704.03(b)(1)(B) Third-Party Registration
37 C.F.R. § 2.122(e) Printed publications and official records.
- (1) 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 in a particular 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 in accordance with paragraph (g) of this section. The notice of reliance 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 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 an inter partes proceeding before the Board may introduce, as part of its evidence in the case, a registration owned by a third party not involved in the proceeding. [ Note 1.]
A party that wishes to make such a third-party registration of record in a Board inter partes proceeding may do so by filing, during its testimony period, a plain copy of the registration, a printout or a copy of information of the registration from the Office’s electronic database records, together with a notice of reliance thereon specifying the registration and indicating generally its relevance and associating the registration with one or more issues in the case. [ Note 2.]
A party to a Board inter partes proceeding may also make a third-party registration of record by introducing a copy of it as an exhibit to testimony, or by stipulation of the parties. [ Note 3.]
It is not necessary that the copy of the third-party registration submitted with a notice of reliance (or with testimony or a stipulation) be certified, nor need it be a current status and title copy prepared by the Office; a plain copy (or legible photocopy) of the registration itself, or the electronic equivalent thereof, that is, a printout of the registration from the electronic records of the Office’s automated search system is all that is required. [ Note 4.]
As stated in TBMP § 704.03(b)(1) above, a current status and title copy of a registration prepared by the Office (or other appropriate proof of current status and title), or a current printout or copy of information from the Office’s electronic database records showing the current status and title of the registration, submitted with a notice of opposition or petition to cancel, is necessary when the owner of a registration on the Principal Register seeks to make the registration of record for the purpose of relying on the presumptions accorded to a certificate of registration pursuant to Trademark Act § 7(b), 15 U.S.C. § 1057(b) . However, the § 7(b) presumptions accorded to a registration on the Principal Register accrue only to the benefit of the owner of the registration, and hence come into play only when the registration is made of record by its owner, or when the registration is cited by an examining attorney (in an ex parte case) as a reference under Trademark Act § 2(d), 15 U.S.C. § 1052(d), against a mark sought to be registered. [ Note 5.]
Thus, when third-party registrations are made of record, the party offering them may not rely on the Trademark Act § 7(b), 15 U.S.C. § 1057(b), presumptions. Normally, third-party registrations are offered merely to show that they issued, and a plain copy of the registration is sufficient for that purpose. [ Note 6.]
On the other hand, a party may not make a third-party registration of record simply by introducing a list of third-party registrations that includes it; or by filing a trademark search report in which the registration is mentioned; or by filing a printout, from a private company's data base, of information about the registration; or by filing a notice of reliance together with a reproduction of the mark as it appeared in the Official Gazette for purposes of publication; or by referring to the registration in its brief or pleading. The Board does not take judicial notice of registrations in the Office. [ Note 7.] Cf. TBMP § 528.05(d) (for purposes of responding to a summary judgment motion only, a copy of a trademark search report may be sufficient to raise a genuine issue of material fact as to the nature and extent of third-party use of a particular designation).
Even when a third-party federal registration has been properly made of record, its probative value is limited, particularly when the issue to be determined is likelihood of confusion, and there is no evidence of actual use of the mark shown in the registration. [ Note 8.] Nevertheless, third-party registrations may be entitled to some weight to show the meaning of a mark, or a portion of a mark, in the same manner as a dictionary definition. [ Note 9.]
A state registration, whether or not owned by a party, has very little, if any, probative value in a proceeding before the Board. [ Note 10.] See, e.g., TBMP § 704.03(b)(1)(A).
Making file history of third-party registration of record. The file history of a third-party registration (rather than just the certificate of registration), or a portion thereof, may be made of record by: (1) filing, during the offering party's 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 file history, or portion thereof, may be obtained from the Office’s electronic database records, such as TSDR.
It is not necessary that the copy of the registration file, or portions thereof, be certified. [ Note 11.] However, third-party registration histories are of very limited probative value. [ Note 12.]
NOTES:
1. See Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1110 (TTAB 2007). 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).
2. 37 C.F.R. § 2.122(e); 37 C.F.R. § 2.122(g). See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992) (printouts of third-party registrations obtained from private search reports are neither printed publications nor official records); Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ 151, 153 n.2 (TTAB 1983), aff'd, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984); W. R. Grace & Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308, 309 n.5 (TTAB 1976) (reference to third-party registrations in answer, without filing copies with a notice of reliance, was insufficient to make them of record).
3. See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1047 (TTAB 2017) (overruling objection to third- party registrations attached as exhibits to declaration testimony).
4. See 37 C.F.R. § 2.122(e); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 n.11 (TTAB 2011) (not necessary to submit title and status copies of third-party registrations prepared by Office; plain copies from the USPTO's electronic database would have sufficed); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998) (incomplete excerpts of registrations from internal USPTO trademark database system was insufficient); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992). See also Interbank Card Association v. United States National Bank of Oregon, 197 USPQ 123, 124 n.6 (TTAB 1977).
5. See Trademark Act § 7(b), 15 U.S.C. § 1057(b); Chemical New York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139, 1144 (TTAB 1986) (wholly owned subsidiary of owner of registrations may not rely on registrations to prove priority); In re Phillips-Van Heusen Corp., 228 USPQ 949, 950 (TTAB 1986) (claim that mark in cited registration is not in use is an impermissible collateral attack on the validity of the registration in an ex parte proceeding); In re H & H Products, 228 USPQ 771, 773 (TTAB 1986) (registrations are entitled to presumption that marks have overcome any inherent nondistinctiveness); Yamaha International Corp. v. Stevenson, 196 USPQ 701, 702 (TTAB 1979) (opposer could not rely on § 7(b) presumptions where registration is owned by its parent company); Fuld Brothers, Inc. v. Carpet Technical Service Institute, Inc., 174 USPQ 473, 475-76 (TTAB 1972) (although petitioner can rely on its wholly-owned subsidiary's use of a mark, petitioner cannot rely on the registrations owned by its wholly-owned subsidiary for statutory presumptions); Joseph S. Finch & Co. v. E. Martinoni Co., 157 USPQ 394, 395 (TTAB 1968) (opposer cannot rely on registrations owned by its parent or its parent's subsidiaries).
6. See Merritt Foods Co. v. Americana Submarine, 209 USPQ 591, 593 n.16 (TTAB 1980); Hiram Walker & Sons, Inc. v. Milstone, 130 USPQ 274, 276 (TTAB 1961).
7. See, e.g., Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (listing of third-party marks downloaded from Office database does not make registrations of record); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1829 n.8 (TTAB 2012) (summary of search results from USPTO's electronic database is not an official record of the Office); Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1217 (TTAB 2011) (summaries of search results for third-party registrations are not official records and have not been considered); Jansen Enterprises, Inc. v. Rind, 85 USPQ2d 1104, 1110 (TTAB 2007) (third-party registrations mentioned in trial brief); Truescents, LLC v. Ride Skin Care, LLC, 81 USPQ2d 1334, 1337 (TTAB 2006) (listing of applications and registrations obtained from Office’s electronic database); In re Dos Padres, Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998) (listings from commercial trademark search reports); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994) (search report from private company’s database); Riceland Foods Inc. v. Pacific Eastern Trading Corp., 26 USPQ2d 1883, 1885 (TTAB 1993) (trademark search report wherein registrations are mentioned); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992) (trademark search reports from private companies are neither printed publications nor official records); Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545, 1549 (TTAB 1990) (search report), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); Edison Brothers Stores, Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ 530, 532 (TTAB 1986) (reference to third-party registrations in a brief). See also National Fidelity Life Insurance v. National Insurance Trust, 199 USPQ 691 (TTAB 1978); Wella Corp. v. California Concept Corp., 192 USPQ 158 (TTAB 1976), rev'd on other grounds, 558 F.2d 1019, 194 USPQ 419 (CCPA 1977); W. R. Grace & Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308 (TTAB 1976).
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's registrations in that case, as discussed above 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 how to make such registrations of record in an inter partes proceeding.
8. See AMF Inc. v. American Leisure Products, Inc,, 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) (not evidence of what happens in the market place or consumer familiarity); 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); Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1351 n.10 (TTAB 2014) (third-party registrations do not constitute evidence of use, thus of limited probative value to show mark is weak), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. Oct. 10, 2014); In re the Dot Communications Network LLC, 101 USPQ2d 1062, 1067 (TTAB 2011) (limited probative value in view of the current market conditions which are very different from when registrations issued); Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1222 (TTAB 2011) (third-party registrations for same term are not evidence of use in the marketplace); Nike Inc. v. Maher, 100 USPQ2d 1018, 1028 (TTAB 2011) (little probative value because they tell nothing about whether the marks are being used or the manner of such use); Nike, Inc. v. WNBA Enterprises, LLC, 85 USPQ2d 1187, 1200 (TTAB 2007) (not evidence of use); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1798 (TTAB 2001) (not evidence of use or that consumers have been exposed to them); Red Carpet Corp. v. Johnstown American Enterprises, Inc., 7 USPQ2d 1404, 1406 (TTAB 1988) (not evidence of use to show public awareness of the marks).
See also Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (may not be given any weight in determining strength of a mark); Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 196 USPQ 289, 291 n.12 (CCPA 1977) (little evidentiary value in determining scope of protection); Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588 (TTAB 1975) (little weight on likelihood of confusion), aff’d, 534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976); Conde Nast Publications Inc. v. Miss Quality, Inc., 507 F.2d 1404, 184 USPQ 422, 424-25 (CCPA 1975) (little weight on question of likelihood of confusion); Spice Islands, Inc. v. Frank Tea and Spice Co., 505 F.2d 1293, 184 USPQ 35, 38 (CCPA 1974) (do not control determination of whether marks are so similar that they are likely to cause confusion); Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ 151, 153 n.2 (TTAB 1983) (third-party registration only establishes what appears on its face, that application was made claiming adoption and use and that registration was granted), aff'd, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984).
Cf. In re Alpha Analytics Investment Group LLC, 62 USPQ2d 1852, 1856 (TTAB 2002) (registrations under Trademark Act § 2(f) or on the Supplemental Register, although not conclusive evidence, may be probative evidence of mere descriptiveness). Cf. also Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1221 (TTAB 2011) (while third-party registrations based on use in commerce may suggest listed goods and services are of the type which may emanate from a single source, third party registrations based on international registrations are not evidence that the marks have been used in the United States for the stated goods and services); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (third-party registrations may have some probative value to the extent that they may serve to suggest that goods or services are of a type which may emanate from the same source).
9. See Juice Generation, Inc. v. GS Enterprises, LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-74 (Fed. Cir. 2015) (evidence of extensive number of third-party registrations to be considered); Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588 (TTAB 1975), aff’d, 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976) (evidence of third party registrations may be given some weight similar to dictionary evidence); Conde Nast Publications Inc. v. Miss Quality, Inc., 507 F.2d 1404, 184 USPQ 422, 425 (CCPA 1975). See also American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1029 (TTAB 2011) (may indicate that a mark, or portion of a mark, is descriptive or suggestive); Nike Inc. v. Maher, 100 USPQ2d 1018, 1028 (TTAB 2011) (to indicate a commonly registered expression with a suggestive meaning); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011) (probative of meaning of term, not probative that term is commercially weak), aff’d, 188 F.Supp. 3d 222 (D.D.C. 2016), on appeal, No. 17-7075 (D.C. Cir. May 3, 2017); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1798 (TTAB 2001) (that a term is adopted to convey a particular suggestive meaning); General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1277 (TTAB 1992) (to show the sense in which the term is employed in the marketplace); United Foods Inc. v. J.R. Simplot Co,, 4 USPQ2d 1172, 1174 (TTAB 1987) (to show ordinary usage of a term and descriptive or suggestive significance); Bottega Veneta, Inc. v. Volume Shoe Corp,, 226 USPQ 964, 968 (TTAB 1985) (to show geographic significance of terms).
10. See Allstate Insurance Co. v. DeLibro, 6 USPQ2d 1220, 1223 (TTAB 1988) (third-party state registrations "are of absolutely no probative value" on the question of likelihood of confusion).
12. See 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).