704.03(b)(1)(A) Registration Owned by Party
- (d) Registrations.
- (1) A registration of the opposer or petitioner pleaded in an opposition or petition to cancel will be received in evidence and made part of the record if the opposition or petition is accompanied by an original or photocopy of the registration prepared and issued by the Office showing both the current status of and current title to the registration, or by a current copy of information from the electronic database records of the Office showing the current status and title of the registration. For the cost of a copy of a registration showing status and title, see § 2.6(b)(4).
- (2) A registration owned by any party to a proceeding may be made of record in the proceeding by that party by appropriate identification and introduction during the taking of testimony or by filing a notice of reliance in accordance with paragraph (g) of this section, which shall be accompanied by a copy (original or photocopy) of the registration prepared and issued by the Office showing both the current status of and current title to the registration, or by a current copy of information from the electronic database records of the Office showing the current status and title of the registration. The notice of reliance shall be filed during the testimony period of the party that files the notice.
A party that wishes to rely on its ownership of a federal registration of its mark that is not the subject of a proceeding before the Board may make the registration of record by offering evidence sufficient to establish that the registration is still subsisting, and that it is owned by the party which seeks to rely on it. [ Note 1.] This may be done in a number of different ways.
A federal registration owned by the plaintiff in an opposition or cancellation proceeding, and pleaded by the plaintiff in its complaint, will be received in evidence and made part of the record in the proceeding if the complaint (either as originally filed or as amended) is accompanied by (a) an original or a photocopy of the registration prepared and issued by the Office showing both the current status of and current title to the registration; or (b) a current copy of information from the electronic database records of the Office such as (i) TSDR showing the current status and title (owner) of the registration and, if TSDR does not reflect the current owner of the registration, a copy of information from the Trademark Assignment Recordation Branch database demonstrating an assignment to the current owner of the registration; or (ii) TESS along with a copy of any records from the Trademark Assignment Recordation Branch database showing an assignment to the current owner of the registration. [ Note 2.] The Board does not take judicial notice of a party’s registration. [ Note 3.] A plaintiff which pleads ownership of an application in its complaint must, in order to rely on the subsequently issued registration, make the registration of record. However, the plaintiff does not have to amend its pleading to assert the registration. The pleading of the application is viewed as providing sufficient notice to the defendant of the plaintiff’s intention to rely on any registration that issues from the pleaded application. [ Note 4.] However, if the registration issues after the plaintiff’s testimony period closes, even if the defendant has admitted that the plaintiff is the owner of the application and the plaintiff has introduced a copy of the application into evidence, the Board will not consider the registration. [ Note 5.]
Please Note: Except under limited circumstances, requests to record an assignment of a Trademark Act § 66(a), 15 U.S.C. § 1141f(a) registration must be filed directly with the International Bureau. [ Note 6.] The International Bureau will notify the USPTO of any changes in ownership recorded in the International Register, and the USPTO will record only those assignments or other documents transferring title that have been recorded in the International Register. [ Note 7.]
A federal registration owned by any party to a Board inter partes proceeding will be received in evidence and made part of the record in the proceeding if that party files, during its testimony period, a notice of reliance on the registration, accompanied by (a) a copy of the registration prepared and issued by the Office showing both the current status of and current title to the registration; or (b) a current printout or copy of information from the electronic database records of the Office such as (i) TSDR showing the current status and title (owner) of the registration and, if TSDR does not reflect the current owner of the registration, a printout or copy of the information from the Trademark Assignment Recordation Branch database demonstrating an assignment to the current owner of the registration; or (ii) TESS along with a copy of any records from the Trademark Assignment Recordation Branch database showing an assignment to the current owner of the registration. [ Note 8.]
If a party chooses to make its registration of record by submitting a status and title copy prepared by the Office, the party's submission, with a notice of reliance on its registration, of an order for status and title copies of the registration is not sufficient to make the registration of record. Although that procedure was once permitted, it is no longer allowed. [ Note 9.] The status and title copies themselves must accompany the notice of reliance. [ Note 10.] However, the status and title copies need not be certified. [ Note 11.] Additionally, a party need not submit the original status and title copy; a photocopy is sufficient. [ Note 12.]
The registration copies "prepared and issued by the United States Patent and Trademark Office showing both the current status of and current title to the registration," as contemplated by 37 C.F.R. § 2.122(d), are printed copies of the registration on which the Office has entered the information it has in its records, at the time it prepares and issues the status and title copies, about the current status and title of the registration. That information includes information about the renewal, cancellation, publication under Trademark Act § 12(c), 15 U.S.C. § 1062(c); affidavits or declarations under Trademark Act § 8, Trademark Act § 15, and Trademark Act § 71, 15 U.S.C. § 1058, 15 U.S.C. § 1065 and 15 U.S.C. § 1141; and recorded documents transferring title. [ Note 13.] Plain copies of the registration are not sufficient. [ Note 14.]
The issuance date of status and title copies filed with a complaint must be reasonably contemporaneous with the filing date of the complaint. Status and title copies filed under a notice of reliance during the offering party's testimony period must have been issued at a time reasonably contemporaneous with the filing of the complaint, or thereafter. [ Note 15.]
When it comes to the attention of the Board that there has been an Office error in the preparation of a registration status and title copy made of record in an inter partes proceeding, that is, that the status and title copy does not accurately reflect the status and title information which the Office has in its records, the Board will take judicial notice of the correct facts as shown by the records of the Office. [ Note 16.] Further, when a federal registration owned by a party has been properly made of record in an inter partes proceeding, and the status of the registration changes between the time it was made of record and the time the case is decided, the Board, in deciding the case, will take judicial notice of, and rely on, the current status of the registration, as shown by the records of the Office. [ Note 17.]
As an alternative to submitting status and title copies of registrations, 37 C.F.R. § 2.122(d) allows a party to submit copies of its registrations taken from the Office’s electronic database records such as TSDR or TESS.
A federal registration owned by any party to a Board inter partes proceeding may be made of record by that party by appropriate identification and introduction during the taking of testimony, that is, by introducing a copy of the registration as an exhibit to testimony, made by a witness having knowledge of the current status and title of the registration, establishing that the registration is still subsisting, and is owned by the offering party. [ Note 18.]
A federal registration owned by a plaintiff (including a counterclaimant) will be deemed by the Board to be of record in an inter partes proceeding if the defendant's answer to the complaint contains admissions sufficient for the purpose, i.e., admission to the current existence of the registration and the plaintiff’s ownership of the registration. [ Note 19.]
Similarly, a registration owned by any party to the proceeding may be deemed by the Board to be of record in the proceeding, even though the registration was not properly introduced in accordance with the applicable rules, if the adverse party in its brief, or otherwise, treats the registration as being of record. [ Note 20.]
Finally, a registration owned by any party to the proceeding may be made of record in the proceeding by stipulation of the parties. [ Note 21.]
When a subsisting registration on the Principal Register has been properly made of record by its owner in a Board inter partes proceeding, the certificate of registration is entitled to certain statutory evidentiary presumptions. [ Note 22.]
In contrast, a subsisting registration on the Supplemental Register, even when properly made of record by its owner, is not entitled to any statutory presumptions, and is not evidence of anything except that the registration issued. [ Note 23.]
Expired or Cancelled Registrations. Although an expired or cancelled registration may be made of record by any of the methods described above, such a registration is not evidence of anything except that the registration issued; it is not evidence of any presently existing rights in the mark shown in the registration, or that the mark was ever used. [ Note 24.]
State Registrations. A state registration owned by a party to a Board inter partes proceeding may be made of record therein by notice of reliance under 37 C.F.R. § 2.122(e), or by appropriate identification and introduction during the taking of testimony, or by stipulation of the parties. See TBMP § 704.07.
However, a state registration (whether owned by a party, or not) is incompetent to establish that the mark shown therein has ever been used, or that the mark is entitled to federal registration. [ Note 25.]
Foreign Registrations. A foreign registration owned by a party to a Board inter partes proceeding may be made of record in the same manner as a state registration, but a foreign registration is not evidence of the use, registrability, or ownership of the subject mark in the United States. [ Note 26.]
Making the file history of the registration of record. If a party owns a registration that is not the subject of the proceeding and wishes to make of record the registration file history (rather than just the certificate of registration), or a portion thereof, it may do so by: (1) filing, during its testimony period, a copy of the file history, or the portion it wishes to introduce, together with a notice of reliance thereon as an official record pursuant to 37 C.F.R. § 2.122(e) (see TBMP § 704.07; or (2) appropriate identification and introduction of a copy of the file history, or portion thereof, during the taking of testimony; or (3) stipulation of the parties, accompanied by a copy of the file history, or portion thereof. The registration file or a portion thereof may be taken from the Office’s electronic database records.
The file history of a registration owned by another party, but not the subject of the proceeding, may be made of record in the same manner. [ Note 27.] Copies of official records of the USPTO need not be certified. [ Note 28.]
NOTES:
1. See Alcan Aluminum Corp. v. Alcar Metals Inc., 200 USPQ 742, 744 n.5 (TTAB 1978) (plain copies of registrations introduced through testimony which established ownership of the registrations but failed to establish that they were currently subsisting were not considered); Maybelline Co. v. Matney, 194 USPQ 438, 440 (TTAB 1977) (pleaded registration was not considered of record where testimony introduced original certificate of registration into evidence but failed to establish current status and title); Peters Sportswear Co. v. Peter's Bag Corp., 187 USPQ 647, 647 (TTAB 1975) (mere fact that copies show that registration originally issued to opposer does not establish that title still resides in opposer). Compare United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1043 (TTAB 2014) (non-status and title copies of pleaded registration attached to notice of opposition considered of record when issue date "reasonably contemporaneous" with filing date of notice of opposition; two others originally attached to notice of opposition considered of record when printed from USPTO electronic database records showing current status and title and submitted under notice of reliance), with id. at 1041-42 (non-status and title copies of four pleaded registrations attached to notice of opposition insufficient to make of them record when issue dates "are not substantially contemporaneous with filing of notice of opposition," and opposer did not otherwise establish current status and title such as by testimony or notice of reliance on copies of registration taken from USPTO electronic database records showing current status and title; applicant’s admission in answer that opposer is the owner of the pleaded registrations does not establish their status, as opposer did not plead validity of registrations in notice of opposition).
2. 37 C.F.R. § 2.122(d)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (effective January 14, 2017, "[t]he Board amended § 2.122(d) by replacing the word ‘printout’ with the word ‘copy’ to broaden the manner in which a registration may be attached to include, for example, printouts or downloads. The Office has retained the slightly different wording in § 2.122(d)(1) and (2) but the wording does not have different meanings."). See Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991) (not of record where opposer’s copies of registrations submitted with notice of opposition did not show current status or title); Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1601 (TTAB 2014) (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); Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708, 1709 (TTAB 2011) (pleaded registrations of record because copies from USPTO databases were submitted with notice of opposition); Melwani v. Allegiance Corp., 97 USPQ2d 1537, (pleaded registrations not of record where registration numbers were inputted in the ESTTA protocol but copies of registrations were not attached as exhibits); Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1654 (TTAB 2010) (opposer may file a notice of reliance on a registration prepared by the Office showing both the current status and current title to the registration or a current printout of information from Office electronic database records showing the current status and title of the registrations), aff'd, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1928 (TTAB 2009) (printouts from TSDR (formerly TARR) database of pleaded registrations submitted with notice of reliance sufficient to enter registrations in evidence; Board noted that "To the extent that there may appear to be a discrepancy between Trademark Rule 2.122(d)(1) and Trademark Rule 2.122(d)(2) in that the former allows for proof of a pleaded registration by the submission of USPTO records with a pleading while the latter appears to preclude use of such records during trial, there is no sound basis for the distinction."); Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487, 1488 n.3 (TTAB 1990); Floralife, Inc. v. Floraline International Inc., 225 USPQ 683, 684 n.6 (TTAB 1984); Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 947 (TTAB 1983) (photocopy of registration did not contain status and title information); Acme Boot Co. v. Tony and Susan Alamo Foundation, Inc., 213 USPQ 591, 592 (TTAB 1980) (handwritten notations on registration certificate insufficient to show status of registration); Royal Hawaiian Perfumes, Ltd. v. Diamond Head Products of Hawaii, Inc., 204 USPQ 144, 146 (TTAB 1979). Cf. FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1236 (TTAB 2014) (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). Compare United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1043 (TTAB 2014) (non-status and title copy of pleaded registration attached to notice of opposition considered of record when issue date "reasonably contemporaneous" with filing date of notice of opposition; two others originally attached to notice of opposition considered of record when printed from USPTO electronic database records showing current status and title and submitted under notice of reliance), with id. at 1041-42 (non-status and title copies of four pleaded registrations attached to notice of opposition insufficient to make of them record when issue dates "are not substantially contemporaneous with filing of notice of opposition," and opposer did not otherwise establish current status and title such as by testimony or notice of reliance on copies of registration taken from USPTO electronic database records showing current status and title; applicant’s admission in answer that opposer is the owner of the pleaded registrations does not establish their status, as opposer did not plead validity of registrations in notice of opposition).
3. See UMG Recordings Inc. v. O'Rourke, 92 USPQ2d 1042, 1046 (TTAB 2009) ("The Board does not take judicial notice of registrations that reside in the Patent and Trademark Office.") (citing Corporate Fitness Programs Inc. v. Weider Health and Fitness Inc., 2 USPQ2d 1682, 1683-84, n.3 (TTAB 1987)); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1485 n.4 (TTAB 2007).
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. Although the court took judicial notice of a third-party registration in that case, the Board does not take judicial notice of either third-party registrations or a party’s own registration[s] insofar as the Trademark Rules of Practice specify, as discussed above, how to make such registrations of record in an inter partes proceeding.
4. See United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1040 n.3 (TTAB 2014) (when an opposer pleads ownership of an underlying application, opposer may make of record subsequently issued registration of that application without amending pleading); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1563 n.6 (TTAB 2011) (an applicant is on notice that an opposer intends to rely on a registration that matured from a pleaded application), rev’d on other grounds, slip op, No. 11-3684 (D.N.J. August 29, 2017); UMG Recordings Inc. v. O'Rourke, 92 USPQ2d 1042, 1045 n. 12 (TTAB 2009); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1920 (TTAB 2006); DC Comics v. Pan American Grain Manufacturing Co., 77 USPQ2d 1220, 1223 n.6 (TTAB 2005); M & T Chemicals Inc. v. Stepan Chemical Co., 150 USPQ 570, 571 (TTAB 1966).
5. See UMG Recordings Inc. v. O'Rourke, 92 USPQ2d 1042, 1045 (TTAB 2009).
6. 37 C.F.R. § 7.22 and 37 C.F.R. § 7.23.
7. See TMEP § 1906.01(a) and TMEP § 1906.01(a)(i).
8. 37 C.F.R. § 2.122(d)(2). See Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991); Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1654 (TTAB 2010) (opposer may file a notice of reliance on a registration prepared by the Office showing both the current status and current title to the registration or a current printout of information from Office electronic database records showing the current status and title of the registrations), aff'd, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1041-43 (TTAB 2014) (non-status and title copies of two pleaded registrations originally attached to notice of opposition considered of record when printed from USPTO electronic database records showing current status and title and submitted under notice of reliance, but four others not considered of record when issue dates "are not substantially contemporaneous with filing of notice of opposition," and opposer did not otherwise establish current status and title such as by testimony or notice of reliance on copies of registration taken from USPTO electronic database records showing current status and title; applicant’s admission in answer that opposer is the owner of the pleaded registrations does not establish their status, as opposer did not plead validity of registrations in notice of opposition); Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1601 (TTAB 2014) (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); Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1928 (TTAB 2009) (printouts from TSDR (formerly TARR) database of pleaded registrations submitted with notice of reliance sufficient to enter registrations in evidence; Board noted that "To the extent that there may appear to be a discrepancy between Trademark Rule 2.122(d)(1) and Trademark Rule 2.122(d)(2) in that the former allows for proof of a pleaded registration by the submission of USPTO records with a pleading while the latter appears to preclude use of such records during trial, there is no sound basis for the distinction."); UMG Recordings, Inc. v. O’Rourke, 92 USPQ2d 1042, 1045 (TTAB 2009) (notice of reliance on registration certificate which issued after applicant filed its brief untimely; that applicant also admitted opposer owned the application that matured into the registration did not dictate that the resulting registration would be of record whenever it issued); Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1075 (TTAB 1990) (untimely notice of reliance on status and title copy of registration filed after close of testimony period); Edison Brothers Stores, Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ 530, 531 n.3 (TTAB 1986).
See also Sheller-Globe Co. v. Scott Paper Co., 204 USPQ 329, 331 (TTAB 1979); Volkswagenwerk AG v. Clement Wheel Co., 204 USPQ 76, 80-81 (TTAB 1979); W. R. Grace & Co. v. Red Owl Stores, Inc., 181 USPQ 118, 120 (TTAB 1973).
Cf. FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1236 (TTAB 2014) (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).
9. See 37 C.F.R. § 2.122(d); Notice of Final Rulemaking, 48 Fed. Reg. 23122 (May 23, 1983); In re Inter-State Oil Co., 219 USPQ 1229, 1230 n.1 (TTAB 1983).
10. See Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1461 n.4 (TTAB 1992).
11. 37 C.F.R. § 2.122(e). Status and title copies need not be certified. See Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 947 (TTAB 1983) (copies do not have to be certified but must contain status and title information). For the cost of a copy of a registration showing status and title, see 37 C.F.R. § 2.6(b)(4). At present, the Office provides both certified and uncertified copies of trademark documents. See TMEP § 111.
13. See Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 947 (TTAB 1983); Acme Boot Co. v. Tony and Susan Alamo Foundation, Inc., 213 USPQ 591, 592 (TTAB 1980) (handwritten notations on registration certificate not sufficient); Peters Sportswear Co. v. Peter's Bag Corp., 187 USPQ 647, 647 (TTAB 1975) (constitutes prima facie showing of status and title).
14. See Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1601 (TTAB 2014) (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); Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1928 (TTAB 2009) (printouts from TSDR (formerly TARR) database of pleaded registrations submitted with notice of reliance sufficient to make registrations of record; Board noted that "To the extent that there may appear to be a discrepancy between Trademark Rule 2.122(d)(1) and Trademark Rule 2.122(d)(2) in that the former allows for proof of a pleaded registration by the submission of USPTO records with a pleading while the latter appears to preclude use of such records during trial, there is no sound basis for the distinction."). See also Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991); Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 947-48 (photocopy of registration without status and title information insufficient to establish prima facie showing); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1116-17 (TTAB 2009) (copy of registration certificate insufficient). Compare United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1043 (TTAB 2014) (non-status and title copies of pleaded registration attached to notice of opposition considered of record when issue date "reasonably contemporaneous" with filing date of notice of opposition; two others considered of record when printed from USPTO electronic database records showing current status and title and submitted under notice of reliance), with id. at 1041-42 (non-status and title copies of four pleaded registrations attached to notice of opposition insufficient to make of them record when issue dates "are not substantially contemporaneous with filing of notice of opposition," and opposer did not otherwise establish current status and title such as by testimony or notice of reliance on copies of registration taken from USPTO electronic database records showing current status and title; applicant’s admission in answer that opposer is the owner of the pleaded registrations does not establish their status, as opposer did not plead validity of registrations in notice of opposition).
15. See Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1601 n.2 (TTAB 2014) (plain copy of registration attached to notice of opposition indicating issuance five years before such filing not "reasonably contemporaneous"); Hard Rock Café International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1511 (TTAB 2000) (status and title copies prepared three years prior to opposition not reasonably contemporaneous); Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460 (TTAB 1992); Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1075 (TTAB 1990) (whether notice of reliance on status and title copy of registration prepared four years earlier is sufficiently recent goes to the competency, not the admissibility, of the registration); Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487, 1488 n.3 (TTAB 1990) (status and title copies from 1963 not reasonably contemporaneous with filing of opposition in 1986); Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 947 (TTAB 1983); Royal Hawaiian Perfumes, Ltd. v. Diamond Head Products of Hawaii, Inc., 204 USPQ 144, 146 (TTAB 1979) (status and title copy of registration prepared two months prior to filing of opposition is reasonably contemporaneous); Volkswagenwerk AG v. Clement Wheel Co., 204 USPQ 76, 81-82 (TTAB 1979); Marriott Corp. v. Pappy's Enterprises, Inc., 192 USPQ 735, 736 (TTAB 1976). Compare United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1043 (TTAB 2014) (non-status and title copy of pleaded registration attached to notice of opposition considered of record when issue date approximately four months prior to filing date of notice of opposition; two others originally attached to notice of opposition considered of record when printed from USPTO electronic database records showing current status and title and submitted under notice of reliance), with id. at 1041-42 (non-status and title copies of four pleaded registrations attached to notice of opposition insufficient to make of them record when issue dates were "years earlier" and opposer did not otherwise establish current status and title such as by testimony or notice of reliance on copies of registration taken from USPTO electronic database records showing current status and title).
16. See Duffy-Mott Co. v. Borden, Inc., 201 USPQ 846, 847 n.5 (TTAB 1978) (USPTO error in identification of owner).
17. See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1425 n.19 (TTAB 2014) (judicial notice taken of changes in title and status of pleaded and proven registrations); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1460 n.4 (TTAB 2014) (judicial notice taken of status of pleaded registration made of record, but no further consideration because registration had been cancelled); Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1192 n.9 (TTAB 2007) (judicial notice taken of current status of a registration owned by a party properly made of record, when status of registration changed between the time it was made of record and time case decided); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1487-88 n.10-12 (TTAB 2007) (Board confirmed Trademark Act §§ 8 and 15 affidavits that were filed after submission of opposer's registrations during testimony period); Parfums de Coeur, Ltd. v. Lazarus, 83 USPQ2d 1012, 1014 n. 4 (TTAB 2007) (Board confirmed filing of Trademark Act §§ 8 and 15 affidavits that occurred subsequent to submission of registrations); Tea Board of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1896 n.25 (TTAB 2006) (judicial notice taken of renewal of registration); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002) (review of Office automated records subsequent to filing of status and title copy of registration revealed that Trademark Act §§ 8 and 15 affidavits had been accepted and acknowledged); Ultratan Suntanning Centers Inc. v. Ultra Tan International AB, 49 USPQ2d 1313, 1314, n.6 (TTAB 1998) (same); Royal Hawaiian Perfumes, Ltd. v. Diamond Head Products of Hawaii, Inc., 204 USPQ 144, 147 (TTAB 1979) (status and title copy need not be updated after it is submitted; judicial notice of filing of Trademark Act §§ 8 and 15 affidavits); Duffy-Mott Co. v. Borden, Inc., 201 USPQ 846, 847 n.5 (TTAB 1978); Volkswagenwerk AG v. Clement Wheel Co., 204 USPQ 76, 80 n.3 (TTAB 1979).
18. 37 C.F.R. § 2.122(d)(2). See Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991); Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1654 (TTAB 2010) (opposer may introduce registrations through witness testifying that registrations are still subsisting and are owned by opposer), aff'd, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Cadence Industries Corp. v. Kerr, 225 USPQ 331, 332 n.2 (TTAB 1985) (no probative value where testimony established opposer’s ownership of registration, but not current status); Floralife, Inc. v. Floraline International Inc., 225 USPQ 683, 684 n.6 (TTAB 1984) (identification by witness as having come from opposer’s files insufficient to establish ownership and status); Acme Boot Co. v. Tony and Susan Alamo Foundation Inc., 213 USPQ 591, 592 (TTAB 1980).
See also Sheller-Globe Co. v. Scott Paper Co., 204 USPQ 329, 331 n.2 (TTAB 1979); Alcan Aluminum Corp. v. Alcar Metals Inc., 200 USPQ 742, 744 n.5 (TTAB 1978); Groveton Papers Co. v. Anaconda Co., 197 USPQ 576, 577 n.2 (TTAB 1977); Maybelline Co. v. Matney, 194 USPQ 438, 440 (TTAB 1977); GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB 1976); American Manufacturing Co., v. Phase Industries, Inc., 192 USPQ 498, 500 (TTAB 1976); West Point-Pepperell, Inc. v. Borlan Industries Inc., 191 USPQ 53, 54 (TTAB 1976).
19. See Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991) (admission only of ownership and not validity was not sufficient);Tiffany & Co. v. Columbia Industries, Inc., 455 F.2d 582, 173 USPQ 6, 8 (CCPA 1972) (Board erred in refusing to consider registrations of record when applicant admitted "the registrations referred to in the notice of opposition" in its answer); Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) (applicant effectively admitted active status and ownership of certain specifically identified registrations); Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487, 1488 n.3 (TTAB 1990) (not of record where although applicant admitted that copies attached to opposition were "true copies" applicant did not admit to status and title of those registrations). Cf. United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1041-42 (TTAB 2014) (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); Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1602 (TTAB 2014) (applicant’s admission that opposer "is listed" as the owner insufficient to establish opposer’s current ownership of pleaded registration); UMG Recordings Inc. v. O'Rourke, 92 USPQ2d 1042, 1045 (TTAB 2009) (applicant admitted opposer’s ownership of pleaded application; admission did not make resulting registration automatically of record and registration still had to be introduced); Demon International LC v. Lynch, 86 USPQ2d 1058, 1060 (TTAB 2008) (applicant’s statement in answer that he "does not dispute the filing" of opposer’s application not an admission of opposer’s ownership of subsequently issued registration and registration’s validity).
20. See Crown Radio Corp. v. Soundscriber Corp., 506 F.2d 1392, 184 USPQ 221, 222 (CCPA 1974) (after filing its answer, respondent filed a "paper" in which respondent admitted existence of petitioner’s registration; admission was sufficient to overcome respondent's 37 C.F.R. § 2.132 motion for default judgment); Local Trademarks Inc. v. Handy Boys Inc., 16 USPQ2d 1156, 1157 (TTAB 1990) (applicant conceded ownership and validity in trial brief); Floralife, Inc. v. Floraline International Inc., 225 USPQ 683, 684 n.6 (TTAB 1984) (applicant's treatment of pleaded registrations as properly of record in its trial brief was deemed a stipulation as to current status and title); Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 948 (TTAB 1983) (admission in brief). See also Jockey International, Inc. v. Frantti, 196 USPQ 705, 706 n.5 (TTAB 1977); Angelica Corp. v. Collins & Aikman Corp., 192 USPQ 387, 392 (TTAB 1976); and West Point-Pepperell, Inc. v. Borlan Industries Inc., 191 USPQ 53, 54 (TTAB 1976).
21. See 37 C.F.R. § 2.123(b); Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 948 (TTAB 1983); Plus Products v. Natural Organics, Inc., 204 USPQ 773, 774 n.2 (TTAB 1979).
22. See, e.g., Trademark Act § 7(b), 15 U.S.C. § 1057(b); CTS Corp. v. Cronstoms Manufacturing, Inc., 515 F.2d 780, 185 USPQ 773, 774 (CCPA 1975) (prima facie evidence of registrant’s right to use the mark on the identified goods); Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272, 274 (CCPA 1974) (prima facie evidence of validity of registration, ownership of mark and exclusive right to use it); and In re Phillips-Van Heusen Corp., 228 USPQ 949, 950 (TTAB 1986) (prima facie evidence of registrant’s continuous use of the mark). See also Trademark Act § 7(c), 15 U.S.C. § 1057(c) (conferring, contingent on the registration of a mark on the Principal Register, and subject to certain specified exceptions, constructive use priority dating from the filing of the application for registration of the mark); Jimlar Corp. v. The Army and Air Force Exchange Service, 24 USPQ2d 1216, 1217 n.5 (TTAB 1992) (opposer’s constructive use date on ITU application was subsequent to applicant’s); Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991) (constructive use dates intended to give ITU applicants superior rights to others who adopt the mark after filing date).
See also Andrea Radio Corp. v. Premium Import Co., 191 USPQ 232, 234 (TTAB 1976); David Crystal, Inc. v. Glamorise Foundations, Inc., 189 USPQ 740, 741 (TTAB 1975); Johnson & Johnson v. E. I. du Pont de Nemours & Co., 181 USPQ 790, 791 (TTAB 1974); Gates Rubber Co. v. Western Coupling Corp., 179 USPQ 186, 189-90 (TTAB 1973).
23. See McCormick & Co. v. Summers, 354 F.2d 668, 148 USPQ 272, 276 (CCPA 1966) (registration on Supplemental Register is not evidence of constructive notice of ownership nor evidence of exclusive right to use); In re Medical Disposables Co., 25 USPQ2d 1801, 1805 (TTAB 1992); and Copperweld Corp. v. Arcair Co., 200 USPQ 470 (TTAB 1978). See also Andrea Radio Corp. v. Premium Import Co., 191 USPQ 232 (TTAB 1976); Aloe Creme Laboratories, Inc. v. Johnson Products Co., 183 USPQ 447 (TTAB 1974); Nabisco, Inc. v. George Weston Ltd., 179 USPQ 503 (TTAB 1973); and Aloe Creme Laboratories, Inc. v. Bonne Bell, Inc., 168 USPQ 246 (TTAB 1970).
24. See Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) ("a canceled registration does not provide constructive notice of anything"); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1956 n.9 (TTAB 2014) (cancelled and expired registrations are not probative), vacated and remanded on other grounds, Princeton Vanguard , LLC v. Frito-Lay North. America, Inc., 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015), original decision aff’d, Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184 (TTAB 2017), on appeal sub nom Snyder’s Lance, Inc. v. Frito-Lay North America, Inc., No. 3:17-CV-00652 (W.D.N.C. November 6, 2017); Time Warner Entertainment Company v. Jones, 65 USPQ2d 1650, 1653 n.6 (TTAB 2002) (status and title copy of expired registration); Sunnen Products Co. v. Sunex International Inc., 1 USPQ2d 1744, 1746-47 (TTAB 1987) (parties stipulated to introduction of photocopy of expired registration having no probative value other than that it issued); United States Shoe Corp. v. Kiddie Kobbler Ltd., 231 USPQ 815, 818 n.7 (TTAB 1986) (expired "Act of 1920" registration had no probative value); Sinclair Manufacturing Co. v. Les Parfums de Dana, Inc., 191 USPQ 292, 294 (TTAB 1976) (lapsed registration of affiliated company is not evidence of use of mark at any time); Bonomo Culture Institute, Inc. v. Mini-Gym, Inc., 188 USPQ 415, 416 (TTAB 1975) (expired registration is incompetent evidence of any existing rights in mark). Cf. Nike Inc. v. Maher, 100 USPQ2d 1018, 1021 (TTAB 2011) (limited probative value of expired third-party registration is further limited to the short time it was registered).
See also Borden, Inc. v. Kerr-McGee Chemical Corp., 179 USPQ 316, 316 n.2 (TTAB 1973), aff'd without opinion, 500 F.2d 1407, 182 USPQ 307 (CCPA 1974); Unitec Industries, Inc. v. Cumberland Corp., 176 USPQ 62, 63 (TTAB 1972); Monocraft, Inc. v. Leading Jewelers Guild, 173 USPQ 506, 508 (TTAB 1972).
25. See, e.g., Faultless Starch Co. v. Sales Producers Associates, Inc., 530 F.2d 1400, 189 USPQ 141, 142 n.2 (CCPA 1976) (state registrations do not establish use); Kraft, Inc. v. Balin, 209 USPQ 877, 880 (TTAB 1981) (although parties stipulated to introduction of state registration, said registration is incompetent to prove anything material to opposition proceeding); Plak-Shack, Inc. v. Continental Studios of Georgia, Inc., 204 USPQ 242, 246 (TTAB 1979) (incompetent as evidence of use of a mark); Stagecoach Properties, Inc. v. Wells Fargo & Co., 199 USPQ 341, 352 (TTAB 1978) (incompetent evidence to establish use of the mark), aff'd, 685 F.2d 302, 216 USPQ 480 (9th Cir. 1982). See also Econo-Travel Motor Hotel Corp. v. Econ-O-Tel of America, Inc., 199 USPQ 307, 390 (TTAB 1978); Angelica Corp. v. Collins & Aikman Corp., 192 USPQ 387, 390 (TTAB 1976); State Historical Society of Wisconsin v. Ringling Brothers-Barnum & Bailey Combined Shows, Inc., 190 USPQ 25, 26 n.2 (TTAB 1976); Old Dutch Foods, Inc. v. Old Dutch Country House, Inc., 180 USPQ 659, 660 n.6 (TTAB 1973); Philip Morris Inc. v. Liggett & Myers Tobacco Co., 139 USPQ 240, 243-44 (TTAB 1963).
Cf. with respect to ex parte appeals, In re Anania Associates, Inc., 223 USPQ 740, 742 (TTAB 1984) (argument that applicant’s state registration for the mark must be taken as prima facie evidence of distinctiveness rejected); In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984); In re Illinois Bronze Powder & Paint Co., 188 USPQ 459 (TTAB 1975).
26. See Societe Anonyme Marne et Champagne v. Myers, 250 F.2d 374, 116 USPQ 153, 156 (CCPA 1957); Bureau National Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610, 1618 (TTAB 1988). See also Nabisco, Inc. v. George Weston Ltd., 179 USPQ 503, 507 (TTAB 1973); Barash Co. v. Vitafoam Ltd., 155 USPQ 267, 267 n.3 (TTAB 1967), aff'd, 427 F.2d 810, 166 USPQ 88 (CCPA 1970). Cf. In re Hag AG, 155 USPQ 598, 599 (TTAB 1967).
27. See Harzfeld's, Inc. v. Joseph M. Feldman, Inc., 184 USPQ 692, 693 n.4 (TTAB 1974) (file history of petitioner's registration not of record where respondent noticed it but failed to file a copy of it).