 1734, 1738 (TTAB 2014)

Inter IKEA Systems B.V. v. Akea , LLC

Parties filed joint stipulation that testimony could be submitted by declaration or affidavit subject to cross-examination upon request, and all documents produced in response to a request for production of documents were deemed authentic business records and were admissible subject to any objections other than authenticity

705 N.4

110 USPQ2d 1734, 1738 (TTAB 2014)

Johnson & Johnson v. Diamond Medical, Inc.

motion to compel timely even if filed after close of discovery

524.03 N. 1

183 USPQ 615, 617 (TTAB 1974)

Johnson v. City of Shelby

Plaintiff provided enough detail for notice pleading

309.03(a)(2) N. 3 and 4

574 U. S. ____, 135 S.Ct. 346 (2014)

Krause v. Krause Publications Inc.

Board does not generally strike testimony taken in accordance with the applicable rules

533.03 N. 1

76 USPQ2d 1904, 1907 (TTAB 2005)

Krause v. Krause Publications Inc.

Board considers substantive objections in evaluating probative value of testimony at final hearing

707.03(c) N.9

76 USPQ2d 1904, 1907 (TTAB 2005)

Lincoln National Corp. v. Anderson

evidence submitted for the first time with applicant’s trial brief not considered

539 N. 6

110 USPQ2d 1271, 1274 n.5 (TTAB 2014)

Loren Cook Company v. The Acme Engineering and Manufacturing Corporation

("The [motion for judgment] rule is limited to situations where the plaintiff presents no evidence (2.132(a)) or where only Patent and Trademark Office records are of record (2.132(b))."

534.02 N. 1

216 USPQ 517, 519 (TTAB 1982)

Marshall Field & Co. v. Mrs. Fields Cookies

Board does not generally strike testimony taken in accordance with the applicable rules

533.03 N. 1

25 USPQ2d 1321, 1326 (TTAB 1992)

McDonald’s Corp. v. McSweet , LLC

Dilution applies to family of marks

309.03(c) N. 30

112 USPQ2d 1268, 1286 (TTAB 2014)

McDonald’s Corp. v. McSweet , LLC

Where parties moved to strike evidence Board noted objections and took them into consideration allocating the appropriate weight to the evidence

707.02(c) N.4

112 USPQ2d 1268, 1274 (TTAB 2014)

McDonald's Corp. v. McSweet

"While a party is not required to employ an expert to be able to direct criticisms to an opposing party's survey, having a qualified expert confirm that the criticisms reflect the relevant standards employed in the survey field would lend additional weight to such criticisms."

401.03 N. 2

112 USPQ2d 1268, 1298 n.58 (TTAB 2014)

McDonald's Corp. v. McSweet

parties stipulated to discovery depositions of non-party witnesses as testimony

529 N. 1

112 USPQ2d 1268, 1274 n.5 (TTAB 2014)

Multisorb Tech., Inc. v. Pactiv Corp.

where summary judgment entered on fewer than all pleaded grounds, Board might dispose of case without considering alternate grounds

528.01 N. 21

109 USPQ2d 1170, 1171-72 (TTAB 2013)

Nationstar Mortgage LLC v. Ahmad

Claim of fraud sustained

309.03(c) N. 33

112 USPQ2d 1361 (TTAB 2014)

NSM Resources Corp. v. Microsoft Corp.

No standing found

309.03(b)N. 2

113 USPQ2d 1029, 1033 (TTAB 2014)

NSM Resources Corp. v. Microsoft Corp.

applying Rule 11 sanctions to dismiss a Board proceeding "initiated in bad faith" finding petitioner’s pleading "frivolous," and its conduct "vexatious"

318 N. 1

113 USPQ2d 1029, 1037-38 (TTAB 2014)

NSM Resources Corp. v. Microsoft Corp.

Board cannot assess monetary damage awards

502.05 N. 1

113 USPQ2d 1029, 1035 n.10 (TTAB 2014)

NSM Resources Corp. v. Microsoft Corp.

Board may sua sponte dismiss any insufficiently pleaded pleading

503.01 N. 5

113 USPQ2d 1029, 1039 n.19 (TTAB 2014)

NSM Resources Corp. v. Microsoft Corp.

finding joinder rather than substitution appropriate where assignment of pleaded mark was executed one year after proceeding commenced and nothing in the record indicated petitioner or business connected with mark no longer in existence

512.01 NN. 1 & 9

113 USPQ2d 1029, 1031 (TTAB 2014)

NSM Resources Corp. v. Microsoft Corp.

in applying Rule 11 sanctions, considering not just the pleading in the form of a petition to cancel but party’s conduct in other Board proceedings

527.02 N. 1

113 USPQ2d 1029, 1038 (TTAB 2014)

NSM Resources Corp. v. Microsoft Corp.

imposing sanction of entry of judgment, and issuing order to show cause why petitioners should not be subject to the imposition of additional sanctions related to the filing of future notices of opposition or petitions to cancel

527.02 N. 5

113 USPQ2d 1029, 1038 (TTAB 2014)

NSM Resources Corp. v. Microsoft Corp.

entering sanction of entry of judgment for bad-faith litigation under both the Board’s inherent authority to sanction and Rule 11

527.03 N. 2

113 USPQ2d 1029, 1038 (TTAB 2014)

Otter Products LLC v. BaseOneLabs LLC

" . . . the clear language of Trademark Rule 2.132(a) indicates that it applies only where the plaintiff has not introduced "any" evidence, i.e., no evidence of any kind, and here opposer has introduced something, regardless of whatever is found with respect to its ultimate impact."

534.02 N. 1

105 USPQ2d 1252, 1254 (TTAB 2012)

Prosper Business Development Corp. v. International Business Machines, Corp.

ESTTA form controls scope of permissible amendments to claims against 66(a) application

309.03(a)(1) N. 4

113 USPQ2d 1148, 1152 (TTAB 2014)

Prosper Business Development Corp. v. International Business Machines, Corp.

corrective amendment to notice of opposition against § 66(a) application allowed because it was a "minor change"

315 N. 6

113 USPQ2d 1148, 1152 (TTAB 2014)

Prosper Business Development Corp. v. International Business Machines, Corp.

for § 66(a) application, scope of goods and services subject to opposition controlled by ESTTA-generated electronic opposition form

315 NN. 4 & 5

113 USPQ2d 1148, 1151 (TTAB 2014)

Prosper Business Development Corp. v. International Business Machines, Corp.

for § 66(a) application, scope of goods and services subject to opposition controlled by ESTTA-generated electronic opposition form

507.01 N. 5

113 USPQ2d 1148, 1151-52 (TTAB 2014)

Prosper Business Development Corp. v. International Business Machines, Corp.

for § 66(a) application, grounds of opposition limited to those in the ESTTA-generated electronic opposition form

507.01 N. 6

113 USPQ2d 1148, 1151-52 (TTAB 2014)

Prosper Business Development Corp. v. International Business Machines, Corp.

because opposer identified Sections 2(d) and 43(c) as grounds for opposition in the ESTTA electronic opposition form, opposer is limited to those grounds for opposition against Madrid application; however, because those grounds were not limited in the form to any particular class or classes, opposer may seek leave to amend to assert those grounds against all of the three international classes in the involved application

507.02 N. 7

113 USPQ2d 1148, 1151-52 (TTAB 2014)boar

Prosper Business Development Corp. v. International Business Machines, Corp.

Board ordered consolidation of opposition and cancellation proceedings because cancellation was "effectively a compulsory counterclaim"

511 N. 1

113 USPQ2d 1148, 1149 (TTAB 2014)

Prosper Business Development Corp. v. International Business Machines, Corp.

opposition against § 66(a) application, once filed, cannot be amended to add grounds for opposition or to add the goods or services subject to opposition beyond those to which the IB has been notified

528.07(a)

113 USPQ2d 1148, 1151 (TTAB 2014)

S & L Acquisition Co. v. Helene Arpels Inc.

suggesting that "for the protection of both parties, the parties, as well as their counsel should sign the stipulated protective order so as to create a contract that will survive the proceeding"

412.03 N. 3

9 USPQ2d 1221, 1226 n.10 (TTAB 1987)

S & L Acquisition Co. v. Helene Arpels Inc.

reply brief, which constituted mere reargument, given no consideration

502.02(b) N. 11

9 USPQ2d 1221, 1223 n.4 (TTAB 1987)

Saint-Gobain Corp. v. Minnesota Mining and Manufacturing Co.

Board may strike or decline to consider over-length briefs

517 N. 6

66 USPQ2d 1220, 1222 (TTAB 2003)

SARL Corexco v. Webid Consulting Ltd.

when party moved for summary judgment on both pleaded grounds, Board granted summary judgment on one ground and allowed party time to inform Board whether the party wished to proceed with the other ground

528.01 N. 21

110 USPQ2d 1587, 1591 (TTAB 2014)

Shammas v. Focarino

"[I]t is pellucidly clear Congress intended that the plaintiff in such an action pay for all the resources expended by the PTO during the litigation, including attorney’s fees."

903.07 N. 1

990 F.Supp.2d 587, 109 USPQ2d 1320, 1323 (E.D. Va. 2014)

Spier Wines (PTY) Ltd. v. Shepher

disclosures, from initial through pretrial, and discovery responses should be viewed as a continuum of communication designed to avoid unfair surprise and to facilitate a fair adjudication of the case on the merits

408.01(b) N. 1

105 USPQ2d 1239, 1246 (TTAB 2012)

Sports Authority Michigan Inc. v. PC Authority Inc.

"the Board’s jurisdiction over the parties ends when this proceeding does and the Board will not be involved in enforcing provisions of the [protective] agreement after conclusion of the opposition."

412.03 N. 1

63 USPQ2d 1782, 1787 n.5 (TTAB 2001)

Sterling Jewelers Inc. v. Romance & Co.

Documents submitted as evidence of a registration under Trademark Rule 2.122(d) must show current title and current status of registration . . . . and must have been created reasonably contemporaneous with their filing."

317 N. 3

110 USPQ2d 1598, 1601 n.2 (TTAB 2014)

Sterling Jewelers Inc. v. Romance & Co.

granting 37 CFR 2.132(a) motion to dismiss for failure to prosecute where opposer took no testimony and plain copy of pleaded registration was attached to notice of opposition – registration not properly of record, and applicant’s admission in answer that opposer "is listed" as the owner does not establish opposer’s current ownership of the pleaded registration

534.02 N. 4

110 USPQ2d 1598, 1601-02 (TTAB 2014)

Sterling Jewelers Inc. v. Romance & Co.

Opposer failed to comply with "‘simple and clear’ directives of Trademark Rule 2.122(d)" by submitting plain copy of registration attached to notice of opposition – registration not of record

704.03(b)(1)(A) N.14

110 USPQ2d 1598, 1601 (TTAB 2014)

Sterling Jewelers Inc. v. Romance & Co.

Plain copy of registration attached to notice of opposition indicating issuance five years before such filing not "reasonably contemporaneous" with issuance, thus not of record

704.03(b)(1)(A) N.15

110 USPQ2d 1598, 1601 n.2 (TTAB 2014)

Sterling Jewelers Inc. v. Romance & Co.

Applicant’s admission that opposer "is listed" as the owner insufficient to establish opposer’s current ownership of pleaded registration

704.03(b)(1)(A) N.19

110 USPQ2d 1598, 1602 (TTAB 2014)

Sterling Jewelers Inc. v. Romance & Co.

Opposer failed to comply with "‘simple and clear’ directives of Trademark Rule 2.122(d)" by submitting plain copy of registration attached to notice of opposition – registration not of record

704.03(b)(1)(A) N.2

110 USPQ2d 1598, 1601 (TTAB 2014)

Sterling Jewelers Inc. v. Romance & Co.

Opposer failed to comply with "‘simple and clear’ directives of Trademark Rule 2.122(d)" by submitting plain copy of registration attached to notice of opposition – registration not of record

704.03(b)(1)(A) N.8

110 USPQ2d 1598, 1601 (TTAB 2014)

Swatch AG v. Beehive Wholesale, L.L.C.

when appealing a TTAB decision to district court, the parties have the right to submit further evidence and additional claims

906.01 N. 2

739 F.3d 150, 109 USPQ2d 1291, 1295 (4th Cir. 2014)

Swatch AG v. Beehive Wholesale, L.L.C.

[W]here new evidence is presented to the district court on a disputed fact question, a de novo finding will be necessary to take such evidence into account together with the evidence before the board") (internal citations omitted

906.01 N. 3

739 F.3d 150, 109 USPQ2d 1291, 1295 (4th Cir. 2014)

Swatch AG v. Beehive Wholesale, L.L.C.

"The district court has authority independent of the PTO to grant or cancel registrations and to decide any related matters such as infringement and unfair competition claims."

906.01 N. 5

739 F.3d 150, 109 USPQ2d 1291, 1295 (4th Cir. 2014)

Swiss Watch International Inc. v. Federation of the Swiss Watch Industry

party submitted all evidence under seal, and was ordered to resubmit copies of evidence in which only truly confidential material was redacted

412.04 N. 4

101 USPQ2d 1731, 1736 (TTAB 2012)

The Phillies v. Philadelphia Consolidated Holding Corp.

scope of permissible discovery would have been proportionately narrower if opposer had pleaded only the most relevant marks and clearly and specifically identified the goods and services relevant to this proceeding

402.01 N. 2

107 USPQ2d 2149, 2153, (TTAB 2013)

The Phillies v. Philadelphia Consolidated Holding Corp.

opposer’s unpleaded registrations are beyond the scope of discovery; party is free to conduct own investigation to determine whether a permissive counterclaim is warranted but should avoid further complicating the case by conducting the investigation through discovery

402.01 N. 3

107 USPQ2d 2149, 2154, 2154 n.5 (TTAB 2013)

The Phillies v. Philadelphia Consolidated Holding Corp.

granting protective order with regard to 94 duplicative requests for admissions and those that sought admissions as to unpleaded registrations

412.01 N. 16

107 USPQ2d 2149, 2154 (TTAB 2013)

The Phillies v. Philadelphia Consolidated Holding Corp.

protective order granted with regard to duplicative requests for admissions and admissions directed to opposer’s unpleaded registrations

412.06 N. 1

107 USPQ2d 2149, 2154 (TTAB 2013)

The Phillies v. Philadelphia Consolidated Holding Corp.

granting protective order with regard to 94 duplicative requests for admissions and those that sought admissions as to unpleaded registrations

412.06(b) N. 4

107 USPQ2d 2149, 2154 (TTAB 2013)

Turdin v. Trilobite, Ltd.

documents which are designated confidential do not appear in the electronic docket, TTABVUE

412.04 N. 1

109 USPQ2d 1473, 1476 n.6 (TTAB 2014)

UMG Recordings Inc. v. Mattel Inc.

efficiencies of parties’ stipulations as to evidentiary record defeated by submission of excessive records, more than necessary to establish party’s position; although parties stipulated to testimony by declaration to streamline proceeding, numerous objections to evidence, subverted the parties’ stipulations

528.05(a)(2) N. 4

100 USPQ2d 1868, 1873-75 (TTAB 2011)

United Global Media Group, Inc. v. Tseng

Plaintiff may rely on registrations issued from pleaded applications

309.03(c) N. 5

112 USPQ2d 1039, 1040 n.14 (TTAB 2014)

United Global Media Group, Inc. v. Tseng

opposer that pleads ownership of the underlying applications in the notice of opposition may make the registrations which issue during the opposition of record without having to amend the notice of opposition to assert reliance on the registrations

314 N. 8

112 USPQ2d 1039 (TTAB 2014)

United Global Media Group, Inc. v. Tseng

mere inputting of a registration number when prompted by ESTTA, to list any registration upon which the plaintiff relies, insufficient to make the registration(s) of record

317 N. 6

112 USPQ2d 1039, 1042 n.11 (TTAB 2014)

United Global Media Group, Inc. v. Tseng

evaluation of various documents submitted under notice of reliance

532 N. 3

112 USPQ2d 1039, 1046-47 (TTAB 2014)

United Global Media Group, Inc. v. Tseng

Evaluation of various documents submitted under notice of reliance

704.03(b)(1)(A) N.1

112 USPQ2d 1039, 1041-43 (TTAB 2014)

United Global Media Group, Inc. v. Tseng

Evaluation of various documents submitted under notice of reliance

704.03(b)(1)(A) N.14

112 USPQ2d 1039, 1041-43 (TTAB 2014)

United Global Media Group, Inc. v. Tseng

evaluation of various documents submitted under notice of reliance

704.03(b)(1)(A) N.15

112 USPQ2d 1039, 1041-43 (TTAB 2014)

United Global Media Group, Inc. v. Tseng

Non-status and title copies of four registrations attached to notice of opposition not of record despite applicant’s admission in answer that opposer is the owner of them, as opposer did not plead validity of registrations in notice of opposition

704.03(b)(1)(A) N.19

112 USPQ2d 1039, 1041-42 (TTAB 2014)

United Global Media Group, Inc. v. Tseng

Evaluation of various documents submitted under notice of reliance

704.03(b)(1)(A) N.2

112 USPQ2d 1039, 1041-43 (TTAB 2014)

United Global Media Group, Inc. v. Tseng

When an opposer pleads ownership of an underlying application, opposer may make of record subsequently issued registration of that application without amending pleading

704.03(b)(1)(A) N.4

112 USPQ2d 1039, 1040 n.3 (TTAB 2014)

United Global Media Group, Inc. v. Tseng

Evaluation of various documents submitted under notice of reliance

704.03(b)(1)(A) N.8

112 USPQ2d 1039, 1041-43 (TTAB 2014)

United Global Media Group, Inc. v. Tseng

Certificate of incorporation is official record admissible under notice of reliance

704.07 N.5

112 USPQ2d 1039, 1046-47 (TTAB 2014)

United Global Media Group, Inc. v. Tseng

Internet printouts personal to applicant such as invoices and account information not admissible through notice of reliance even if show URLs and dates printed; press releases posted on Internet have become publicly available, thus admissible under notice of reliance

704.08(b) N.2

112 USPQ2d 1039, 1046-47 (TTAB 2014)

United Global Media Group, Inc. v. Tseng

Motion to strike exhibits under notice of reliance granted with leave to cure

707.02(b)(2) N.2

112 USPQ2d 1039, 1046-47 (TTAB 2014)

University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.

Board takes judicial notice of dictionary definitions

704.12(b) N.3

213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)

Watercare Corp. v. Midwesco -Enterprise, Inc.

If a motion to test the sufficiency is not filed, propounding party may not complain thereafter of the insufficieny

524.0 N. 1

171 USPQ 696, 697-98 n.7 (TTAB 1971)

Watercare Corp. v. Midwesco -Enterprise, Inc.

opposer’s motion at final hearing seeking ruling on propriety of applicant’s responses to requests for admission was manifestly untimely; discovery is a pre-trial procedure and all matters pertinent thereto should be resolved prior to trial

524.03 N. 2

171 USPQ 696, 697-98 n.7 (TTAB 1971)

Weatherford/Lamb Inc. v. C&J Energy Services, Inc.

protective order granted that petitioner need only produce limited or representative samples of responsive documents

526 N. 3

96 USPQ2d 1834, 1836 n.3 (TTAB 2010)

Weider Publications, LLC v. D&D Beauty Care Co.

ESTTA filing receipt contents

108 N. 1

109 USPQ2d 1347, 1351 (TTAB 2014) (appeal dismissed per stipulation), 2014-1461 (Fed. Cir. Oct. 10, 2014)

Weider Publications, LLC v. D&D Beauty Care Co.

duty of party making submissions to ensure they were entered into the trial record

110.09 (c)(2) N. 3

109 USPQ2d 1347, 1350-51 (TTAB 2014) (appeal dismissed per stipulation), 2014-1461 (Fed. Cir. Oct. 10, 2014)

Weider Publications, LLC v. D&D Beauty Care Co.

Filing party’s responsibility to make sure submissions by ESTTA have be entered into the trial record

110.09 new N. 2

109 USPQ2d 1347, 1351 (TTAB 2014) (appeal dismissed per stipulation), 2014-1461 (Fed. Cir. Oct. 10, 2014)

Weider Publications, LLC v. D&D Beauty Care Co.

Parties urged to check ESTTA filing receipts and TTABVUE to ensure all documents have been properly transmitted

110.09 new N. 3

109 USPQ2d 1347, 1351 (TTAB 2014) (appeal dismissed per stipulation), 2014-1461 (Fed. Cir. Oct. 10, 2014)

Weider Publications, LLC v. D&D Beauty Care Co.

Duty of the party making submissions to the Board via ESTTA to ensure that they have been entered into the trial record

703.01(i) N.10

109 USPQ2d 1347, 1351-52 (TTAB 2014) (appeal dismissed per stipulation), 2014-1461 (Fed. Cir. Oct. 10, 2014)

Weider Publications, LLC v. D&D Beauty Care Co.

Third-party registrations do not constitute evidence of use, thus of limited probative value to show mark is weak

704.03(b)(1)(B) N.7

109 USPQ2d 1347, 1351 n.10 (TTAB 2014) (appeal dismissed per stipulation), 2014-1461 (Fed. Cir. Oct. 10, 2014)

Weider Publications, LLC v. D&D Beauty Care Co.

Plain copies of third-party applications from USPTO’s electronic databases admissible as official records

704.03(b)(2) N.2

109 USPQ2d 1347, 1350 (TTAB 2014) (appeal dismissed per stipulation), 2014-1461 (Fed. Cir. Oct. 10, 2014)

Weider Publications, LLC v. D&D Beauty Care Co.

Evidence only that applications were filed, thus incompetent to show common third-party use

704.03(b)(2) N.3

109 USPQ2d 1347, 1360 (TTAB 2014) (appeal dismissed per stipulation), 2014-1461 (Fed. Cir. Oct. 10, 2014)

Weider Publications, LLC v. D&D Beauty Care Co.

Third-party applications printed from USPTO’s electronic database admissible under notice of reliance as official records; status and title copies not required

704.07 N.4

109 USPQ2d 1347, 1352 n.13 (TTAB 2014) (appeal dismissed per stipulation), 2014-1461 (Fed. Cir. Oct. 10, 2014)

Weider Publications, LLC v. D&D Beauty Care Co.

Duty of the party making submissions to the Board via ESTTA to ensure that they have been entered into the trial record

704.08(a) N.10

109 USPQ2d 1347, 1351-52 (TTAB 2014) (appeal dismissed per stipulation), 2014-1461 (Fed. Cir. Oct. 10, 2014)

Weider Publications, LLC v. D&D Beauty Care Co.

"in the interests of fairness," Board considers additional excerpts of discovery deposition submitted by adverse party under notice of reliance

704.09 N.4

109 USPQ2d 1347, 1352 n.13 (TTAB 2014) (appeal dismissed per stipulation), 2014-1461 (Fed. Cir. Oct. 10, 2014)

Wet Seal Inc. v. FD Management Inc.

Objections to testimony on grounds other than untimeliness must be maintained in brief or they are waived

533.03 N. 3

82 USPQ2d 1629, 1632 (TTAB 2007)