704.03(b)(2)    Application Not Subject of Proceeding

37 CFR § 2.122(e)  Printed publications and official records. Printed publications, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant under an issue in a proceeding, and official records, if the publication or official record is competent evidence and relevant to an issue, may be introduced in evidence by filing a notice of reliance on the material being offered. The notice shall specify the printed publication (including information sufficient to identify the source and the date of the publication) or the official record and the pages to be read; indicate generally the relevance of the material being offered; and be accompanied by the official record or a copy thereof whose authenticity is established under the Federal Rules of Evidence, or by the printed publication or a copy of the relevant portion thereof. A copy of an official record of the Patent and Trademark Office need not be certified to be offered in evidence. The notice of reliance shall be filed during the testimony period of the party that files the notice.

A party to a proceeding before the Board may introduce, as part of its evidence in the case, a copy of an application that is not the subject of the proceeding, by filing, during its testimony period, a copy of the application file, or of the portions which it wishes to introduce, together with a notice of reliance thereon specifying the application and indicating generally its relevance. [ Note 1.] It is not necessary that the copy of the application, or portions thereof, filed under a notice of reliance be certified. [ Note 2.] The copy of the application, or portion thereof, may be obtained from the Trademark Status and Document Retrieval ("TSDR") database accessible on the Office’s website.

An application that is not the subject of the proceeding may also be made of record by appropriate identification and introduction during the taking of testimony, or by stipulation of the parties.

An application made of record in a Board inter partes proceeding, whether owned by a party or not, is generally of very limited probative value. [ Note 3.] See TBMP § 704.04. However, if the application is owned by a party to the proceeding, the allegations made and documents and things filed in the application may be used as evidence against the applicant, that is, as admissions against interest and the like. See TBMP § 704.04.

NOTES:

 1.   See 37 CFR § 2.122(e). See, e.g., Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1933 (TTAB 2013) (opposer’s objection sustained; applicant’s mere listing of third-party applications in brief not properly made of record);Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231 (TTAB 1992) (copy of drawing from abandoned application); Glamorene Products Corp. v. Earl Grissmer Co., 203 USPQ 1090, 1092 n.5 (TTAB 1979) (copies of third-party applications); and St. Louis Janitor Supply Co. v. Abso-Clean Chemical Co., 196 USPQ 778, 780 n.4 (TTAB 1977) (file history of petitioner’s application).

 2.   See 37 CFR § 2.122(e); Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1350 (TTAB 2014) (plain copies of third-party applications from USPTO’s electronic databases admissible as official records), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. Oct. 10, 2014).

 3.   See Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1956 n.9 (TTAB 2014) ("The applications are not evidence of anything except that they were filed."), on appeal, No. 14-1517 (Fed. Cir.); Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1360 (TTAB 2014) (evidence only that applications were filed, thus incompetent to show common third-party use), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. Oct. 10, 2014); ; Glamorene Products Corp. v. Earl Grissmer Co., 203 USPQ 1090, 1092 n.5 (TTAB 1979) (evidence only of the filing of the application); Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 396 n.10 (TTAB 1979) (claim of ownership of a registration in an application is not competent evidence of ownership of the registration); Lasek & Miller Associates v. Rubin, 201 USPQ 831, 833 n.3 (TTAB 1978) (petitioner’s application file is proof only of filing, not of any facts alleged in the application); and St. Louis Janitor Supply Co. v. Abso-Clean Chemical Co., 196 USPQ 778, 780 n.4 (TTAB 1977) (incompetent to prove use). See also Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 397 n.11 (TTAB 1979) (specimens from third-party registration files are not evidence of the fact that the specimens filed in the underlying applications or even with Trademark Act § 8 affidavits are in use today or that such specimens have ever been used to the extent that they have made an impression on the public); Continental Specialties Corp. v. Continental Connector Corp., 192 USPQ 449, 451 (TTAB 1976); Andrea Radio Corp. v. Premium Import Co., 191 USPQ 232, 234 n.6 (TTAB 1976).