1208 Treatment of Evidence
The Board generally takes a somewhat more permissive stance with respect to the admissibility and probative value of evidence in an ex parte proceeding than it does in an inter partes proceeding. [ Note 1.] That is, in an ex parte proceeding the Board tolerates some relaxation of the technical requirements for evidence and focuses instead on the spirit and essence of the rules of evidence. The reason for this more relaxed approach in ex parte cases is that in an ex parte proceeding there is no cross-examination of witnesses or any compelling need for the strict safeguards required in an inter partes proceeding. [ Note 2.]
For example, the Board is somewhat more lenient in its approach in the consideration of surveys in ex parte proceedings than inter partes proceedings. [ Note 3.] Also, the affidavit or 37 CFR § 2.20 declaration is an established method for the introduction of evidence in an ex parte proceeding. [ Note 4.] In an inter partes proceeding, however, evidence may not be offered in affidavit or 37 CFR § 2.20 declaration form except by agreement of the parties. [ Note 5.] TBMP § 703.01(b) (Form of Testimony).
It is the better practice to provide evidence as to sales figures and the like by affidavit or declaration. However, representations by the applicant’s counsel may, in certain circumstances, be accepted. [ Note 6.] Affidavits or declarations may have probative value even if they are form documents, or are prepared by the applicant’s attorney. [ Note 7.]
However, while the evidentiary requirements in an ex parte record are less formal than in an inter partes context, documents submitted by a third party by letter of protest must still comply with inter partes evidentiary requirements of foundation and authentication to have evidentiary value. [ Note 8.]
For information as to how the Court of Appeals for the Federal Circuit, in reviewing a decision of the Board on an ex parte appeal, evaluates the sufficiency of the evidence offered by the examining attorney, see the cases cited in the note below. [ Note 9.]
NOTES:
1. In re Sela Products LLC, 107 USPQ2d 1580, 1584 (TTAB 2013) ("…the Board does not, in ex parte appeals, strictly apply the Federal Rules of Evidence, as it does in inter partes proceedings.").
2. See In re Hudson News Co., 39 USPQ2d 1915, 1920 n.10, 1924 n.18 (TTAB 1996), aff’d without opinion (Fed. Cir. 1997) (Board allowed NEXIS evidence to show psychological effect of color blue, despite hearsay nature, recognizing the difficulty for examining attorney to establish such fact without relying on NEXIS evidence; Board also accepted sufficiency of evidence showing features of applicant’s trade dress were common, recognizing that USPTO’s limited resources constrain an examining attorney’s ability to acquire photographs of interiors of retail establishments); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565 (TTAB 1996); In re Murphy Door Bed Co., 223 USPQ 1030, 1032 n.9 (TTAB 1984). See also In re Berman Brothers Harlem Furniture In c., 26 USPQ2d 1514, 1515 (TTAB 1993).
3. In re Wilcher Corp., 40 USPQ2d 1929, 1934 (TTAB 1996); In re Pillsbury Co., 174 USPQ 318, 320 (TTAB 1972).
4. See, e .g., 37 CFR § 2.41(b); In re Manco Inc., 24 USPQ2d 1938, 1941 n.8 (TTAB 1992); In re Bauhaus Designs Canada Ltd., 12 USPQ2d 2001, 2004 (TTAB 1989); In re Motorola, Inc., 3 USPQ2d 1142, 1143 (TTAB 1986); In re Peterson Manufacturing Co., 229 USPQ 466, 468 (TTAB 1986); In re Melville Corp., 228 USPQ 970, 972 (TTAB 1986); In re Gammon Reel, Inc., 227 USPQ 729, 731 (TTAB 1985); In re Original Red Plate Co., 223 USPQ 836, 838 (TTAB 1984).
5. See 37 CFR § 2.123(b).
6. See In re First Craft Inc., 76 USPQ2d 1183, 1185 n.3 (TTAB 2005) (although it is better practice to present information in affidavit or declaration form with supporting documentation, Board considered representations by applicant’s counsel because examining attorney did not object to their form and representations not contradicted by anything in the record); In re EBSCO Industries Inc., 41 USPQ2d 1917, 1923 n.5 (TTAB 1997) (examining attorney never objected to attorney’s representations, and figures not contradicted by other information).
7. See In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532, 1536 (Fed. Cir. 2009) (use of same words in 64 form declarations submitted to show a widely held view "does not eliminate all value of the evidence"); In re Data Packaging Corp., 453 F.2d 1300, 172 USPQ 396, 399 (CCPA 1972) (fact that affidavits were drafted by applicant’s attorney and were practically identical in wording detracts little or nothing from their sufficiency to make out a prima facie case of trademark recognition); In re Pingel Enterprise Inc., 46 USPQ2d 1811, 1822 n.15 (TTAB 1998) (fact that applicant’s attorney assisted consumers in preparing statements--form letters--to show acquired distinctiveness does not make the submissions less honest or valid).
But see In re Lorillard Licensing Co., 99 USPQ2d 1312, 1318-20 (TTAB 2011) (Board did not find more that 6500 form declarations from "customers" and more than 4100 form declarations from dealers very probative of applicant’s claim of acquired distinctiveness); In re Udor U.S.A. Inc., 89 USPQ2d 1978, 1984 (TTAB 2009) (Board viewed four form declarations with skepticism because they were contradicted by the weight of the record); In re Audio Book Club Inc., 52 USPQ2d 1042, 1047 (TTAB 1999) (fact that 49 form letters were couched in legal terms and presumably drafted by applicant’s counsel raises some questions as to whether signers understood the legal import of their statements); In re Benetton Group S.p.A., 48 USPQ2d 1214, 1217 (TTAB 1998) (form statements that do not provide basic background information about the declarants and their experience with applicant have limited probative value); In re EBSCO Industries Inc., 41 USPQ2d 1917, 1923 n.5 (TTAB 1997) (declarations deserve little weight because there are questions as to whether they reflect views of the declarants since declarants filled in only their names and addresses in forms, and declarants failed to notice that drawing was missing from the declaration when the focus of the declaration was the configuration shown in the drawing). See also In re Pharmavite LLC, 91 USPQ2d 1778, 1782 (TTAB 2009) (conclusory statements in declaration that design functions as a mark, without evidentiary support, insufficient); In re La Peregrina Ltd., 86 USPQ2d 1645, 1649 (TTAB 2008) (declarations offering nothing more than conclusory statement, without reasons, not persuasive).
8. See In re Urbano, 51 USPQ2d 1776, 1779 n.6 (TTAB 1999) (affidavit should have been submitted to identify and authenticate documents that are not clearly identified as to nature or source and are not self-authenticating).
9. In re Budge Manufacturing Co., 857 F.2d 773, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988) (Court, being mindful that the USPTO has limited facilities for acquiring evidence--it cannot, for example, be expected to conduct a survey of the marketplace or obtain consumer affidavits--concludes evidence of record is sufficient to establish a prima facie case of deceptiveness), and In re Loew’s Theatres, Inc., 769 F.2d 764, 768, 226 USPQ 865, 868 (Fed. Cir. 1985) ("...practicalities of the limited resources available to the PTO are routinely taken into account in reviewing its administrative action.").
But see In re Mavety Media Group Ltd., 33 F.3d 1367, 31 USPQ2d 1923, 1928 (Fed. Cir. 1994) ("...the PTO may discharge its burden of proving that Mavety's mark BLACK TAIL is scandalous under § 1052(a) through evidence such as consumer surveys regarding the substantial composite of the general public.").
1208.01 Evidence from NEXIS Database or Publications
The applicant or the examining attorney may submit articles or excerpts from articles taken from periodicals or NEXIS and other similar databases as evidence. [ Note 1.] Such material is evidence of how a term or mark may be perceived, rather than of the truth of the underlying information in the article. [ Note 2.] The probative value of stories from newswires varies. They may be treated as having minimal evidentiary value when it is not clear that such stories have appeared in any publication available to the consuming public. In such cases, the wire service stories are competent to show how their authors used particular terms, but they are not necessarily assumed to have influenced the attitudes of prospective customers. [ Note 3.] On the other hand, newswire stories have been considered as having an effect when there is reason to believe that the relevant consumers have been exposed to the articles. [ Note 4.] As for articles from foreign publications, the probative value of such articles is evaluated on a case-by-case basis, with consideration given to the nature of the involved goods or services and the growing availability and use of the Internet as a resource for news. [ Note 5.]
It is not necessary that all articles retrieved by a search of NEXIS or other databases be submitted and, indeed, the Board discourages such submissions where they are unnecessarily cumulative or not probative. [ Note 6.] Examining attorneys should not submit articles or excerpts that are not relevant. [ Note 7.] However, if an examining attorney submits a sample of articles, it should be representative of the articles retrieved by the search. [ Note 8.] Further, if an examining attorney submits a very limited number of articles without indicating that it is a representative sample of a certain number of articles, the Board will assume that these are the only articles that support the examining attorney’s position. [ Note 9.]
If the applicant or the examining attorney submits excerpts from articles, the nonoffering party may submit the complete article, even if such submission is made after the appeal is filed. See TBMP § 1207.01 for general rule that evidence submitted after appeal is untimely. If only a portion of an article is submitted, that portion is not thereby insulated from the context from whence it came. [ Note 10.] If the nonoffering party wishes to have the entire article considered, the better practice is to submit the article with a request for remand. However, because the party submitting the excerpt of the article had the opportunity to review the entire article, if the article is submitted with an appeal brief the Board need not remand the application, and may instead consider the article as part of the record. However, if, after appeal, an applicant attempts to submit a full printout of articles which were revealed in an examining attorney’s search, but which were not introduced by the examining attorney, such articles are considered to be additional evidence and therefore untimely. [ Note 11.]
NOTES:
1. In re Shiva Corp., 48 USPQ2d 1957, 1958 (TTAB 1998).
2. See In re Viventia Biotech Inc., 80 USPQ2d 1376, 1379 (TTAB 2006) (use of term in articles shows authors’ belief that term is appropriate way to describe goods and that readers will understand the meaning of the term); In re Lamb-Weston Inc., 54 USPQ2d 1190, 1192 (TTAB 2000) (use of term in articles, particularly those periodicals with a general circulation, reflects a perception that the public is familiar with the term and will readily understand it); In re Hudson News Co., 39 USPQ2d 1915, 1920 n.10 (TTAB 1996) (Board allowed use of NEXIS evidence to show psychological effect of color blue, despite applicant’s hearsay objection, noting the difficulties for examining attorneys to establish this kind of fact, and although the evidence has a hearsay element, there is no bias in the evidence, which was not prepared for purposes of the case), aff’d without opinion, 114 F.3d 1207 (Fed. Cir. 1997).
3. In re International Business Machines Corp., 81 USPQ2d 1677, 1683 n.10 (TTAB 2006) (newswire stories do not have the same probative value as stories appearing in newspapers and magazines); In re Classic Media Inc., 78 USPQ2d 1699, 1701 n.2 (TTAB 2006) (nothing to indicate that wire service report was distributed and thus has minimal probative value in that public’s exposure to the use of the phrase in the wire report cannot be judged); In re Opus One Inc., 60 USPQ2d 1812, 1815 n.7 (TTAB 2001) (newswire stories, presumably unpublished, and stories from foreign publications, not considered).
4. In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1268 (TTAB 2009) (Business Wire article considered); In re Cell Therapeutics Inc., 67 USPQ2d 1795, 1798 (TTAB 2003) (given that newswire stories are likely to reach the public via the Internet, they now have more probative value than in the past, in this case the relevant public consisted of highly sophisticated medical doctors and researchers who would have access to newswire stories).
5. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007) (information originating on foreign websites or in foreign news publications that are accessible to the United States public may be relevant to discern U.S. consumer impression of a proposed mark); In re AOP LLC, 107 USPQ2d 1644, 1649 n.3 (TTAB 2013) (submissions from the examining attorney made in languages other than English not considered); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1265 n.9 (TTAB 2011) (no basis to conclude U.S. consumers exposed to website for Australian brewery; those webpages not considered); In re Cell Therapeutics, Inc., 67 USPQ2d 1795, 1798 (TTAB 2003). But see In re Joint-Stock Co. "Baik", 80 USPQ2d 1305, 1307 n.3 (TTAB 2006) (article in London edition of Financial Times not evidence of goods/place association because nothing to show that London edition distributed in the United States); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1538 n.2 (TTAB 1998) (in the absence of evidence of the extent of circulation of foreign publications in the United States, they cannot serve to show the significance in this country of the designation at issue); In re Wilcher Corp., 40 USPQ2d 1929, 1931 (TTAB 1996) (in absence of evidence establishing substantial circulation of foreign publications in the United States, they are not competent to show significance of term to general U.S. public).
6. In re Homes & Land Publishing Corp., 24 USPQ2d 1717, 1718 (TTAB 1992) (it is not necessary that an examining attorney submit all stories found, especially where there are a large number of them). C f. In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245-46 (TTAB 2010) (Board criticized applicant for submitting over 300 pages of Internet material, much of which was duplicative or irrelevant).
7. See In re Couture, 60 USPQ2d 1317, 1318 n.2 (TTAB 1999) (many excerpts were repetitive or used the searched term for services not related to the applicant’s); In re Lamb-Weston Inc., 54 USPQ2d 1190, 1192 (TTAB 2000) (articles which bear no relationship to applicant’s goods are irrelevant). See also In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1339 n.10 (TTAB 2009) (Board approved examining attorney’s Internet search of involved mark that included limitation to goods at issue).
8. See In re Trans Continental Records Inc., 62 USPQ2d 1541, 1544 (TTAB 2002) (although the examining attorney described the NEXIS articles which were submitted as a "sample," Board concerned by the fact that the NEXIS search retrieved 441 articles, and the first of the ten stories submitted was number 257). See also In re Homes & Land Publishing Corp., 24 USPQ2d 1717, 1718 n.1 (TTAB 1992) (Board criticized examining attorney’s submission of only 3 articles of the 18 retrieved and characterization of them as a "sampling"; "saying that the three articles are only a sampling of the evidence is not the same as saying that they are a ‘representative sample’ thereof").
9. In re The Monotype Corp. PLC, 14 USPQ2d 1070, 1071 n.2 (TTAB 1989) (although NEXIS search uncovered 48 stories, examining attorney submitted only two excerpts; Board concluded that, because the examining attorney is presumed to have made the best case possible, the 46 stories not made of record did not support the examining attorney’s position, and suggested that if there had been additional stories supporting the position the examining attorney should have submitted a larger number and indicated whether or not they were representative of the rest); In re Federated Department Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987) (examining attorney submitted 3 of 18 NEXIS articles retrieved; Board assumed that the three excerpts selected were the best support of the examining attorney’s refusal to register available from that source).
10. In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 820 (Fed. Cir. 1986).
11. In re Psygnosis Ltd., 51 USPQ2d 1594, 1597-98 (TTAB 1999).
1208.02 Cited Registrations and Third-Party Registrations
In the context of an ex parte appeal of a Section 2(d) refusal, the file of the cited registration(s) is not automatically made of record. [ Note 1.] Rather, the prosecution file history of a cited registration(s) must be timely introduced as evidence. [ Note 2.]
With regard to third-party registrations, the Federal Circuit, in In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed. Cir. 2010), exercised its discretion to take judicial notice of a third party’s registrations. [ Note 3.] However, the Board’s well-established practice is to not take judicial notice of third-party registrations when an applicant or examining attorney requests that such notice be taken during the course of an appeal.
37 CFR § 2.142(d) provides that the record in an appeal must be complete prior to the filing of an appeal, see TBMP § 1203.02(e) and TBMP § 1207.01, and to allow the applicant or the examining attorney to, in effect, add to the record during the appeal would subvert the rule and require the Board to re-examine the application during the appeal, based on the expanded record. Thus, to make a third-party registration of record, a copy of the registration, either a copy of the paper USPTO record, or a copy taken from the electronic records of the Office, should be submitted during prosecution/examination of the application. [ Note 4.] Mere listings of registrations, or copies of private company search reports, are not sufficient to make the registrations of record. [ Note 5.] However, there are limited circumstances in which the Board will consider such listings. In particular, if an applicant includes a listing of registrations in a response to an Office action, and the examining attorney does not advise the applicant that the listing is insufficient to make the registrations of record at a point when the applicant can correct the error, the examining attorney will be deemed to have waived any objection to consideration of the list itself, for whatever probative value it may have. [ Note 6.] TBMP § 1207.03. Similarly, if the examining attorney discusses the registrations in an Office action or brief, without objecting to them, the registrations will be treated as stipulated into the record. [ Note 7.] See TBMP § 1207.03 regarding evidence considered due to actions of nonoffering party. However, the Board will not consider more than the information provided by the applicant. [ Note 8.] Thus, if the applicant has provided only a list of registration numbers and/or marks, the list will have very limited probative value. [ Note 9.].
An improper listing of third-party registrations will not be considered if the list is submitted at a point where the applicant cannot correct the format of the submission and if the examining attorney does not discuss the registrations or otherwise treat them as of record. [ Note 10.]
Third-party applications, as opposed to registrations, have no probative value other than as evidence that the applications were filed. [ Note 11.] Further, the Board will not take judicial notice of status changes in third-party applications in terms of whether such applications eventually issued to registration. [ Note 12.] Expired or cancelled third-party registrations generally are evidence only of the fact that the registrations issued. [ Note 13.] The Board may choose not to consider expired or cancelled third-party registrations. [ Note 14.]
NOTES:
1. In re Sela Products LLC, 107 USPQ2d 1580, 1583 (TTAB 2013) ("there is no equivalent rule for ex parte proceedings that makes the file of a cited registration of record").
2. In re Sela Products LLC, 107 USPQ2d 1580, 1583 (TTAB 2013) (had applicant submitted the registration file during the prosecution of the involved application the Board would have considered it).
3. In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1688 (Fed. Cir. 2010) ("Moreover, this court may take judicial notice of the existence of the Playboy bunny trademarks under Fed. R. Evid. 201(c), as we determine that the registration documents by the PTO are ‘capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.’"). See Fed. R. Evid. 201(b)(2); Group One, Ltd. v . Hallmark Cards, 407 F.3d 1297, 1306 (Fed. Cir. 2005) (upholding district court’s taking of judicial notice of the fact of a patent’s reinstatement).")
4. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012) (mere listing of third party registrations in brief insufficient to make them of record); In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006); In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). See also In re Fiat Group Marketing & Corporate Communications S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014) (examining attorney’s objection to applicant’s submission of third-party registration with appeal brief sustained).
5. In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010); In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996).
6. See In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1594 n.40 (TTAB 2014) (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); In re City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2012) ("[T]he examining attorney’s failure to advise applicant of the insufficiency of the list of registrations when it was proffered during examination constituted a waiver of any objection to consideration of that list. Accordingly, we will consider the ... list of registrations ... ‘for whatever limited probative value such evidence may have,’" (citing In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001)), aff’d 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); In re District of Columbia, 101 USPQ2d 1588, 1591 (TTAB 2012) (examining attorney’s objection overruled where on remand applicant submitted copies of the third-party registrations it listed in its response to the first Office action), aff’d sub nom. In re City of Houston, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1717 (TTAB 2011) (specific data provided by applicant considered because examining attorney did not advise applicant that a listing of registrations was insufficient when applicant had time to cure the defect). See also In re 1 st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) (applicant listed particulars of third-party applications/registrations in response to first Office action, and because examining attorney did not advise applicant that the listing was insufficient to make applications/registrations of record at a point where applicant could have corrected the error, the list was considered on appeal); In re Hayes, 62 USPQ2d 1443, 1445 n.3 (TTAB 2002) (Board considered third-party registrations submitted with reply brief because applicant had submitted copies of Official Gazettes showing marks published for opposition during prosecution, and examining attorney did not advise applicant that copies of the registrations were necessary to make them of record); In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001) (examining attorney’s objection, raised in appeal brief, to "mere listing" of registrations deemed waived because it was not interposed in response to applicant’s reliance on such listing in its response to initial Office action, listing considered for whatever probative value it might have, with Board noting that the listing did not indicate whether registrations were on the Principal or the Supplemental Register). Please Note: This case does not provide authority for submission (or consideration) of the full registrations on appeal. In re City of Houston, 101 USPQ2d 1534, 1537 n.7 (TTAB 2012), aff’d 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013).
7. See In re Total Quality Group Inc., 51 USPQ2d 1474, 1477 n.6 (TTAB 1999) (examining attorney did not object to listing of third-party registrations, rather he treated the registrations as if they were of record); In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998) (examining attorney did not object to and treated as of record listings from a commercial trademark search report submitted by applicant during prosecution, so Board considered material).
8. In re 1 st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) (Board treated listing of particulars of third-party applications/registrations submitted by applicant as stipulated into record only to the extent that the specific data provided by applicant was considered); In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001) (listing of registration information considered for whatever probative value it might have, with Board noting that the listing did not indicate whether registrations issued on the Principal or the Supplemental Register).
9. See In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 n.6 (TTAB 2011) (Board considered TESS listings for whatever probative value they had); In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1380 (TTAB 2006).
10. In re HSB Solomon Associates LLC, 102 USPQ2d 1269, 1273-74 (TTAB 2012) (website references in applicant’s request for reconsideration not considered because, even if examining attorney had advised applicant of the insufficiency, there was not time to cure it); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012) (even if copies of third-party registrations had been submitted with brief, they would have been untimely and would not be considered); In re 1 st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) (listing of third-party registration information submitted with request for reconsideration not considered because at the time it filed the list applicant no longer had an opportunity to add to the record of the application and correct the evidentiary insufficiency of the submission); In re Caserta, 46 USPQ2d 1088, 1090 n.4 (TTAB 1998) (list of third-party registered marks from an unidentified source submitted with request for reconsideration, and objected to by examining attorney, not considered).
11. In re Toshiba Medical Systems Corporation, 91 USPQ2d 1266, 1270 n.8 (TTAB 2009); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366 n.7 (TTAB 2007); In re 1 st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002).
12. In re Binion, 93 USPQ2d 1531, 1535 n.3 (TTAB 2009).
13. In re Brown-Forman Corp., 81 USPQ2d 1284, 1286 n.3 (TTAB 2006).
14. See In re Hartz Hotel Services Inc., 102 USPQ2d 1150, 1152 n.5 (TTAB 2012) (Board did not consider four cancelled third-party registrations submitted by applicant).
1208.03 Internet Material
Material obtained through the Internet or from websites is acceptable as evidence in ex parte proceedings. It is preferable that it be identified by the full address (url) for the web page, and the date it was downloaded, either by the information printed on the web page itself, or by providing this information in an Office action or an applicant’s response. [ Note 1.] Because website contents and search engine results are accessible by the consuming public (although search engine results may be retrieved only if members of the public enter the identical search strategy), they constitute evidence of potential public exposure. [ Note 2.] Website evidence may also be used to show the translation of a word or term. [ Note 3.] Material obtained from an applicant’s website, or that of a third party, may provide information about, for example, products or services, customers, and channels of trade, although their probative value will vary depending on the facts of the particular case. Evidence from websites located outside the United States may have probative value depending on the circumstances, including whether it is likely that U.S. consumers have been exposed to the foreign website. [ Note 4.] Cf. TBMP § 1208.01 regarding articles appearing in foreign publications.
A search result summary from a search engine, such as Yahoo! or Google, which shows use of a phrase as key words by the search engine, is of limited probative value. Such search results do not show use of a term or phrase as a heading, link or content on a website, or there may be insufficient text to show the context within which a term is used. [ Note 5.] Use in a search summary may indicate only that the two words in an overall phrase appear separately in the website literature. [ Note 6.] Nor does the fact that a search by an Internet search engine retrieves a large number of hits have probative value. [ Note 7.] Applicants and examining attorneys should submit only relevant materials that are retrieved by an Internet search. The Board discourages submissions that are unnecessarily cumulative or not probative. [ Note 8.] See TBMP § 1208.01. If a large number of web pages are submitted, it is preferable for the applicant and examining attorney to highlight in their briefs the most probative evidence. [ Note 9.] See TBMP § 1203.01. The Board will not take judicial notice of Internet searches. [ Note 10.]
Definitions available from an online resource, including online dictionaries and translations, that are readily available and therefore capable of being verified are acceptable. [ Note 11.] In general, evidence from online dictionaries that do not otherwise appear in printed format should be submitted prior to appeal so that the nonoffering party has an opportunity to check the reliability of the evidence and/or timely offer rebuttal evidence. [ Note 12.] The Board will not take judicial notice of such material unless the online dictionary definitions are from references that are the electronic equivalent of a print dictionary or have regular fixed editions. [ Note 13.] TBMP § 1208.04. The Board will consider evidence taken from Wikipedia so long as the nonoffering party has an opportunity to rebut that evidence by submitting other evidence that may call into question the accuracy of the particular Wikipedia information. The better practice with respect to Wikipedia evidence is to corroborate the information with other reliable sources, including Wikipedia’s sources. [ Note 14.] Similarly, the Board will consider dictionary definitions taken from Urban Dictionary (urbandictionary.com), a collaborative online dictionary of slang terms, so long as the non-offering party has an opportunity to rebut that evidence by submitting other definitions. [ Note 15.]
The Board also will consider Internet blog postings as well as individual comments thereto, and accord such evidence the appropriate probative value depending on its source of origin and its relationship to the issue at hand. [ Note 16.]
NOTES:
1. In re White, 73 USPQ2d 1713, 1716 n.5 (TTAB 2004); In re International Bu sin ess Machines Corp., 81 USPQ2d 1677, 1682 n.9 (TTAB 2006) (Board considered web pages that did not include web addresses because applicant did not object to them).
2. In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1060 (TTAB 2002). See , e.g., In re Country Music Association, Inc., 100 USPQ2d 1824, 1829 (TTAB 2011) (printouts from web pages are not per se incompetent to show a term is generic).
3. In re Nieves & Nieves, LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) ("We find that the articles from non-U.S. publications have some probative value in this case because it concerns the perception of the general U.S. public—the relevant consumers of the goods in the application—regarding the identity of a celebrity who lives and travels outside of the United States."); In re La P e regrina Ltd., 86 USPQ2d 1645, 1647 n.3 (TTAB 2008) (Board considered translation from www.babelfish.altavista.com); In re Brown-Forman Corp., 81 USPQ2d 1284, 1286 (TTAB 2006) (Board considered entries from WordReference.com Dictionnaire Francais-Anglais and Babel Fish Translation).
4. In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1786 (TTAB 2013) (applicant’s relevancy objection to evidence submitted by the examining attorney obtained from foreign web sites overruled because evidence regarding the significance of the color black on floral packaging "would be difficult to locate"); In re International Business Machines Corp., 81 USPQ2d 1677, 1681 n.7 (TTAB 2006) (web page from foreign source considered because case involved computer technology, and "it is reasonable to consider a relevant article regarding computer hardware" from an English-language website from another country); In re King Koil Licensing Co., 79 USPQ2d 1048, 1050 (TTAB 2006) (a consumer in the United States may turn to foreign websites when researching products they may wish to purchase); In re Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB 2002) (professionals in medicine, engineering, computers, telecommunications and other fields are likely to utilize all available resources, regardless of country of origin or medium, and the Internet is a resource that is widely available to these same professionals and to the general public in the United States). Cf. Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2021, n.9 (TTAB 2014) ( "Articles submitted by opposer from foreign publications (e.g., The Economist) have not been considered insofar as opposer did not provide evidence of U.S. circulation.").
5. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) ("Search engine results—which provide little context to discern how a term is actually used on the web page that can be accessed through the search result link—may be insufficient to determine the nature of the use of a term or the relevance of the search results to registration considerations"); In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2062 n.3 (TTAB 2013) (Google search engine results had "limited probative value"; insufficient text to show context); In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (search engine results submitted by examining attorney not considered because they did not provide sufficient context to have any probative value); In re Innovative Cos., 88 USPQ2d 1095, 1099 n.4 (TTAB 2008); In re Tea and Sympathy Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008); In re King Koil Licensing Co., 79 USPQ2d 1048, 1050 (TTAB 2006); In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006) (Google hits without any context for the hits is irrelevant); In re International Business Machines Corp., 81 USPQ2d 1677, 1679 n.3 (TTAB 2006) (listings of search results from Google database of limited probative value because the excerpts are extremely truncated); In re Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB 2002) (results of search by Yahoo! search engine of little probative value, largely because insufficient text available to determine the nature of the information and, thus, its relevance). But see In re Hotels.com L.P., 87 USPQ2d 1100, 1105 n.7 (TTAB 2008), aff’d , 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (although websites referenced in summary format, sufficient information in the summary to understand the context of usage).
6. In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1060 (TTAB 2002).
7. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2062 n.3 (TTAB 2013) (while Google search engine retrieved over 100,000 results, evidence was of "limited probative value"); In re BetaBatt Inc., 89 USPQ2d 1152, 1153 n.1 (TTAB 2008) (no probative weight given to fact that search using Google search engine retrieved 22,200 hits; further, "hit list" does not corroborate that there are 22,200 relevant references).
8. In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010) (much of the 300 pages of Internet material submitted by applicant unhelpful because duplicative, or reference different terms, or for services in different fields or otherwise irrelevant).
9. In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010) (criticizing applicant for not pointing out in brief specific Internet evidence believed to be most probative of its position when significant amount of material made of record: "it is incumbent on the applicant and the examining attorney to specify in their briefs those pieces of evidence that they believe are most persuasive of their respective positions, so that the Board can consider that evidence in particular").
10. In re Viventia Biotech Inc., 80 USPQ2d 1376, 1377 (TTAB 2006).
11. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); See also In re Geller, 751 F.3d 1355, 110 USPQ2d 1867, 1868 n.2 (Fed. Cir. 2014) (court, in noting that appellants do not contest the Board'’s reliance on an online dictionary definition of "terrorism," nonetheless pointed out that other more specific definitions could be found in various international treaties and national statutes but found that it was "certainly adequate for the purposes of this case.");In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153 (TTAB 2009) (Board considered definition from Encarta online dictionary, made of record by examining attorney).
12. In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002); In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). Cf. In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1201 (TTAB 2009) (Internet evidence submitted with denial of request for reconsideration properly of record; if applicant wanted to challenge the evidence, it should have filed a request for remand); In re Carlson, 91 USPQ2d 1198, 1199 n.2 (TTAB 2009) (if applicant wished to raise questions about probative value of online dictionary definition submitted with examining attorney’s final office action he should have submitted guidelines for dictionary with a request for reconsideration).
13. SeeIn re Swatch Group Management Services AG, 110 USPQ2d 1751, 1755, n.9 (TTAB 2014) ("In this case, the definition proffered is from the online dictionary found at <merriam-webster.com>, and we take notice of it"); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1590 n.8 (TTAB 2008); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
14. In re Carrier Consulting Group, 84 USPQ2d 1028, 1032-33 (TTAB 2007). See also In re Swatch Group Management Services AG, 110 USPQ2d 1751, 1754 n.4 (TTAB 2014) (Board considered Wikipedia evidence submitted with examining attorney’s first office action which applicant had an opportunity to rebut); In re Cook Medical Technologies LLC, 105 USPQ2d 1377, 1382 n.2 (TTAB 2012) (Wikipedia evidence considered because examining attorney had opportunity to rebut the evidence); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 nn.4, 6, 7 (TTAB 2009) (considering Wikipedia evidence attached to Office action and applicant’s response); In re Grand Forest Holdings Inc., 78 USPQ2d 1152, 1153, 1154 n.3 (TTAB 2006) (considering "illuminating" entry from Wikipedia submitted with Office action and subsequent update submitted by applicant).
15. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2062 n.3 (TTAB 2013) (in determining whether proposed mark was "scandalous" within the meaning of Section 2(a), Board considered entries obtained from the online Urban Dictionary because they were submitted early enough to afford applicant an opportunity to submit any alternative meanings or otherwise question the reliability of the definitions).
16. See In re Geller, 751 F.3d 1355, 110 USPQ2d 1867, 1870 (Fed. Cir. 2014) (the Board, in noting that "the probative value of the blog comments … is less than that of the articles themselves due to the anonymity of the authors," did not err in concluding that such comments shed light on the meaning of the term "Islamisation"); In re Morrison & Foerster LLP, 110 USPQ2d 1423, 1424 n.2 (TTAB 2014) ("These blog postings are from what appear to be well-established media sources with national circulation and public exposure as well as more obscure blogs for which we cannot ascertain the degree of exposure. As such, we are aware that many of the blogs may simply reflect the perception of a single author and not that of the general public.").
1208.04 Judicial Notice
The Board may take judicial notice of dictionary definitions, including definitions in technical dictionaries, translation dictionaries and online dictionaries which exist in printed format or that have regular fixed editions. [ Note 1.] Definitions found in slang dictionaries are also appropriate for judicial notice. [ Note 2.]
The Board may also take judicial notice of encyclopedia entries, standard reference works and of commonly known facts. [ Note 3.]
The Board will generally not take judicial notice of definitions or entries found only in online dictionaries or reference works not available in a printed format [ Note 4.]; however, it will take judicial notice of definitions or entries from references that are the electronic equivalent of a print reference work or that have regular fixed editions. [ Note 5.] It will also consider definitions found only in online dictionaries if made of record during the prosecution of the application. The Board will not take judicial notice of dictionary definitions if it is not clear what the source of the material is. [ Note 6.]
The Board may not take judicial notice of term based on English spoken in another country. [ Note 7.] The Board will not utilize a link or reference to a website’s internet address to consider content that may appear there. [ Note 8.]
The Board’s well-established practice is not to take judicial notice of third-party registrations when an applicant or examining attorney requests that such notice be taken during the course of an appeal. [ Note 9.] See TBMP § 1208.02.
For a full discussion of judicial notice, see TBMP § 704.12.
NOTES:
1. In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may take judicial notice of online dictionaries that exist in printed format or have regular fixed editions); In re Thomas White International Ltd, 106 USPQ2d 1158, 1160 n.1 (TTAB 2013) (judicial notice taken from dictionary existing in print format); In re Future Ads LLC, 103 USPQ2d 1571, 1572 (TTAB 2012) (judicial notice taken of definition from online dictionary stating it was from a specified print dictionary); In re Premiere Distillery LLC, 103 USPQ2d 1483, 1484 (TTAB 2012) (judicial notice taken of online dictionary reference based on Random House Dictionary); In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1642 n.4 (TTAB 2011) (Board may take judicial notice of dictionaries, including online dictionaries which exist in print format); In re Greenliant Systems, Inc., 97 USPQ2d 1078, 1080 n.5 (TTAB 2010) (same);In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010) (judicial notice taken of definitions from Random House Dictionary as accessed at the website www.dictionary.com); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1338 (TTAB 2009) (judicial notice taken of definitions in The Dictionary of Multimedia Terms & Acronyms, Illustrated Computer Dictionary for Dummies and The Computer Glossary); In re Hotels.com, L.P., 87 USPQ2d 1100, 1103 (TTAB 2007) (definition from The American Heritage Dictionary of the English Language, retrieved from bartleby.com website), aff’d , 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 n.3 (TTAB 2008) (judicial notice taken of definition in Cassell’s Spanish-English English-Spanish Dictionary); In re Brown-Forman Corp., 81 USPQ2d 1284, 1285 n.2 (TTAB 2006) (judicial notice taken of definition in Cassell’s New French Dictionary); In re Box Solutions Corp., 79 USPQ2d 1953, 1957 (TTAB 2006) (judicial notice taken of definitions in Computer Desktop Encyclopedia and Dictionary of Computer and Internet Terms); In re Reed Elsevier Properties Inc., 77 USPQ2d 1649, 1653 n.8 (TTAB 2005) (definition from net.speak--the internet dictionary) , aff’d , 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007); In re Isabella Fiore LLC, 75 USPQ2d 1564, 1568 n.7 (TTAB 2005) (judicial notice taken of translation in Cassell’s Italian Dictionary); In re Styleclick.com, 58 USPQ2d 1523, 1525 (TTAB 2001) (definitions from computer dictionaries, i.e., net.speak—the internet dictionary, The Computing Dictionary and The Illustrated Dictionary of Microcomputers); In re 3Com Corp., 56 USPQ2d 1060, 1061 n.3 (TTAB 2000) (judicial notice of definitions in technical reference works); In re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209, 1210 n.6 (TTAB 1999) (dictionary definition submitted with examining attorney’s brief); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1537 (TTAB 1998) (well settled that dictionary listings comprise matter of which Board can take judicial notice); In re Carolina Apparel, 48 USPQ2d 1542, 1543 (TTAB 1998) (definitions from Webster’s New Geographical Dictionary submitted with examining attorney’s appeal brief); In re North American Free Trade Association, 43 USPQ2d 1282, 1285 n.6 (TTAB 1997) (definition from Black’s Law Dictionary); In re Analog Devices Inc., 6 USPQ2d 1808, 1810 n.2 (TTAB 1988) (judicial notice of technical trade dictionaries such as IEEE Standard dictionary of Electric and Electronics Terms) aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989); University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
2. In re Wilcher Corp., 40 USPQ2d 1929, 1933 n.4 (TTAB 1996).
3. See, e.g., In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (Board took judicial notice of two online government reports providing statistics of Internet use in the United States); In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.24 (TTAB 2013) (judicial notice taken of entry for "tea" from Encyclopedia Britannica); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1338 (TTAB 2009) (judicial notice taken of listing in Computer Desktop Encyclopedia); In re Tokutake Industry Co., 87 USPQ2d 1697, 1700 n.1 (TTAB 2008) (census data); In re Yeley, 85 USPQ2d 1150, 1153 nn.10, 11 (TTAB 2007) (judicial notice taken of The Little Giant Encyclopedia of Names, and that some persons use initials in lieu of a given name); In re Thermo LabSystems Inc., 85 USPQ2d 1285, 1291 (TTAB 2007) (common knowledge that places are often named after individuals); In re Joint-Stock Co. "Baik", 84 USPQ2d 1921, 1923 n.2 (TTAB 2007) (judicial notice taken of entry for Baikal Lake in Encyclopedia International); In re Brown-Forman Corp., 81 USPQ2d 1284, 1286 (TTAB 2006) (Baton Rouge is the capital of Louisiana); In re Isabella Fiore LLC, 75 USPQ2d 1564, 1566 n.5 (TTAB 2005) (Statistical Abstract of the United States regarding population of the United States; the population of the United States is a fact of which judicial notice can be taken); In re Eddie Z’s Blinds and Drapery Inc., 74 USPQ2d 1037, 1038 n.3 (TTAB 2005) (definition in McGraw Hill Computer Desktop Encyclopedia); In re Consolidated Specialty Restaurants Inc., 71 USPQ2d 1921, 1927 (TTAB 2004) (judicial notice taken of Merriam-Webster’s Geographical Dictionary and The Columbia Gazetteer of North America); In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514 n.5 (TTAB 2001) (judicial notice taken of The Encyclopedia of Furniture, The Complete Guide To Furniture Styles, and Seng Furniture Facts showing that Danish, Scandinavian and Mediterranean are styles of furniture); In re Major League Umpires, 60 USPQ2d 1059, 1060 n.2 (TTAB 2001) (the National League is part of Major League Baseball); In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 n.5 (TTAB 2001) (common knowledge that radio broadcasts may be heard in real-time on the Internet); In re Dial-A-Mattress Operating Corp., 52 USPQ2d 1910, 1916 (TTAB 1999) toll-free telephone area codes such as "1-888" are used by numerous persons and businesses), rev’d on other grounds, 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (In re Astra Merck Inc., 50 USPQ2d 1216, 1219 (TTAB 1998) (judicial notice taken of Physician’s Desk Reference and other PDR publications); In re U.S. Cargo Inc., 49 USPQ2d 1702, 1704 n.3 (TTAB 1998) ("U.S." means the United States, and the United States is a geographic area with defined boundaries); In re Perry Manufacturing Co., 12 USPQ2d 1751, 1752 (TTAB 1989) (New York is world-renowned center of culture and high fashion and people from throughout world go to New York to purchase latest styles in clothing, from haute couture to off-the-rack garments).
Compare, In re Brown-Forman Corp., 81 USPQ2d 1284, 1286 (TTAB 2006) (Board denied request for judicial notice that Moulin Rouge is a famous Parisian nightclub and that its name served as title of a film starring Nicole Kidman that was nominated for an Academy Award); In re Viventia Biotech Inc., 80 USPQ2d 1376, 1377 (TTAB 2006) (Board did not take judicial notice of Internet search); In re Red Bull GmbH, 78 USPQ2d 1375, 1379 n.7 (TTAB 2006) (Board would not take judicial notice of "scholarly reviews" of an essay).
4. In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363 n.5 (TTAB 2007) (Board would not take judicial notice of online encyclopedia); In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). See also In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002); In re Styleclick.com Inc., 57 USPQ2d 1445, 1447 n.3 (TTAB 2000).
5. In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (judicial notice taken of definition from Merriam-Webster Online Dictionary and Thesaurus); In re Dietrich, 91 USPQ2d 1622, 1631 n.15 (TTAB 2009) (judicial notice taken of definition from Merriam-Webster Online Dictionary from www.merriam-webster.com); In re Petroglyph Games Inc., 91 USPQ2d 1332, 1334 n.1 (TTAB 2009) (judicial notice taken of definition from Dictionary.com because from The Random House Unabridged Dictionary); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1590 n.8 (TTAB 2008) (judicial notice taken of definition from Merriam-Webster Online Dictionary) ; In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006) (judicial notice taken of definition from Encarta Dictionary because it is readily available in specifically denoted editions via the Internet and CD-ROM).
6. In re Gregory, 70 USPQ2d 1792, 1793 (TTAB 2004) (judicial notice not taken of photocopies submitted with examining attorney’s brief because neither the pages nor brief specified the dictionaries from which the copies were made).
7. In re Future Ads LLC, 103 USPQ2d 1571, 1572 n.2 (TTAB 2012) (Board declined to take judicial notice of term from Cambridge Dictionaries Online because definition stated it was "British English"). Cf. In re Manwin/RK Collateral Trust, 111 USPQ2d 1311, 1313 (TTAB 2014).
8. In re Future Ads LLC, 103 USPQ2d 1571, 1572 n.3 (TTAB 2012) (Board did not take judicial notice of online dictionary definition because only the link to the website was provided). Cf. In re HSB Solomon Associates LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (Board will not utilize web address to access site and consider whatever content appears).
9. In re Wada, 48 USPQ2d 1689, 1689 n.2 (TTAB 1998) (request in reply brief that Board take judicial notice of "thousands of registered marks incorporating the term NEW YORK for products and services that do not originate in New York state or city" denied), aff’d, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999); In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1717 n.18 (TTAB 2011); In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1644 n.11 (TTAB 2011); In re Carolina Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB 1998); In re Caserta, 46 USPQ2d 1088, 1090 n.4 (TTAB 1998) (Board refused to take judicial notice of the characters listed in registrations and their manner of use).
1208.05 Applicant’s Own Materials
An applicant’s materials, such as its website or advertisements describing its goods or services, or specimens showing use of its mark, may be considered even if the applicant files its application based on an intent-to-use or changes the basis of its application to intent-to-use. [ Note 1.]
applicant’s submissions of expert reports [ Note 2.] and surveys [ Note 3.] are considered for their probative value.
NOTES:
1. In re Hunter Fan Co., 78 USPQ2d 1474, 1476 n.2 (TTAB 2006) (specimen submitted when application based on Trademark Act § 1(a) remains of record even though applicant later amended its application to Trademark Act § 1(b)); In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006) (examining attorney may introduce evidence that applicant’s own literature supports descriptiveness of term despite the fact that application based on intent-to-use; fact that applicant has filed an intent-to-use application does not limit the examining attorney’s evidentiary options or shield an applicant from producing evidence that it may have in its possession).
2. See , e.g., In re Country Music Association, Inc., 100 USPQ2d 1824, 1830-31 (TTAB 2011).
3. See, e.g., In re Country Music Association, Inc., 100 USPQ2d 1824, 1831-32 (TTAB 2011).