704 Introducing Other Evidence
704.01 In General
As noted earlier in this chapter, evidence in an inter partes proceeding before the Board can be introduced in a number of ways. The first part of this chapter discusses the introduction of testimony with accompanying exhibits. The following sections discuss other forms of evidence and the methods available for their introduction. Parties are cautioned, however, not to submit cumulative evidence in support of their pleaded claims. See TBMP § 702.05 (Overly Large Records).
704.02 Notice of Reliance – Generally
37 C.F.R. § 2.122(g) Notices of reliance. The types of evidence admissible by notice of reliance are identified in paragraphs (d)(2) and (e)(1) and (2) of this section and § 2.120(k). A notice of reliance shall be filed during the testimony period of the party that files the notice. For all evidence offered by notice of reliance, the notice must indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding. Failure to identify the relevance of the evidence, or associate it with issues in the proceeding, with sufficient specificity is a procedural defect that can be cured by the offering party within the time set by Board order.
Certain types of evidence, such as official records and printed publications as described in 37 C.F.R. § 2.122(e), need not be introduced in connection with the testimony of a witness but may instead be made of record by filing the materials with the Board under cover of one or more notices of reliance during the testimony period of the offering party. A notice of reliance is essentially a cover sheet for the materials sought to be introduced. As the title suggests, the notice of reliance serves to notify opposing parties that the offering party intends to rely on the materials submitted thereunder in support of its case. A party needs not disclose the evidence it intends to submit under notice of reliance in its pretrial disclosures. [ Note 1.] Under 37 C.F.R. § 2.122(g), the notice of reliance must include a description and the general relevance of the proffered materials, and it must associate the materials with one or more issues in the case. [ Note 2.] For example, if the claim is likelihood of confusion, the propounding party should associate the materials with a relevant likelihood of confusion factor. Further, if the same document is submitted to support more than one element of a claim or defense, the propounding party should indicate the specific element or fact supported by the document in a group of documents. Failure to do so with sufficient specificity is a procedural defect that can be cured by the offering party within the time set by Board order. [ Note 3.] Even if an adverse party fails to lodge a timely objection, the Board may sua sponte decline to consider the proffered evidence if the notice of reliance does not specify the relevance of the materials and identify the issues. [ Note 4.]
A discussion of the types of evidence that may be submitted by notice of reliance and the requirements for introduction of such evidence by notice of reliance can be found in the sections that follow.
NOTES:
1. 37 C.F.R. § 2.121(e). Accord Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 n.4 (TTAB 2015).
2. 37 C.F.R. § 2.122(g). Effective January 14, 2017, the Board added new subsection (g) to 37 C.F.R. § 2.122 detailing the requirements for admission of evidence by notice of reliance. This amendment effectively overruled any prior case law stating that an offering party is not required to specify the general relevance of certain types of evidence submitted under notice of reliance such as discovery deposition excerpts and answers to interrogatories. See, e.g., Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881, 883 (TTAB 1979) (not required to set forth the relevance of interrogatory answers).
See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016) ("To alleviate any uncertainty, this final rule adds a paragraph to the requirements for a notice of reliance, specifically, to require that the notice indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding. In an effort to curtail motion practice on this point, the rule explicitly states any failure of a notice of reliance to meet this requirement will be considered a curable procedural defect. This codifies the holding in FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1237 (TTAB 2014)."); see, e.g., Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1163 (TTAB 2017) (granting motion to strike notices of reliance under Trademark Rule 2.122(g), with leave to cure, where relevancy description "so general as to be meaningless," and for insufficiently explaining association of documents with particular facts relevant to particular claims and defenses; description in other notices of reliance acceptable because "sufficiently narrow or focused"); Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc., 123 USPQ2d 1844, 1847 (TTAB 2017) (opposer’s statement of relevance of Internet evidence introduced under notice of reliance acceptable), on appeal, 3:17-CV-02150 (S.D. Cal. October 19, 2017).
3. 37 C.F.R. § 2.122(g). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016) ("To alleviate any uncertainty, this final rule adds a paragraph to the requirements for a notice of reliance, specifically, to require that the notice indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding. In an effort to curtail motion practice on this point, the rule explicitly states any failure of a notice of reliance to meet this requirement will be considered a curable procedural defect. This codifies the holding in FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1237 (TTAB 2014)."). See Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1163 (TTAB 2017) (granting motion to strike notices of reliance under Trademark Rule 2.122(g), with leave to cure, where relevancy description "so general as to be meaningless," and for insufficiently explaining association of documents with particular facts relevant to particular claims and defenses; description in other notices of reliance acceptable because "sufficiently narrow or focused"); Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc., 123 USPQ2d 1844, 1847 (TTAB 2017) (opposer’s statement of relevance of Internet evidence introduced under notice of reliance acceptable), on appeal, 3:17-CV-02150 (S.D. Cal. October 19, 2017).
4. See, e.g., Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1040 (TTAB 2010).
704.03 Applications and Registrations
704.03(a) Subject of Proceeding
- (b) Application and registration files.
- (1) The file of each application or registration specified in a notice of interference, of each application or registration specified in the notice of a concurrent use registration proceeding, of the application against which a notice of opposition is filed, or of each registration against which a petition or counterclaim for cancellation is filed forms part of the record of the proceeding without any action by the parties and reference may be made to the file for any relevant and competent purpose in accordance with paragraph (b)(2) of this section.
- (2) The allegation in an application for registration, or in a registration, of a date of use is not evidence on behalf of the applicant or registrant; a date of use of a mark must be established by competent evidence. Specimens in the file of an application for registration, or in the file of a registration, are not evidence on behalf of the applicant or registrant unless identified and introduced in evidence as exhibits during the period for the taking of testimony. Statements made in an affidavit or declaration in the file of an application for registration, or in the file of a registration, are not testimony on behalf of the applicant or registrant. Establishing the truth of these or any other matters asserted in the files of these applications and registrations shall be governed by the Federal Rules of Evidence, the relevant provisions of the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of the United States Code, and the provisions of this part.
The file of an application or registration that is the subject of a Board inter partes proceeding forms part of the record of the proceeding without any action by the parties, and reference may be made to the file by any party for any relevant and competent purpose. [ Note 1.] The Board discourages filing a copy of the subject application or subject registration because it is of record. [ Note 2.]
However, the fact that the subject application or registration file is automatically part of the record in a proceeding does not mean that an allegation of a date of use or that the specimens filed therein are evidence on behalf of the applicant or registrant in the inter partes proceeding. The alleged date of use of the mark and the specimens in an application or registration file are not evidence in an inter partes proceeding, on behalf of the applicant or registrant, unless the alleged date of use is established by competent evidence and the specimens are identified and introduced in evidence as exhibits during the testimony period. [ Note 3.] See TBMP § 704.04.
Likewise, statements made in an affidavit or declaration in the file of an application or registration are not testimony. [ Note 4.] Although part of the record of the proceeding, such statements constitute hearsay (except for statements falling under Fed. R. Evid. 801(d)). [ Note 5.] However, self-authenticating exhibits (e.g., printed publications, Internet printouts with the URL and date) attached to affidavits or declarations in applications or registrations may have evidentiary value for what they show on their face. [ Note 6.]
Evidence submitted during the prosecution of an application with respect to the acquired distinctiveness of a mark under Trademark Act § 2(f), 15 U.S.C. § 1052(f), is evidence on behalf of the applicant or registrant without any action by the parties. [ Note 7.] Nonetheless, such evidence is subject to the Federal Rules of Evidence, the Federal Rules of Civil Procedure, and the relevant provisions of Title 28 of the United States Code and the provisions of title 37 of the Code of Federal Regulation. [ Note 8.]
For further information concerning the probative value of applications and registrations, see TBMP § 704.03(b).
NOTES:
1. 37 C.F.R. § 2.122(b)(1). See The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626 (Fed. Cir. 2009); Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1283 (Fed. Cir. 1984); Cleveland-Detroit Corp. v. Comco (Machinery) Ltd., 277 F.2d 958, 125 USPQ 586, 586-87 (CCPA 1960) (application file automatically forms part of record on appeal); Poly-America, L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1510 (TTAB 2017) ("the record automatically includes the pleadings (but not the exhibits thereto), and the application files for the challenged registrations."); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1923 (TTAB 2011) (record includes pleadings and registration file for respondent's mark), aff’d, 188 F.Supp. 3d 222 (D.D.C. 2016), on appeal, No. 17-7075 (D.C. Cir. May 3, 2017); Venture Out Properties LLC v. Wynn Resorts Holdings LLC, 81 USPQ2d 1887, 1889 n.8 (TTAB 2007) (applications automatically of record); Jansen Enterprises, Inc. v. Rind, 85 USPQ2d 1104, 1106 n.4 (TTAB 2007) (respondent's introduction of a certified copy of his registration sought to be cancelled is superfluous); Uncle Ben’s Inc. v. Studenberg International Inc., 47 USPQ2d 1310, 1311 n.2 (TTAB 1998) (notice of reliance on application file not necessary as it is automatically of record); Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545, 1547 n.6 (TTAB 1990) (submission of portions of application unnecessary since file is automatically of record), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). See also Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1107 (TTAB 2015) (plaintiff’s pleaded registration is of record by operation of Trademark Rule 2.122(b)(1) because it is the subject of a counterclaim).
2. Anthony's Pizza & Pasta International Inc. v. Anthony's Pizza Holding Co., 95 USPQ2d 1271, 1274 n.6 (TTAB 2009) (not necessary for respondent to file a status and title copy of its registration because registration is automatically of record), aff’d, 415 F. App’x 222 (Fed. Cir. 2010); Hiraga v. Arena, 90 USPQ2d 1102, 1105 (TTAB 2009) (respondent's registration file is automatically part of the record of the proceeding and need not be introduced under a notice of reliance); Jansen Enterprises, Inc. v. Rind, 85 USPQ2d 1104, 1106 n.4 (TTAB 2007) (respondent's introduction of a certified copy of his registration sought to be cancelled is superfluous); Venture Out Properties LLC v. Wynn Resorts Holdings LLC, 81 USPQ2d 1887, 1889 n.8 (TTAB 2007) (applications automatically of record and need not be introduced again).
3. 37 C.F.R. § 2.122(b)(2). See UMG Recordings, Inc. v. O'Rourke, 92 USPQ2d 1042, 1047 (TTAB 2009) (dates of use not evidence); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1960 (TTAB 2008) (alleged date of use in application not evidence); Baseball America, Inc. v. Powerplay Sports, Ltd., 71 USPQ2d 1844, 1848 n.10 (TTAB 2004) (dates of use and specimens not evidence); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1467 (TTAB 1993) (without proof of use, application filing date, not dates of use alleged in the application, is the earliest use date on which the applicant may rely), recon. denied, 36 USPQ2d 1328 (TTAB 1994).
4. 37 C.F.R. § 2.122(b)(2). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016) ("In response to Cold War Museum Inc. v. Cold War Air Museum Inc., 56 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009), this final rule makes clear that while the file history of the subject application or registration is of record, statements in affidavits or declarations in the file are not testimony.").
5. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("Now that testimony by affidavit or declaration is unilaterally available, it is necessary to clearly distinguish material residing in an application or registration from testimony introduced in the proceeding."). See Daniel J. Quirk Inc. v. Village Car Company, 120 USPQ2d 1146, 1149 n.14 (TTAB 2016) (statements made in affidavit filed in connection with respondent’s office action response constitute admissions against interest and fall within hearsay exception under Fed. R. Evid. 801(d)(2)). See also EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 213 USPQ 597, 599 (TTAB 1982) (statements made in an application constitute admissions and may be considered as evidence, albeit not conclusive evidence, of the truth of the assertions therein), aff’d, 706 F.2d 1213, 217 USPQ 986 (Fed. Cir. 1983) (citing Bakers Franchise Corp. v. Royal Crown Cola Co., 404 F.2d 985, 160 USPQ 192 (CCPA 1969)); Maremont Corp. v. Airlift Corp., 463 F.2d 1114, 174 USPQ 395, 396 (CCPA 1972)).
6. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016).
7. The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009).
8. 37 C.F.R. § 2.122(b)(2). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016).
704.03(b) Not Subject of Proceeding – In General
The file of a particular application or registration that is not the subject of a proceeding may be made of record either in connection with testimony or by notice of reliance as described below.
704.03(b)(1) Registration Not Subject of Proceeding
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).
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).
704.03(b)(2) Application Not Subject of Proceeding
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 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 as well as associating the application with one or more issues in the case. [ 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 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. [ Note 4.]
NOTES:
1. See 37 C.F.R. § 2.122(e); 37 C.F.R. § 2.122(g). See 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). Cf. Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1867 n.3 (TTAB 2016) (in ruling on motion for summary judgment, Board noted that the mere listing of an application number in the electronic record does not make that application of record).
2. See 37 C.F.R. § 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."), 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); 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).
4. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (statements falling under Fed. R. Evid. 801(d) do not constitute hearsay).
704.04 Statements and Things in Application or Registration
- (b) Application and registration files.
- (1) The file of each application or registration specified in a notice of interference, of each application or registration specified in the notice of a concurrent use registration proceeding, of the application against which a notice of opposition is filed, or of each registration against which a petition or counterclaim for cancellation is filed forms part of the record of the proceeding without any action by the parties and reference may be made to the file for any relevant and competent purpose in accordance with paragraph (b)(2) of this section.
- (2) The allegation in an application for registration, or in a registration, of a date of use is not evidence on behalf of the applicant or registrant; a date of use of a mark must be established by competent evidence. Specimens in the file of an application for registration, or in the file of a registration, are not evidence on behalf of the applicant or registrant unless identified and introduced in evidence as exhibits during the period for the taking of testimony. Statements made in an affidavit or declaration in the file of an application for registration, or in the file of a registration, are not testimony on behalf of the applicant or registrant. Establishing the truth of these or any other matters asserted in the files of these applications and registrations shall be governed by the Federal Rules of Evidence, the relevant provisions of the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of the United States Code, and the provisions of this part.
The file of a particular application or registration that is the subject of the proceeding is of record in a Board inter partes proceeding by operation of 37 C.F.R. § 2.122(b)(1). See TBMP § 704.03(a). [ Note 1.] However, statements made in an affidavit or declaration in the file of an application or registration are not testimony; rather, such matter constitutes hearsay, except for statements falling under Fed. R. Evid. 801(d)). [ Note 2.]
Likewise, the allegation of a date of use of a mark made in the application or registration is not evidence in the proceeding on behalf of the applicant or registrant and the specimen in the application or registration, without more, is not evidence on behalf of the applicant or registrant. [ Note 3.] The date of use must be established by competent evidence, properly adduced at trial, [ Note 4.] and the specimen in an application or registration file is not evidence in an inter partes proceeding, on behalf of the applicant or registrant, unless it has been identified and introduced in evidence as an exhibit during the testimony period. [ Note 5.]
Similarly, the allegations of use in a third-party registration do not constitute evidence that the mark shown therein has actually been used. [ Note 6.]
The allegations and statements made and documents and things filed in an application or registration may be used as evidence against the applicant or registrant, that is, as admissions against interest and the like. [ Note 7.]
Self-authenticating exhibits (e.g., printed publications, Internet printouts with the URL and date) attached to affidavits or declarations in applications or registrations may have evidentiary value for what they show on their face. [ Note 8.]
NOTES:
1. See The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009).
2. 37 C.F.R. § 2.122(b)(2); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("Now that testimony by affidavit or declaration is unilaterally available, it is necessary to clearly distinguish material residing in an application or registration from testimony introduced in the proceeding. … Although part of the record of the proceeding, such material constitutes hearsay (except for statements falling under Fed. R. Evid. 801(d)), further compounded by the fact that the affidavits or declarations were not subject to contemporaneous cross-examination.).
3. 37 C.F.R. § 2.122(b)(2).See, e.g., UMG Recordings, Inc. v. Charles O’Rourke, 92 USPQ2d 1042, 1047 (TTAB 2009) (allegations in application are not evidence); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1467 (TTAB 1993) (in the absence of proof of use, the filing date of the application, rather than the dates of use alleged in the application, is treated as the earliest use date on which applicant may rely); Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 396 n.10 (TTAB 1979); (an application is not evidence of anything on behalf of applicant except that it was filed); Omega SA v. Compucorp, 229 USPQ 191, 195 (TTAB 1985) (allegations and documents in application file not evidence unless and to the extent they have been identified and introduced in evidence during testimony). See also The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009).
4. 37 C.F.R. § 2.122(b)(2). See Baseball America, Inc. v. Powerplay Sports, Ltd., 71 USPQ2d 1844, 1848, n.10 (TTAB 2004) (dates of use in application not evidence of such use); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1467 (TTAB 1993) (in the absence of proof, the filing date of the application and not the dates of use alleged in the application is treated as the earliest use date on which an applicant may rely); Omega SA v. Compucorp, 229 USPQ 191, 193 n.10 (TTAB 1985) (applicant may rely on presumption that its mark was in use as of filing date of application in absence of any proof of earlier use); Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 906 n.4 (TTAB 1985) (statements and materials in registration file bearing on respondent's dates of use not evidence on behalf of respondent unless properly introduced); Textron Inc. v. Arctic Enterprises, Inc., 178 USPQ 315 (TTAB 1973) (applicant cannot rely on dates of use alleged in application).
5. 37 C.F.R. § 2.122(b)(2). See Eikonix Corp. v. CGR Medical Corp., 209 USPQ 607, 613 n.7 (TTAB 1981) (specimens in application not evidence on behalf of respondent); Dap, Inc. v. Century Industries Corp., 183 USPQ 122, 123 (TTAB 1974) (applicant cannot rely on specimens filed with application to delineate nature and use of its goods).
6. 37 C.F.R. § 2.122(b)(2). See Alpha Industries, Inc. v. Alpha Microsystems, 223 USPQ 96, 96 (TTAB 1984) (Board will not take judicial notice of statements made in third-party applications regarding use). See also e.g., Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1622 (TTAB 1989); Chemical New York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139, 1142 (TTAB 1986) (registrations owned by opposer's parent corporation are third-party registrations and opposer cannot rely on those registrations to prove priority); Economics Laboratory, Inc. v. Scott's Liquid Gold, Inc., 224 USPQ 512, 514 (TTAB 1984); 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).
7. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (statements falling under Fed. R. Evid. 801(d) do not constitute hearsay). See Daniel J. Quirk Inc. v. Village Car Company, 120 USPQ2d 1146, 1149 n.14 (TTAB 2016) (statements made in affidavit filed in connection with respondent’s office action response constitute admissions against interest and fall within hearsay exception under Fed. R. Evid. 801(d)(2)); Bass Pro Trademarks, LLC v. Sportsman's Warehouse, Inc., 89 USPQ2d 1844, 1851 (TTAB 2008) (disclaimer may be considered an admission that term is merely descriptive); Mason Engineering & Design Corp. v. Mateson Chemical Corp., 225 USPQ 956, 961 n.5 and n.11 (TTAB 1985) (date of first use asserted by opposer in its application may be considered as admission against interest; in evaluating "Morehouse" type defense, Board relied on specimens and other materials in applicant's application as evidence of the nature of applicant's services to find that those services were not "substantially identical" to the goods in applicant's subsisting registration); Sunbeam Corp. v. Battle Creek Equipment Co., 216 USPQ 1101, 1102 n.3 (TTAB 1982) (applicant's claim of distinctiveness in its application is an admission by applicant that term is descriptive); Eikonix Corp. v. CGR Medical Corp., 209 USPQ 607, 613 n.7 (TTAB 1981) (specimens in respondent's registration may be used as admission against interest of relationship between respondent's and petitioner's goods).
See also, e.g., Hydro-Dynamics Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987) (applicant which seeks to prove date of first use earlier than that stated in its application must do so by heavier burden of clear and convincing evidence, rather than a preponderance of the evidence, because of the change of position from one "considered to have been made against interest at the time of filing of the application"); Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1283 (Fed. Cir. 1984) (applicant's earlier contrary position before the examining attorney as to the meaning of its mark as demonstrated by statements in the application illustrating the variety of meanings that may be attributed to, and commercial impression projected by, applicant's mark, may be relevant); Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978) (fact that party took position in its application inconsistent with its position in inter partes proceeding may be considered as evidence "illuminative of shade and tone in the total picture confronting the decision maker"); Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) (in application for mark in typed form, specimens in application may be used to illustrate one form in which mark may actually be used in order to show similarity with opposer's mark); American Rice, Inc. v. H.I.T. Corp., 231 USPQ 793, 798 (TTAB 1986) (fact that opposer took position in its application regarding descriptiveness of term inconsistent with its position in inter partes proceeding may be considered as evidence, although earlier inconsistent position does not give rise to an estoppel).
8. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016).
704.05 Exhibits to Pleadings or Briefs
704.05(a) Exhibits to Pleadings
37 C.F.R. § 2.122(c) Exhibits to pleadings. Except as provided in paragraph (d)(1) of this section, an exhibit attached to a pleading is not evidence on behalf of the party to whose pleading the exhibit is attached, and must be identified and introduced in evidence as an exhibit during the period for the taking of testimony.
37 C.F.R. § 2.122(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).
Exhibits attached to a pleading are not evidence on behalf of the party to whose pleading they are attached, and must be properly identified and introduced in evidence as exhibits during the testimony period. [ Note 1.] However, there are two exceptions to this rule.
The first exception is a current status and title copy, prepared by the Office, of a plaintiff's pleaded registration. When a plaintiff submits an original or photocopy of a status and title copy, prepared and issued by the Office, of its pleaded registration as an exhibit to its complaint, the registration will be received in evidence and made part of the record without any further action by plaintiff. [ Note 2.]
The second exception is a current printout or copy of information from the electronic database records of the USPTO showing the current status and title of a plaintiff’s pleaded registration. When a plaintiff submits a printout or copy of such information as an exhibit to its complaint, the registration will be received in evidence and made part of the record without any further action by plaintiff. [ Note 3.] See TBMP § 704.03(b)(1)(A). The printout or copy of the information may be taken from (a) TSDR showing the current status and title (owner) of the registration and, if the TSDR printout or copy of the information 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 (b) TESS along with a copy of records from the Trademark Assignment Recordation Branch database showing and assignment to the current owner of the registration.
NOTES:
1. 37 C.F.R. § 2.122(c) SeePoly-America, L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1510 n.5 (TTAB 2017) (exhibits to the petition for cancellation consisting of copies of patents, photographs of certain goods identified in the involved registrations, packaging for certain of the identified goods and Internet materials not considered); Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2016 n.5 (TTAB 2014) (materials attached to answer not considered).
2. See 37 C.F.R. § 2.122(c) and 37 C.F.R. § 2.122 (d)(1).
3. Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 n.4 (TTAB 2008). Cf. Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1867 n.3 (TTAB 2016) ("The mere listing of an application number in the electronic record does not make that application of record."); Melwani v. Allegiance Corp., 97 USPQ2d 1537, 1539-40 (TTAB 2010) (pleaded registrations not of record where registration numbers were inputted in the ESTTA protocol but copies of registrations were not attached as exhibits).
704.05(b) Exhibits to Briefs
Exhibits and other evidentiary materials attached to a party's brief on the case can be given no consideration unless they were properly made of record during the time for taking testimony. [ Note 1.]
Evidence which was timely filed during the parties’ trial periods need not and should not be resubmitted with a party’s brief. [ Note 2.]
If, after the close of the time for taking testimony, a party discovers new evidence that it wishes to introduce in its behalf, the party may file a motion to reopen its testimony period. However, the moving party must show not only that the proposed evidence has been newly discovered, but also that it could not have been discovered earlier through the exercise of reasonable diligence. See TBMP § 509.01(b).
NOTES:
1. See, e.g., Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1116 (TTAB 2009); Bass Pro Trademarks LLC v. Sportsman Warehouse, Inc., 89 USPQ2d 1844, 1848 (TTAB 2008); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1955 (TTAB 2008); Starbucks U.S. Brands LLC v. Ruben, 78 USPQ2d 1741, 1748 (TTAB 2006) (excerpts from novel not considered); Maytag Co. v. Luskin's, Inc., 228 USPQ 747, 748 n.5 (TTAB 1986) (third-party registrations attached to brief not considered); Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1009 n.18 (TTAB 1984) (copy of Canadian Opposition Board decision attached to brief not considered); BL Cars Ltd. v. Puma Industria de Veiculos S/A, 221 USPQ 1018, 1019 (TTAB 1983); Plus Products v. Physicians Formula Cosmetics, Inc., 198 USPQ 111, 112 n.3 (TTAB 1978); Astec Industries, Inc. v. Barber-Greene Co., 196 USPQ 578, 580 n.3 (TTAB 1977); Angelica Corp. v. Collins & Aikman Corp., 192 USPQ 387, 391 n.10 (TTAB 1976). See also L. Leichner (London) Ltd. v. Robbins, 189 USPQ 254, 255 (TTAB 1975); American Crucible Products Co. v. Kenco Engineering Co., 188 USPQ 529, 531 (TTAB 1975); Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588, 589 n.1 (TTAB 1975), aff'd, 534 F.2d 915, 189 USPQ 693 (CCPA 1976); Curtice-Burns, Inc. v. Northwest Sanitation Products, Inc., 185 USPQ 61, 61 n.2 (TTAB 1975), aff'd, 530 F.2d 1396, 189 USPQ 138 (CCPA 1976); Ortho Pharmaceutical Corp. v. Hudson Pharmaceutical Corp., 178 USPQ 429, 430 n.3 (TTAB 1973).
Compare, Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405 (TTAB 1998) (dictionary definitions attached to applicant’s brief were the proper subject of judicial notice); Plus Products v. Natural Organics, Inc., 204 USPQ 773, 775 n.5 (TTAB 1979) (evidence which had been timely filed was not objectionable when a reproduction of the evidence was later attached to a trial brief) with TBMP § 704.12 regarding judicial notice.
2. See Corporacion Habanos SA v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1092 (TTAB 2012) (not necessary to submit duplicates of material that is already in record);Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90 USPQ 2d 1112, 1116 (TTAB 2009); Life Zone, Inc. v. Middleman Group, Inc., 87 USPQ2d 1953, 1955 n.4 (TTAB 2008) (attaching previously-filed evidence to a brief is neither a courtesy nor a convenience to the Board).
704.06 Statements in Pleadings or Briefs
704.06(a) Statements in Pleadings
Statements made in pleadings cannot be considered as evidence on behalf of the party making them; such statements must be established by competent evidence during the time for taking testimony. [ Note 1.]
However, statements in pleadings may have evidentiary value as admissions against interest by the party that made them. [ Note 2.]
NOTES:
1. Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1725 n.7 (TTAB 2010) (assertions in answer not evidence unless supported by evidence introduced at trial or except as admission against interest); Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545, 1547 n.6 (TTAB 1990), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); Times Mirror Magazines, Inc. v. Sutcliff, 205 USPQ 656, 662 (TTAB 1979) (statements in answer referring to sales of applicant's magazines were not considered).
2. See Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1725 n.7 (TTAB 2010) (assertions in answer not evidence unless supported by evidence introduced at trial or except as admission against interest); Maremont Corp. v. Air Lift Co., 463 F.2d 1114, 174 USPQ 395, 396 n.4 (CCPA 1972) (pleadings in prior proceeding available as evidence, although not conclusive evidence, against the pleader); Bakers Franchise Corp. v. Royal Crown Cola Co., 404 F.2d 985, 160 USPQ 192, 193 (CCPA 1969) (admission contained in pleading of one action may be evidence against pleader in another action); Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545, 1548 n.6 (TTAB 1990) (pleadings have evidentiary value only to the extent they contain opponent’s admissions against interest), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); Litton Business Systems, Inc. v. J. G. Furniture Co., 196 USPQ 711, 714 (TTAB 1977) (admissions in answer regarding meaning of mark); Brown Co. v. American Stencil Manufacturing Co., 180 USPQ 344, 345 n.5 (TTAB 1973) (applicant having admitted in its answer that it did not use mark prior to a certain date was estopped from later contending that it has an earlier date of use).
704.06(b) Statements in Briefs
Factual statements made in a party's brief on the case can be given no consideration unless they are supported by evidence properly introduced at trial. Statements in a brief have no evidentiary value, except to the extent that they may serve as admissions against interest by the party that made them. [ Note 1.]
NOTES:
1. See, e.g., Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1725 n.7 (TTAB 2010) (assertions in brief not evidence unless supported by evidence introduced at trial or except as admission against interest); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008) (broad and general statements in brief regarding marketing experience not supported by any evidence and cannot be accorded evidentiary value or consideration); Jansen Enterprises, Inc. v. Rind, 85 USPQ2d 1104, 1110 (TTAB 2007) (no consideration given to reference in brief to third-party registrations not of record); Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1328 (TTAB 2007) (lack of evidence undercuts contentions in brief); DC Comics v. Pan American Grain Manufacturing Co., 77 USPQ2d 1220, 1224 n.5 (TTAB 2005) (by acknowledging in its brief on the case that a label was provided to opposer by applicant, applicant stipulated to its authenticity and to its admission into the record); Baseball America, Inc. v. Powerplay Sports, Ltd., 71 USPQ2d 1847, 1847 (TTAB 2004) (factual assertions in brief not supported by competent evidence not considered); Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1462 n.5 (TTAB 1992) (additional revenue figures provided in trial brief not considered); Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545, 1547 n.6 (TTAB 1990) (reliance in brief on unproven statements made in application), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); BL Cars Ltd. v. Puma Industria de Veiculos S/A, 221 USPQ 1018, 1019 (TTAB 1983); Abbott Laboratories v. Tac Industries, Inc., 217 USPQ 819, 823 (TTAB 1981) (factual statements regarding certain scientific matter which cannot be deemed to be public knowledge not considered); Hecon Corp. v. Magnetic Video Corp., 199 USPQ 502, 507 (TTAB 1978); Plus Products v. Physicians Formula Cosmetics, Inc., 198 USPQ 111, 112 n.3 and 113 (TTAB 1978).
See also In re Teledyne Indus., Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982) (in absence of evidence in the record, mere argument of counsel cannot rebut prima facie case of functionality); In re Simulations Publications, Inc., 521 F.2d 797, 798, 187 USPQ 147, 148 (CCPA 1975) ("Statements in a brief cannot take the place of evidence.").
Cf. Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1849 (Fed. Cir. 1993) (without copies of relevant documentation including relevant portions of application file, not possible to determine validity of opposer's allegations that applicant took inconsistent position in its application).
704.07 Official Records
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.
- (2) Internet materials may be admitted into evidence under a notice of reliance in accordance with paragraph (g) of this section, in the same manner as a printed publication in general circulation, so long as the date the internet materials were accessed and their source (e.g., URL) are provided.
A party that wishes to introduce an official record in evidence in a Board inter partes proceeding may do so, if the official record is competent evidence and relevant to an issue in the proceeding, by filing a notice of reliance thereon during its testimony period. The notice of reliance must specify the official record and the pages to be read; indicate generally the relevance of the material being offered and associate it with one or more issues in the case; and be accompanied by the official record or a copy thereof whose authenticity is established under the Federal Rules of Evidence. [ Note 1.]
The term "official records" as used in 37 C.F.R. § 2.122(e)(1) refers not to a party's company business records, but rather to the records of public offices or agencies, or records kept in the performance of duty by a public officer. [ Note 2.] These official records are considered self-authenticating, and as such, require no extrinsic evidence of authenticity as a condition to admissibility. [ Note 3.] Electronic versions of applications and registrations printed from the USPTO's databases are official records. [ Note 4.]
For examples of cases concerning the admissibility of specific documents, by notice of reliance, as "official records" under 37 C.F.R. § 2.122(e)(1), see cases cited in the note below. [ Note 5.] For information concerning the admissibility of official records obtained through the Internet, see TBMP § 704.08.
For information concerning establishing the authenticity, under the Federal Rules of Evidence, of an official record, see Fed. R. Evid. 901(a), Fed. R. Evid. 901(b)(7), and Fed. R. Evid. 902(4). The latter rule provides, in effect, that extrinsic evidence of authenticity as a condition precedent to admissibility is not required with respect to a properly certified copy of an official record, and describes the requirements for proper certification. However, a copy of an official record of the USPTO need not be certified to be offered in evidence by notice of reliance. [ Note 6.]
In lieu of the actual "official record or a copy thereof," the notice of reliance may be accompanied by an electronically generated document (or a copy thereof) which is the equivalent of the official record, and whose authenticity is established under the Federal Rules of Evidence. [ Note 7.] Cf. TBMP § 704.08.
Although official records may be made of record by notice of reliance under 37 C.F.R. § 2.122(e), it is not mandatory that they be introduced in this manner. They may, alternatively, be made of record by appropriate identification and introduction during the taking of testimony, or by stipulation of the parties. [ Note 8.] These latter two methods may also be used to introduce types of official records that are not admissible by notice of reliance under 37 C.F.R. § 2.122(e). [ Note 9.]
For information concerning the raising of objections to notices of reliance and materials filed thereunder, see TBMP § 533 and TBMP § 707.02.
Materials improperly offered under 37 C.F.R. § 2.122(e) may nevertheless be considered by the Board if the adverse party (parties) does not object to their introduction or itself treats the materials as being of record. [ Note 10.]
NOTES:
1. See 37 C.F.R. § 2.122(e) and 37 C.F.R. § 2.122(g). See also Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1920 (TTAB 2006) (registration not considered because opposer did not explain in notice of reliance what registration pertained to or why it was submitted); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1232 (TTAB 1992) (trademark search reports are not official records); Questor Corp. v. Dan Robbins & Associates, Inc., 199 USPQ 358, 361 n.3 (TTAB 1978) (notice of reliance on official records is untimely when filed after oral hearing), aff'd, 599 F.2d 1009, 202 USPQ 100 (CCPA 1979); Mack Trucks, Inc. v. California Business News, Inc., 223 USPQ 164, 165 (TTAB 1984) (relevance of third-party registrations sufficiently indicated); Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580 n.5 (TTAB 1979) (official records are records prepared by a public officer); Plus Products v. Natural Organics, Inc., 204 USPQ 773, 775 n.5 (TTAB 1979) (submission of duplicate copies of third-party registrations with brief was not untimely where the evidence had been timely filed during course of proceeding); May Department Stores Co. v. Prince, 200 USPQ 803, 805 n.1 (TTAB 1978) (untimely notice of reliance on official records filed after expiration of testimony period not considered).
2. See Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d 1640, 1642-43 (Fed. Cir. 2016) (business record exception applied to personal check with preprinted address); Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1929 (TTAB 2009); Hiraga v. Arena, 90 USPQ2d 1102, 1105 (TTAB 2009) (company invoices not official records); 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.3 (TTAB 2007) (opposer’s file copy of documents from Board proceeding, such as applicant’s opposition brief to opposer's summary judgment motion, do not constitute official records); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1233 (TTAB 1992) (party's own file copies of documents from a Board proceeding are not official records); Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580 n.5 (TTAB 1979) (official records are records prepared by a public officer). See also Fed. R. Evid. 902(4).
3. See Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580 n.5 (TTAB 1979).
4. See Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1352 n.13 (TTAB 2014) (third-party applications printed from USPTO’s electronic database admissible under notice of reliance as official records; status and title copies not required), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. Oct. 10, 2014); Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1217, 1219 (TTAB 2011) (electronic versions of the registrations printed from USPTO databases, showing the URL and date they were printed, are official records); Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1038 (TTAB 2010) (the Office's files are in electronic form and accessible to all via the Internet, and to that extent they are both official records and in general circulation).
5. Southwestern Management, Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1013 (TTAB 2015) ("Proclamation of Delmonico’s Day of Mayor Rudolph Giuliani" found on the wall of party’s restaurant at the time the party purchased the business – no; listing of telephone area codes published online by North American Numbering Plan Administration - yes), aff’d, 652 F. App’x 917 (Fed. Cir. 2016) (mem.); Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1108 n.14 (TTAB 2015) (sales history reports – no, however, because non-offering party treated as being of record, Board construed exhibit as having been stipulated into the record by the parties); United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1046-47 (TTAB 2014) (certificate of incorporation – yes); Coach Services Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1603 n.2 (TTAB 2010) (corporate annual reports not printed from the Internet – no), aff’d-in-part, rev’d-in-part and remanded on other grounds, 668 F.3d 1356, 101 USPQ2d 1713, 1718 (Fed. Cir. 2012) (print versions of annual reports - no); Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1826 (TTAB 2010) (applicant's copies of legal briefs that do not reflect they were received by court -- no), aff’d on other grounds, Creative Arts by Calloway, LLC v. Brooks, No. 09-cv-10488 (S.D.N.Y. Dec. 27, 2012), dismissed, slip op. No. 13-147 (2d Cir. March 7, 2013); Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1929 (TTAB 2009) (printouts of abandoned applications obtained from Trademark Status and Document Retrieval (TSDR) database, formerly Trademark Document Retrieval (TDR) database - yes); UMG Recordings, Inc. v. Charles O’Rourke, 92 USPQ2d 1042, 1045 (TTAB 2009) (trademark application file -- yes); Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1118 (TTAB 2009) (office actions from trademark application and patent application from USPTO files -- yes); Hiraga v. Arena, 90 USPQ2d 1102, 1105 (TTAB 2009) (United States Postal Service form completed by publisher/mailer of catalogues with "no official markings or signature" -- no); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1485 (TTAB 2007) (copies of registration from USPTO’s electronic records -- yes); Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1632 (TTAB 2007) (annual reports, financial statements, advertising invoices and other advertising documents -- no); Hard Rock Café International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1508 (TTAB 2000) (copy of Board's decision on summary judgment in prior opposition -- yes; purported copy of brief in support of summary judgment motion in prior proceeding which did not reflect that it was received by the Board but appeared to be merely applicant's file copy of the document -- no); Riceland Foods Inc. v. Pacific Eastern Trading Corp., 26 USPQ2d 1883, 1884 n.3 (TTAB 1993) (trademark search report -- no); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1232 (TTAB 1992) (trademark search reports -- no); Burns Philip Food Inc. v. Modern Products Inc., 24 USPQ2d 1157, 1159 n.3 (TTAB 1992) (trademark search report -- no; third-party registrations -- yes), aff'd, 1 F.3d 1252, 28 USPQ2d 1687 (Fed. Cir. 1993); Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 906 n.5 (TTAB 1985) (copy of cancellation proceeding file -- yes; party's file copies of documents filed in the USPTO -- no); Cadence Industries Corp. v. Kerr, 225 USPQ 331, 332 n.3 (TTAB 1985) (letters between counsel for parties, and list of party's licensees -- no); Mack Trucks, Inc. v. California Business News, Inc., 223 USPQ 164, 165 (TTAB 1984) (third-party registrations -- yes); Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 74 n.2 (TTAB 1983) (portions of an agreement between applicant and a third party, press release, list of foreign trademark registrations, and a shipping document for applicant's product -- no); Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580 n.5 (TTAB 1979) (copy of letter from Amtrak to applicant congratulating applicant for having an appointment as an Amtrak agent, copy of a "Passenger Sales Agency Agreement" between the International Air Transport Association and applicant, etc. -- no); Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881, 883 (TTAB 1979) (brochures and other promotional literature -- no); May Department Stores Co. v. Prince, 200 USPQ 803, 805 n.1 (TTAB 1978) (certified copies of corporate records maintained by Secretary of State of Missouri -- yes); Hovnanian Enterprises, Inc. v. Covered Bridge Estates, Inc., 195 USPQ 658, 663 n.3 and 664 (TTAB 1977) (plat plan, deed of realty, and confirmatory assignment -- not admissible by notice of reliance as official record because not properly authenticated); Quaker Oats Co. v. Acme Feed Mills, Inc., 192 USPQ 653, 654 n.9 (TTAB 1976) (third-party registrations -- yes); Harzfeld's, Inc. v. Joseph M. Feldman, Inc., 184 USPQ 692, 693 n.4 (TTAB 1974) (file history of party's registration -- yes); Jetzon Tire & Rubber Corp. v. General Motors Corp., 177 USPQ 467, 468 n.3 (TTAB 1973) (drawings from federal trademark applications -- yes); American Optical Corp. v. American Olean Tile Co., 169 USPQ 123, 125 (TTAB 1971) (certificate of good standing from a United States district court -- yes).
6. See 37 C.F.R. § 2.122(e).
7. See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1232 (TTAB 1992).
8. See Pass & Seymour, Inc. v. Syrelec, 224 USPQ 845, 847 (TTAB 1984); Hayes Microcomputer Products, Inc. v. Business Computer Corp., 219 USPQ 634, 637 n.3 (TTAB 1983); Regent Standard Forms, Inc. v. Textron Inc., 172 USPQ 379, 380-81 (TTAB 1971).
9. See, e.g., Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 74 n.2 (TTAB 1983) (an agreement between applicant and a third party, press releases, and a shipping document, although not acceptable for a notice of reliance, may be introduced in connection with competent testimony); Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1267, 1270 n.5 (TTAB 1989) (since adverse party did not object to notice of reliance on annual reports, treated as stipulated into the record), aff'd, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990), Minnesota Mining & Manufacturing Co. v. Stryker Corp., 179 USPQ 433, 434 (TTAB 1973) (while annual reports and booklets and brochures do not constitute printed publications and are therefore not appropriate for introduction by notice of reliance, they may be introduced in connection with testimony of someone who is familiar with them and can explain the nature and use of such materials).
10. See, e.g., U.S. West Inc. v. BellSouth Corp., 18 USPQ2d 1307, 1309 n.4 (TTAB 1990) (improper subject matter but adverse party expressly agreed to its authenticity and accuracy); Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1267, 1270 n.5 (TTAB 1989) (neither party objected to the notice of reliance on annual reports by the other); Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996, 1997 n.2 (TTAB 1986) (improper subject matter and improper rebuttal considered where no objection was raised); Jeanne-Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58, 59 n.3 and 4 (TTAB 1984) (improper subject matter deemed stipulated into record where no objection was raised); Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580 n.5 (TTAB 1979) (improper subject matter deemed stipulated into record where adverse party did not object and specifically referred to the matter in its brief); Plus Products v. Natural Organics, Inc., 204 USPQ 773, 775 n.5 (TTAB 1979) (untimely notice of reliance filed prior to testimony period considered where no objection was raised and error was not prejudicial). Cf. Original Appalachian Artworks Inc. v. Streeter, 3 USPQ2d 1717, 1717 n.3 (TTAB 1987) (improper subject matter excluded where although there was no objection, no agreement could be inferred) and Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881, 883 (TTAB 1979) (improper subject matter excluded, although adverse party did not object to the material).
704.08 Printed Publications
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.
- (2) Internet materials may be admitted into evidence under a notice of reliance in accordance with paragraph (g) of this section, in the same manner as a printed publication in general circulation, so long as the date the internet materials were accessed and their source (e.g., URL) are provided.
704.08(a) Traditional Printed Publications
Certain types of printed publications may be introduced into evidence in a Board inter partes proceeding by notice of reliance. Specifically, 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, if the publication is competent evidence and relevant to an issue in the proceeding, may be introduced in evidence by filing a notice of reliance thereon during the testimony period of the offering party. [ Note 1.] The notice must specify the printed publication, including information sufficient to identify the source and the date of the publication, and the pages to be read; indicate generally the relevance of the material being offered and associate it with one or more issues in the case; and be accompanied by the printed publication or a copy of the relevant portion thereof. [ Note 2.]
In lieu of the actual "printed publication or a copy of the relevant portion thereof," the notice of reliance may be accompanied by an electronically generated document which is the equivalent of the printed publication or relevant portion, as, for example, by a printout from the LexisNexis or Westlaw computerized library of an article published in a newspaper or magazine of general circulation. [ Note 3.]
In case of reasonable doubt as to whether printed publications submitted by notice of reliance under 37 C.F.R. § 2.122(e) are "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 the proceeding, the burden of showing that they are so available lies with the offering party. [ Note 4.] The offering party need only make such a showing if its adversary has challenged its submission; it need not make such a showing as part of its original submission.
For examples of cases concerning the admissibility of specific materials, by notice of reliance, as "printed publications" under 37 C.F.R. § 2.122(e), see cases cited in the note below. [ Note 5.]
Printed publications made of record by notice of reliance under 37 C.F.R. § 2.122(e) are admissible and probative only for what they show on their face, not for the truth of the matters contained therein, unless a competent witness has testified to the truth of such matters. [ Note 6.]
Although the types of printed publications described above may be made of record by notice of reliance under 37 C.F.R. § 2.122(e), they may, alternatively, be made of record by appropriate identification and introduction during the taking of testimony, or by stipulation of the parties. [ Note 7.] These latter two methods may also be used for the introduction of printed publications that are not admissible by notice of reliance under 37 C.F.R. § 2.122(e). [ Note 8.]
For information concerning the raising of objections to notices of reliance and materials filed thereunder, see TBMP § 533 and TBMP § 707.02.
Materials improperly offered under 37 C.F.R. § 2.122(e) may nevertheless be considered by the Board if the adverse party (parties) does not object to their introduction or itself treats the materials as being of record. [ Note 9.]
The party who submits printed publications must ensure that the evidence is legible and have been entered into the record. [ Note 10.] The submitting party must also ensure that such evidence is complete. [ Note 11.]
NOTES:
1. 37 C.F.R. § 2.122(e) and 37 C.F.R. § 2.122(g) See Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996, 1997 n.2 (TTAB 1986) (while subject matter may be of interest to the general public such materials are not necessarily in general circulation); Mack Trucks, Inc. v. California Business News, Inc., 223 USPQ 164, 165 n.5 (TTAB 1984) (objection that applicant failed to indicate relevance of materials overruled); Questor Corp. v. Dan Robbins & Associates, Inc., 199 USPQ 358, 361 n.3 (TTAB 1978) (notice of reliance on printed material filed after oral hearing untimely), aff'd, 599 F.2d 1009, 202 USPQ 100 (CCPA 1979); Plus Products v. Natural Organics, Inc., 204 USPQ 773, 775 n.5 (TTAB 1979) (duplicates of printed publications submitted with brief which had been properly filed by notice of reliance during testimony period considered); Glamorene Products Corp. v. Earl Grissmer Co., 203 USPQ 1090, 1092 n.5 (TTAB 1979) (rule provides safeguard that party against whom evidence is offered is readily able to corroborate or refute authenticity of what is proffered); Wagner Electric Corp. v. Raygo Wagner, Inc., 192 USPQ 33, 36 n.10 (TTAB 1976) (plaintiff's catalogs and house publications not considered because it was not shown they are "available to the general public in libraries or in general circulation;" advertisements permitted if publication in which they appeared and dates are provided to allow party to verify authenticity); Jetzon Tire & Rubber Corp. v. General Motors Corp., 177 USPQ 467, 468 n.3 (TTAB 1973) (publication shown to be available in public library properly submitted under 37 C.F.R. § 2.122(e), even though it may constitute hearsay or be of dubious relevance).
2. See 37 C.F.R. § 2.122(e) and 37 C.F.R. § 2.122(g). See also Panda Travel Inc. v. Resort Option Enterprises Inc., 94 USPQ2d 1789, 1793 (TTAB 2009) (statement that documents are introduced to show use of opposer’s marks sufficient to indicate relevance); Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1857 (TTAB 2007) (article from a trade magazine is admissible under 37 C.F.R. § 2.122(e) because "[o]n its face, it identifies the publication and the date published"); Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1813 (TTAB 2005) (general statement of relevance sufficient for a collection of materials), rev’d on other grounds, slip op. No. 05-2037 (D.D.C. Apr. 3, 2008); Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1721 n.50 (TTAB 1999) (excerpts that were unidentified as to either source or date were not considered, as the extent to which such material is genuine and available to the public could not be ascertained), rev'd on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009); Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405 (TTAB 1998) (finding it sufficient that copies of the excerpted articles contained notations either on the copies themselves or in the notice of reliance as to the source and date of the copied articles, but noting that a proffered excerpt from a newspaper or periodical is lacking in foundation and, thus, is not admissible as evidence to the extent that it is an incomplete or illegible copy, is unintelligible because it is in a language other than English, or is not fully identified as to the name and date of the published source); Original Appalachian Artworks Inc. v. Streeter, 3 USPQ2d 1717, 1717 n.3 (TTAB 1987) (printed advertisement not identified with the specificity required to be considered a printed publication); Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1291 (TTAB 1986) (notice of reliance received without appended copy of printed publication).
3. SeeBarclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1166 (TTAB 2017) (citing Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1759 (TTAB 2013) (Board "routinely accepts printouts of articles obtained from the LexisNexis database, when filed under notice of reliance, so long as the date and source of each article are clear.")), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992); International Association of Fire Chiefs, Inc. v. H. Marvin Ginn Corp., 225 USPQ 940, 942 n.6 (TTAB 1985) (NEXIS printout of excerpted stories published in newspapers, magazines, etc. are admissible because excerpts identify their dates of publication and sources and since complete reports, whether through the same electronic library or at a public library, are available for verification), rev'd on other grounds, 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
Cf. In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1860 (Fed. Cir. 1987) (electronic excerpts are not hearsay because articles were not used to support the truth of the statements therein but to show descriptive usage of term); R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 174-75 (TTAB 1985) (printouts from databases which themselves comprise abstracts or syntheses of published documents unlike the actual text of the documents, are hearsay as to the context of a term).
4. See Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1217-1218 (TTAB 2011) ("Certainly if these materials are in general circulation it was incumbent on plaintiff to show this in response to defendant's objection."); Glamorene Products Corp. v. Earl Grissmer Co., 203 USPQ 1090, 1092 n.5 (TTAB 1979) (private promotional literature is not presumed to be publicly available within the meaning of the rule).
5. Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1165 (TTAB 2017) (financial reports generally no, but financial report included as a segment of a newswire service report from Lexis/Nexis database - yes, if date and source of each article is clear; press releases - no); Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1506 n.185 (TTAB 2017) (articles now available only through subscription to The New York Times archives – yes), appeal dismissed per stipulation, No. 17-00345 (E.D. Va. August 24, 2017); Swatch AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463, 1466 (TTAB 2013) (magazine article explaining the results of a consumer brand awareness survey – yes), aff’d, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015); Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1929 (TTAB 2009) (annual reports - no; opposer's file copies of financial reports submitted to SEC - no); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009) (foreign publications without a showing that publications are in general circulation in the United States - no; Spanish language publication shown to be in general circulation in the United States - yes; press clippings - no; distribution of in-house publications/catalogs and auction catalogs to retailers, trade shows, guitar clinics and individuals upon request does not constitute "general circulation"); Hiraga v. Arena, 90 USPQ2d 1102, 1104 (TTAB 2009) (invoices and annual catalog - no); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1956-59 (TTAB 2008) (brochures, periodic newsletters, materials used in seminars and conferences showing topics of discussion, recently created marketing materials, materials used in radio ads and interviews, testimonials from customers in affidavit form - no); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1886, n.6 (TTAB 2008) (letters and emails - no); Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007) (excerpt from wine atlas - yes; certificate awarded to defendant from Italian government - no; copy of disciplinary rules governing wine production in geographic area - no); Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1632 (TTAB 2007) (annual reports, financial statements, advertising invoices and other advertising documents - no); Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1500 (TTAB 2005) (opposer’s newsletters and brochures - no); Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1722 n.54 (TTAB 1999) (advertisements in newspapers or magazines available to the general public in libraries or in general circulation - yes), rev’d, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009); Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1403 (TTAB 1998) (press releases, press clippings, studies prepared for a party, affidavits or declarations, or product information - no); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1232 n.5 (TTAB 1992) (trademark search reports - no); Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1267, 1270 n.5 (TTAB 1989), aff'd, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990) (annual reports - no); Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996, 1997 n.2 (TTAB 1986) (conference papers, dissertations, and journal papers - no); Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 74 n.2 (TTAB 1983) (press releases-- no); Jeanne-Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58, 59 n.4 (TTAB 1984) (annual reports - no); Logicon, Inc. v. Logisticon, Inc., 205 USPQ 767, 768 n.6 (TTAB 1980) (annual report even if in some libraries, or available on request - no; magazine articles - yes); Glamorene Products Corp. v. Earl Grissmer Co., 203 USPQ 1090, 1092 n.5 (TTAB 1979) (promotional literature - no); Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881, 883 (TTAB 1979) (promotional literature - no); Wagner Electric Corp. v. Raygo Wagner, Inc., 192 USPQ 33, 36 n.10 (TTAB 1976) (catalogs and other house publications - no); Andrea Radio Corp. v. Premium Import Co., 191 USPQ 232, 234 (TTAB 1976) (annual reports, promotional brochures, price list, reprints of advertisements, and copies of advertising mats - no); Manpower, Inc. v. Manpower Information Inc., 190 USPQ 18, 21 (TTAB 1976) (telephone directory pages, indexes from United States Code Annotated, and dictionary pages - yes); Litton Industries, Inc. v. Litronix, Inc., 188 USPQ 407, 408 n.5 (TTAB 1975) (annual reports - no); Exxon Corp. v. Fill-R-Up Systems, Inc., 182 USPQ 443, 445 (TTAB 1974) (credit card applications, handouts, and flyers - no; articles from trade publications and other magazines - yes); Minnesota Mining & Manufacturing Co. v. Stryker Corp., 179 USPQ 433, 434 (TTAB 1973) (annual reports, product booklets, and product brochures - no); Ortho Pharmaceutical Corp. v. Hudson Pharmaceutical Corp., 178 USPQ 429, 430 n.2 (TTAB 1973) (article from "Memoirs of the University of California" - no, since publication not shown to be available to the general public).
6. See, e.g., Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118 USPQ2d 1392, 1399 n.65 (TTAB 2016) (telephone directory listings themselves are not hearsay; while the Yellow Pages display advertisements may not be considered for the truth of the matters asserted therein, they do show on their face that the public may have been exposed to the advertisements); City Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1672 (TTAB 2013) (testimony failed to expand the probative value of business brochure prepared by third-party; document is admissible solely for what it shows on its face and cannot be considered to prove the truth of any matter stated therein); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1734 n.8 (TTAB 2012) (noting that printed publications submitted in a foreign language without translations are of limited probative value); Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1827 (TTAB 2010) (truth of matters asserted in printed publications not considered; printed publications considered as showing continued consumer exposure of opposer's mark in connection with opposer's name), aff’d on other grounds , Creative Arts by Calloway, LLC v. Brooks, No. 09-cv-10488 (S.D.N.Y. Dec. 27, 2012), dismissed, slip opNo. 13-147 (2d Cir. March 7, 2013); Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1037 n.14 (TTAB 2010); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1117 n.7 (TTAB 2009) (printed publications probative only for what they show on their face, not for the truth of the matters contained therein, unless a competent witness has testified to the truth of such matters); 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.2 (TTAB 2007); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2008) (newspaper article probative only for what it shows on its face, not for the truth of the matters contained therein); In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1860 (Fed. Cir. 1987) (articles are not used to support the truth of the statements therein but to show descriptive usage of term); Gravel Cologne, Inc. v. Lawrence Palmer, Inc., 469 F.2d 1397, 176 USPQ 123, 123 (CCPA 1972) (advertisement from newspaper only showed promotion of the product on the day the publication issued); Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1267, 1270 n.5 (TTAB 1989) (annual report considered stipulated into evidence only for what it showed on its face), aff'd, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990); Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1721 n.50 (TTAB 1999) (evidence of the manner in which the term is used in the articles and of the fact that the public has been exposed to the articles and may be aware of the information contained therein), rev’d, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009); Logicon, Inc. v. Logisticon, Inc., 205 USPQ 767, 768 n.6 (TTAB 1980) (magazine article limited to what it showed on its face); Volkswagenwerk AG v. Ridewell Corp., 201 USPQ 410 (TTAB 1979) (advertisement submitted with notice of reliance only showed that advertisement appeared on that date in that journal and does not show customer familiarity with marks nor actual sales); Food Producers, Inc. v. Swift & Co., 194 USPQ 299, 301 n.2 (TTAB 1977) (publications limited to their face value because no opportunity to ascertain basis for information or confront and cross-examine individuals responsible therefor); Wagner Electric Corp. v. Raygo Wagner, Inc., 192 USPQ 33, 36 n.10 (TTAB 1976) (advertisements were only probative of fact that opposer advertised its goods under the mark in the publications on those dates); Litton Industries, Inc. v. Litronix, Inc., 188 USPQ 407, 408 n.5 (TTAB 1975) (even if annual reports were admissible as printed publications, they would only be probative of fact that they are opposer's annual reports for the years shown thereon); Otis Elevator Co. v. Echlin Manufacturing Co., 187 USPQ 310, 312 n.4 (TTAB 1975) (magazine article showed only that the goods under the mark were the subject of the article in that publication); Exxon Corp. v. Fill-R-Up Systems, Inc., 182 USPQ 443, 445 (TTAB 1974) (articles from trade publications admissible to show that they appeared in the publication on a certain date and that they contained certain information, but not that the information is true).
7. See Pass & Seymour, Inc. v. Syrelec, 224 USPQ 845, 846 (TTAB 1984) (objection on ground that no notice of reliance was filed was not well taken where party had introduced the materials in connection with testimony); Hayes Microcomputer Products, Inc. v. Business Computer Corp., 219 USPQ 634, 635 n.3 (TTAB 1983) (same).
8. See, e.g., Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1267, 1270 n.5 (TTAB 1989) (annual reports), aff'd, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990); Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 74 n.2 (TTAB 1983) (copies of agreements, press releases, shipping documents and foreign registrations); Minnesota Mining & Manufacturing Co. v. Stryker Corp., 179 USPQ 433, 434 (TTAB 1973) (annual reports, product booklets and brochures).
9. See, e.g., Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1108 n.14 (TTAB 2015) (because non-offering party treated sales history reports as being of record, Board construed exhibit as having been stipulated into the record by the parties); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1886 n.6 (TTAB 2008) (letters and emails considered as stipulated into the record because opposer treated materials as being of record, setting forth in its brief that such materials are part of the evidence of record); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1485 (TTAB 2007) (Internet evidence considered because party stipulated at deposition that it would not contest the authenticity of web pages and treated the evidence as being of record, stating in its brief that the Internet evidence is part of other party’s evidence of record); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1266 (TTAB 2003) (documents construed as being offered under 37 C.F.R. § 2.122(e) and deemed to be of record despite lack of information as to source and date since applicant did not object to the materials and moreover treated them as of record; however, probative value of such materials necessarily limited due to lack of information as to source and date); Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 n.3 (TTAB 1999) (plaintiff did not object to introduction of curriculum vitae, advertising literature, printout of page from website by notice of reliance and treated materials as of record); U.S. West Inc. v. BellSouth Corp., 18 USPQ2d 1307, 1309 n.4 (TTAB 1990) (opposer's improper subject matter considered where applicant expressly agreed to its authenticity and accuracy); Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1267, 1270 n.5 (TTAB 1989) (neither party objected to the annual reports submitted by the other party), aff'd, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990); Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996, 1997 n.2 (TTAB 1986) (matter improper for notice of reliance and for rebuttal considered); Jeanne-Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58 (TTAB 1984) (annual reports and responses to document production request considered); Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580 n.5 (TTAB 1979) (various documents constituting improper subject matter considered where no objection was raised and adverse party specifically addressed the materials in its brief); Plus Products v. Natural Organics, Inc., 204 USPQ 773, 775 n.5 (TTAB 1979) (untimely, but no objection or prejudice).
Cf. Original Appalachian Artworks Inc. v. Streeter, 3 USPQ2d 1717, 1717 n.3 (TTAB 1987) (improper subject matter excluded where adverse party, while not objecting to the improperly offered materials, did not treat the materials as being of record); Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881, 883 (TTAB 1979) (improper subject matter excluded, although no objection).
10. 37 C.F.R. § 2.126(a)(2); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016) ("The Office is adding new § 2.126(a)(2) to require that exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible. The amendment codifies the use of electronic filing."). See, e.g., RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1806 n.16 (TTAB 2018) ("Illegible evidence is given no consideration."). See also Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013) (citing Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) ("It is reasonable to assume that it is opposer’s responsibility to review the documents it submits as evidence to ensure that such submissions meet certain basic requirements, such as that they are legible … .")), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1351-52 (TTAB 2014) (duty of the party making submissions to the Board via ESTTA to ensure that they have been entered into the trial record), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. Oct. 10, 2014).
11. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1506 n.185 (TTAB 2017) (opposer failed to introduce full copies of the articles into evidence in its rebuttal notice of reliance so Board relied on copies submitted with applicant’s notices of reliance), appeal dismissed per stipulation, No. 17-00345 (E.D. Va. August 24, 2017).
704.08(b) Internet Materials
37 C.F.R. § 2.122(e) Printed publications and official records.
- (2) Internet materials may be admitted into evidence under a notice of reliance in accordance with paragraph (g) of this section, in the same manner as a printed publication in general circulation, so long as the date the internet materials were accessed and their source (e.g., URL) are provided.
In Safer, Inc. v. OMS Investments, Inc,, 94 USPQ2d 1031 (TTAB 2010) ("Safer"), the Board changed its practice regarding Internet evidence, holding that if a document obtained from the Internet identifies its date of publication or date that it was accessed and printed, and its source (e.g., the URL), it may be admitted into evidence pursuant to a notice of reliance in the same manner as a printed publication in general circulation in accordance with 37 C.F.R. § 2.122(e). [ Note 1.] Effective January 14, 2017, the Board amended 37 C.F.R. § 2.122(e) to add a new subsection (2) to codify the Board’s decision in Safer. [ Note 2.]
A document obtained from the Internet must be publicly available; that is, it must identify its date of publication or the date it was accessed and printed, and its source (URL). [ Note 3.] As with traditional printed publications submitted by notice of reliance, the propounding party must indicate in the notice of reliance generally the relevance of those materials and associate the materials with one or more issues in the case. [ Note 4.] See TBMP § 704.02 and TBMP § 704.08(a).
Internet documents that may be introduced by notice of reliance include websites, advertising, business publications, annual reports, and studies or reports prepared for or by a party or non-party, as long as they can be obtained through the Internet as publicly available documents. This expands the types of documents that can be introduced by notice of reliance beyond printed publications in general circulation, and means that some Internet documents, such as annual reports that are publicly available, can be made of record by notice of reliance when paper versions of the annual reports are not acceptable as printed publications.
The probative value of Internet documents is limited. They can be used to demonstrate what the documents show on their face. However, documents obtained through the Internet may not be used to demonstrate the truth of what has been printed. A printout from a webpage may have more limitations on its probative value than traditional printed publications. A party may increase the weight the Board will give website evidence by submitting testimony and proof of the extent to which a particular website has been viewed. Otherwise, the document may not be considered to have much probative value.
The nonoffering party may verify the Internet document through the date and source information on the face of the document, and may rebut the probative value of the document by showing that there has been a significant change to the document as submitted by the offering party. Due to the transitory nature of the Internet, the party proffering information obtained from the Internet runs the risk that the website owner may change the information contained therein.
Internet search summaries, which essentially are links to the website pages, are not admissible by notice of reliance. [ Note 5.]
The Board strongly discourages the submission of cumulative evidence. See TBMP § 702.05. The Board has specifically stated that "It is not necessary for the parties to introduce every document obtained from an Internet search especially when it includes duplicative and irrelevant materials." [ Note 6.] Internet documents may be objectionable under Fed. R. Evid. 403 on the ground that they are "needlessly presenting cumulative evidence."
Internet printouts that are otherwise properly authenticated are acceptable to show that the statements contained therein were made or that information was reported, but not to prove the truth of the statements contained therein. [ Note 7.]
NOTES:
1. See, e.g., Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1759 (TTAB 2013) (objection to Internet printouts from petitioner's website showing the dates accessed and printed and URL information on the grounds that petitioner failed to authenticate the documents by testimony overruled), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Coach Services Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1604 n.4 (TTAB 2010) (excerpts from websites promoting the sale of books and software admitted into evidence pursuant to notice of reliance), aff’d-in-part, rev’d-in-part and remanded on other grounds, 668 F.3d 1356, 101 USPQ2d 1713, 1718 (Fed. Cir. 2012); Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1216-19 (TTAB 2011) (detailed discussion of why certain documents, accompanied by adequate authentication, were admissible and why certain other documents, lacking in specifically-addressed authentication elements, were not admissible); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1071 (TTAB 2011) (documents obtained from Internet admitted even though witness did not personally obtain or download documents).
2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016). Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010) overruled the Board’s holding in Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998), that Internet materials are not self-authenticating and are treated differently from articles taken from the LexisNexis database with respect to whether they may be submitted as official records.
3. 37 C.F.R. § 2.122(e)(2). See United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1046-47 (TTAB 2014) (Internet printouts personal to applicant such as invoices and account information not admissible through notice of reliance even if show URLs and dates printed; press releases posted on Internet have become publicly available, thus admissible under notice of reliance); FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1237 (TTAB 2014) (notice of reliance failed to specify the relevance of the voluminous web pages submitted under two exhibits; defect is curable); Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1759 (TTAB 2013) (objection to Internet printouts from petitioner’s website showing the dates accessed and printed and URL information on the grounds that petitioner failed to authenticate the documents by testimony overruled), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (web pages inadmissible for lack of URL and date accessed); Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1216-19 (TTAB 2011) (detailed discussion of why certain documents, accompanied by adequate authentication, were admissible and why certain other documents, lacking in specifically-addressed authentication elements, including absent URL's or dates accessed printed, were not admissible); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1025 (TTAB 2011) (applicant did not indicate the general relevance of opposer’s archival website and such relevance is not clear on the face of the submissions, but applicant may rely on copy of opposer’s website made of record by opposer).
4. 37 C.F.R. § 2.122(g). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016) ("The Office is adding new § 2.122(g) detailing the requirements for admission of evidence by notice of reliance. Section 2.122(g) provides that a notice must indicate generally the relevance of the evidence offered and associate it with one or more issues in the proceeding, but failure to do so with sufficient specificity is a procedural defect that can be cured by the offering party within the time set by Board order. The amendment codifies current case law and Office practice."). See Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1164 (TTAB 2017) (Board applied Trademark Rule 2.122(g) in determining whether descriptions of relevance set forth in the notices of reliance were sufficient); Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc., 123 USPQ2d 1844, 1847 (TTAB 2017) (opposer’s statement of relevance of Internet evidence introduced under notice of reliance acceptable because sufficiently tailored to issues), on appeal, 3:17-CV-02150 (S.D. Cal. October 19, 2017).
5. See Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (search summary inadmissible because it merely offers links to information not otherwise of record); Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1219 (TTAB 2011). Cf.Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1193 (TTAB 2017) (Google results "are not very probative" because they "are very truncated and do not provide us with sufficient information upon which to make a clear finding."), 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); Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1759 (TTAB 2013) (results from search engine introduced by testimony admissible but of limited probative value because they lack sufficient context), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Miller v. Miller, 105 USPQ2d 1615, 1617-18 (TTAB 2013) (search results summary introduced by testimony have probative weight to the extent the results include sufficient information surrounding the term searched to show context, that Miller is a surname, and have been supplemented by other testimony).
6. Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1040 n.19 (TTAB 2010). See also Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1759 (TTAB 2013) (relevant, representative sample of articles obtained from Internet database sufficient and preferred; parties discouraged from submitting all results), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.).
7. See, e.g., Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118 USPQ2d 1392, 1399 n.62 (TTAB 2016) (statements made on website constitute hearsay and cannot be used to establish prior use); Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1759 (TTAB 2013) (search engine results are only probative of what they show on their face, not for the truth of the matters contained therein), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1735 (TTAB 2012) (Internet printouts submitted as exhibits to testimony are not hearsay).
704.08(c) Other Printed Materials
Certain printed publications qualify for submission by notice of reliance under 37 C.F.R. § 2.122(e) because they are considered essentially self-authenticating. [ Note 1.] That is, permanent sources for the publications are identified and the nonoffering party is readily able to verify the authenticity of the documents. [ Note 2.] The Board also deems a document obtained from the Internet that displays a date and its source as presumptively true and genuine. [ Note 3.] Materials that do not fall within 37 C.F.R. § 2.122(e), that is, materials that are not admissible by notice of reliance, may nevertheless be introduced into evidence through the testimony of a person who can clearly and properly authenticate and identify the materials, including identifying the nature, source and date of the materials. [ Note 4.] Trade inscriptions applied to a product or packaging or other materials affixed in the course of business may be self-authenticating. [ Note 5.] Even if properly made of record, however, such materials are only probative of what they show on their face, not for the truth of the matters contained therein, unless a competent witness has testified to the truth of such matters. [ Note 6.]
NOTES:
1. See Swatch AG v. M. Z. Berger & Co., 108 USPQ2d 1463, 1466 (TTAB 2013) (applicant’s objection to article from the magazine Women’s Wear Daily overruled; periodicals are considered self-authenticating pursuant to Fed. R. Evid. 902(6) and may be admitted via notice of reliance), aff’d, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015); Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1857 (TTAB 2007); Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1722 (TTAB 1999), rev'd on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009).
2. See Weyerhaeuser v. Katz, 24 USPQ2d 1230, 1232 (TTAB 1992).
3. 37 C.F.R. § 2.122(e). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963-64 (October 7, 2016) ("The Office is adding new § 2.122(e)(2) permitting admission of internet materials into evidence by notice of reliance and providing requirements for their identification. The amendment codifies current case law and Office practice."), and Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010).
4. See Starbucks U.S. Brands LLC v. Ruben, 78 USPQ2d 1741, 1748 (TTAB 2006) (excerpts taken from Internet websites sought to be introduced during testimony deposition not properly authenticated because witness was not aware of the parameters of the Internet search and was not able to name the individual who conducted the Internet search).
5. See Fed. R. Evid. 902(7); Top Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163, 1167-68 (TTAB 2011) (although deponent failed to authenticate exhibits made up of product packaging, they were found to be self-authenticating).
6. See ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 (TTAB 2012) (hangtag by itself, without any testimony describing how it was used, merely demonstrates that the hangtag existed at some point in time; not that the mark was actually placed on goods or that goods bearing the hangtag were offered for sale in commerce); Top Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163, 1168 (TTAB 2011) (trade designations on materials of limited probative value because they do not establish they were actually used in commerce or the degree of consumer exposure); Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1217, 1220-21 n.14 (TTAB 2011) (plaintiff's own printed publications and printouts from plaintiff's webpage are not evidence of statements made therein); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009) (articles and advertisements considered for whatever they may show on their face, but not for the truth of the matters asserted); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1884 n.8 (TTAB 2006) (publications only admissible for what they show on their face); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1931 n.26 (TTAB 2006) (Lexis/Nexis articles submitted by notice of reliance to demonstrate merchandising activities of applicant and other third parties is inadmissible as hearsay); Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1813 (TTAB 2005) (printed publications and news reports hearsay if offered to prove the truth of the statements made therein, but acceptable to show that the stories have been circulated to the public), rev’d on other grounds, slip op. No. 05-2037 (D.D.C. Apr. 3, 2008); and Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1798 (TTAB 2001) (not evidence of use but may have some probative value to show the meaning of a mark in the same way as third-party registrations).
704.09 Discovery Depositions
37 C.F.R. § 2.120(k) Use of discovery deposition, answer to interrogatory, or admission.
- (1) The discovery deposition of a party or of anyone who at the time of taking the deposition was an officer, director or managing agent of a party, or a person designated by a party pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, may be offered in evidence by an adverse party.
- (2) Except as provided in paragraph (k)(1) of this section, the discovery deposition of a witness, whether or not a party, shall not be offered in evidence unless the person whose deposition was taken is, during the testimony period of the party offering the deposition, dead; or out of the United States (unless it appears that the absence of the witness was procured by the party offering the deposition); or unable to testify because of age, illness, infirmity, or imprisonment; or cannot be served with a subpoena to compel attendance at a testimonial deposition; or there is a stipulation by the parties; or upon a showing that such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used. The use of a discovery deposition by any party under this paragraph will be allowed only by stipulation of the parties approved by the Trademark Trial and Appeal Board, or by order of the Board on motion, which shall be filed when the party makes its pretrial disclosures, unless the motion is based upon a claim that such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used, even though such deadline has passed, in which case the motion shall be filed promptly after the circumstances claimed to justify use of the deposition became known.
- (3)
- (i) A discovery deposition, an answer to an interrogatory, or an admission to a request for admission, or a written initial disclosure, which may be offered in evidence under the provisions of paragraph (k) of this section, may be made of record in the case by filing the deposition or any part thereof with any exhibit to the part that is filed, or a copy of the interrogatory and answer thereto with any exhibit made part of the answer, or a copy of the request for admission and any exhibit thereto and the admission (or a statement that the party from which an admission was requested failed to respond thereto), or a copy of the written initial disclosure, together with a notice of reliance in accordance with § 2.122(g). The notice of reliance and the material submitted thereunder should be filed during the testimony period of the party which files the notice of reliance. An objection made at a discovery deposition by a party answering a question subject to the objection will be considered at final hearing.
- * * * *
- (4) If only part of a discovery deposition is submitted and made part of the record by a party, an adverse party may introduce under a notice of reliance any other part of the deposition which should in fairness be considered so as to make not misleading what was offered by the submitting party. A notice of reliance filed by an adverse party must be supported by a written statement explaining why the adverse party needs to rely upon each additional part listed in the adverse party's notice, failing which the Board, in its discretion, may refuse to consider the additional parts.
- * * * *
- (6) Paragraph (k) of this section will not be interpreted to preclude reading or use of written disclosures or documents, a discovery deposition, or answer to an interrogatory, or admission as part of the examination or cross-examination of any witness during the testimony period of any party.
- (7) When a written disclosure, a discovery deposition, or a part thereof, or an answer to an interrogatory, or an admission, or an authenticated produced document has been made of record by one party in accordance with the provisions of paragraph (k)(3) of this section, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.
- (8) Written disclosures or disclosed documents, requests for discovery, responses thereto, and materials or depositions obtained through the disclosure or discovery process should not be filed with the Board, except when submitted with a motion relating to disclosure or discovery, or in support of or in response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party's testimony period.
The discovery deposition of a party (or of anyone who, at the time of taking the deposition, was an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4) to testify on behalf of a party) may be offered in evidence by any adverse party. [ Note 1.]
Otherwise, the discovery deposition of a witness, whether or not a party, may not be offered in evidence except in the following situations:
- (1) By stipulation of the parties, approved by the Board. [ Note 2.]
- (2) By order of the Board, on motion showing that the person whose deposition was taken is, during the testimony period of the party offering the deposition, dead; or out of the United States (unless it appears that the absence of the witness was procured by the party offering the deposition); or unable to testify because of age, illness, infirmity, or imprisonment; or cannot be served with a subpoena to compel attendance at a testimonial deposition; or that such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used. The motion must be filed when the party makes its pretrial disclosures, unless the motion is based on a claim that such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used, in which case the motion must be filed promptly after the circumstances claimed to justify use of the deposition became known. [ Note 3.]
- (3) If only part of a discovery deposition is submitted and made part of the record by a party entitled to offer the deposition in evidence, an adverse party may introduce under a notice of reliance any other part of the deposition which should in fairness be considered so as to make not misleading what was offered by the submitting party. In such a case, the notice of reliance filed by the adverse party must be supported by a written statement explaining why the adverse party needs to rely on each additional part listed in the adverse party's notice, failing which the Board, in its discretion, may refuse to consider the additional parts. [ Note 4.]
A discovery deposition that may be offered in evidence under 37 C.F.R. § 2.120(k) may be made of record by filing, during the testimony period of the offering party, the deposition or any part thereof with any exhibit to the part that is filed, together with a notice of reliance. [ Note 5.] The notice of reliance must indicate the general relevance of the discovery deposition or any part thereof and associate it with one or more issues in the case. [ Note 6.] When only part of a deposition is relied on, the notice of reliance must specify the part or parts relied on. [ Note 7.] In order to avoid creating an overly large record of irrelevant evidence, parties should, where appropriate, file only those portions of a discovery deposition transcript that are relevant to the pleaded claims, counterclaims, or affirmative defenses. [ Note 8.] See TBMP § 702.05 (Overly Large Records).
When a discovery deposition has been made of record by one party in accordance with 37 C.F.R. § 2.120(k), it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. [ Note 9.] If only part of a discovery deposition has been made of record pursuant to 37 C.F.R. § 2.120(k), that part only may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. If one party has filed a notice of reliance on a discovery deposition or part thereof and an adverse party has based its presentation of evidence on the belief that the deposition or the part thereof is of record, the notice of reliance may not later be withdrawn. [ Note 10.]
A discovery deposition not properly offered in evidence under 37 C.F.R. § 2.120(k) may nevertheless be considered by the Board if the nonoffering party (parties) does not object thereto, or treats the deposition as being of record, or improperly offers a discovery deposition in the same manner. [ Note 11.] The failure to disclose or supplement an initial disclosure to identify a witness does not necessarily preclude the introduction of a discovery deposition of that witness at trial. [ Note 12.] See TBMP § 408.03.
Written disclosures, disclosed documents, requests for discovery, responses thereto, and materials or depositions obtained through the disclosure or discovery process should not be filed with the Board except when submitted (1) with a motion relating to disclosure or discovery; or (2) in support of or response to a motion for summary judgment; or (3) under a notice of reliance during a party's testimony period; or (4) as exhibits to a testimony deposition; or (5) in support of an objection to proffered evidence on the ground that the evidence should have been, but was not, provided in response to a request for discovery. [ Note 13.] See TBMP § 409.
Nothing in 37 C.F.R. § 2.120(k) will be interpreted to preclude the reading or the use of a discovery deposition as part of the examination or cross-examination of any witness during the testimony period of any party. [ Note 14.]
For information concerning the taking of a discovery deposition, and the raising of objections thereto, see TBMP § 404, TBMP § 532, and TBMP § 707.02.
Please Note: Some of the cases cited in this section established principles later codified in former 37 C.F.R. § 2.120(j) which was amended and redesignated as 37 C.F.R. § 2.120(k) effective January 14, 2017, or were decided under rules that were the predecessors to such provisions.
NOTES:
1. 37 C.F.R. § 2.120(k)(1). See Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1427 (TTAB 1993) (deponent was no longer an officer or director at time his deposition was taken); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1325 (TTAB 1992) (same); First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1630 n.5 (TTAB 1988) (only by adverse party); Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552, 1555 (TTAB 1987) (same); Dynamark Corp. v. Weed Eaters, Inc., 207 USPQ 1026, 1028 n.2 (TTAB 1980) (same); Fischer GmbH. v. Molnar & Co., 203 USPQ 861, 867 n.7 (TTAB 1979) (discovery deposition of non-party taken on written questions inadmissible); Johnson Publishing Co. v. Cavin & Tubiana OHG, 196 USPQ 383, 384 n.5 (TTAB 1977) (party who takes discovery deposition may place it into evidence).
2. 37 C.F.R. § 2.120(k)(2). See, e.g., Southwestern Management, Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1013 n.6 (TTAB 2015) (parties stipulated to allow excerpts of discovery deposition of a non-party to be entered into evidence), aff’d 652 F. App’x 971 (Fed. Cir. 2016) (mem.); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1425 n.21 (TTAB 2014) (discovery depositions of opposers’ own officers submitted by parties’ stipulation); Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons Inc., 55 USPQ2d 1298, 1302 n.11 (TTAB 2000) (deposition of non-party properly in evidence by stipulation of parties). Cf. Azalea Health Innovations, Inc. v. Rural Health Care, Inc., 125 USPQ2d 1236, 1240-41 (TTAB 2017) (granting opposer’s motion to strike discovery deposition transcripts of non-party witnesses submitted by applicant under notice of reliance to impeach the witnesses’ declaration trial testimony, where there was no stipulation to allow the non-party witnesses’ discovery depositions, applicant did not elect oral cross-examination of the witnesses on their testimonial declarations, and applicant did not file a motion seeking Board approval to use the discovery depositions, or a motion claiming exceptional circumstances).
3. 37 C.F.R. § 2.120(k)(2). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69962 (October 7, 2016) ("The Office is amending renumbered § 2.120(k)(2) to change the time for a motion to use a discovery deposition to when the offering party makes its pretrial disclosures and to clarify that the exceptional circumstances standard applies when this deadline has passed."). See also Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009) (motion granted to use discovery deposition of foreign resident not willing to appear voluntarily and whose attendance could not be compelled); Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1426–27 (TTAB 1993); Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552, 1555 (TTAB 1987) (no special circumstances shown by applicant to admit discovery deposition of applicant’s president); Fischer GmbH. v. Molnar & Co., 203 USPQ 861, 867 (TTAB 1979) (mere speculation that non-party witness would be unavailable is insufficient); National Fidelity Life Insurance v. National Insurance Trust, 199 USPQ 691, 692 n.4 (TTAB 1978) (no special circumstances shown to admit discovery deposition of non-party). Cf. Azalea Health Innovations, Inc. v. Rural Health Care, Inc., 125 USPQ2d 1236, 1240-41 (TTAB 2017) (granting opposer’s motion to strike discovery deposition transcripts of non-party witnesses submitted by applicant under notice of reliance to impeach the witnesses’ declaration trial testimony, where there was no stipulation to allow the non-party witnesses’ discovery depositions, applicant did not elect oral cross-examination of the witnesses on their testimonial declarations, and applicant did not file a motion seeking Board approval to use the discovery depositions, or a motion claiming exceptional circumstances).
4. 37 C.F.R. § 2.120(k)(4). See Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1352 n.13 (TTAB 2014) ("in the interests of fairness," Board considers additional excerpts of discovery deposition submitted by adverse party under notice of reliance), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. Oct. 10, 2014); Swatch AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463, 1466 (TTAB 2013) (opposer’s objections to applicant's offer in evidence of portions of the Fed. R. Civ. P. 30(b)(6) discovery depositions of applicant's own witnesses sustained as to those portions that constitute new testimony, overruled as to those portions that clarify witness’ statements), aff’d, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015); City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1671 (TTAB 2013) (petitioner’s objection to respondent’s "counter-designations" of portions of respondent’s Fed. R. Civ. P. 30(b)(6) discovery deposition overruled); Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1190 (TTAB 2011) (adverse party provided the requisite written statement explaining why it needs to rely upon the additional excerpts), judgment vacated based on action of defendant on appeal, 107 USPQ2d 1626 (TTAB 2013); Wear-Guard Corp. v. Van Dyne-Crotty Inc., 18 USPQ2d 1804, 1806 n.2 (TTAB 1990) (adverse party failed to show how portions submitted were misleading), aff’d, 17 USPQ2d 1866 (Fed. Cir. 1991); Marion Laboratories Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215 (TTAB 1988) (Board refused to consider pages of a deposition relied on by applicant in its brief since they were not relied on by opposer and not properly made of record by applicant and since opposer objected thereto); First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1631, n.5 (TTAB 1988) (where applicant submitted entire deposition of its president in response to opposer’s partial submission, without identifying specific relevant testimony, Board refused to consider additional portions); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1447 n.6 (TTAB 1986) (pages of additional portions should be clearly marked); Chesebrough-Pond's Inc. v. Soulful Days, Inc., 228 USPQ 954, 955 n.4 (TTAB 1985) (Board refused to consider additional exhibits since they did not serve to correct misimpression engendered by those of record); Dynamark Corp. v. Weed Eaters, Inc., 207 USPQ 1026, 1028 n.2 (TTAB 1980) (distinguishing mandatory filing of trial deposition in its entirety from discovery deposition where only the portion or portions which are properly introduced are of record); Johnson Publishing Co. v. Cavin & Tubiana OHG, 196 USPQ 383, 384 n.5 (TTAB 1977).
5. 37 C.F.R. § 2.120(k)(3)(i). See BASF Wyandotte Corp. v. Polychrome Corp., 586 F.2d 238, 200 USPQ 20, 21 (CCPA 1978) (mere presence of discovery responses in the file does not make them of record without a notice of reliance); Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009); Marion Laboratories Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215 (TTAB 1988); Fischer GmbH. v. Molnar & Co., 203 USPQ 861 (TTAB 1979); Ethicon, Inc. v. American Cyanamid Co., 192 USPQ 647 (TTAB 1976); Chemetron Corp. v. Self-Organizing Systems, Inc., 166 USPQ 495, 496 n.2 (TTAB 1970) (discovery depositions not in evidence since notice of reliance not filed); American Skein & Foundry Co. v. Stein, 165 USPQ 85, 85 (TTAB 1970) (discovery deposition inadmissible where it was timely filed but not accompanied by notice of reliance).
6. See 37 C.F.R § 2.122(g). Effective January 14, 2017, the Board added new subsection (g) to 37 C.F.R. § 2.122 detailing the requirements for admission of evidence by notice of reliance. This amendment effectively overruled any prior case law stating that an offering party is not required to specify the general relevance of certain types of evidence submitted under notice of reliance such as discovery deposition excerpts and answers to interrogatories. See also 37 C.F.R. § 2.120(k)(3)(i).
7. See Exxon Corp. v. Motorgas Oil & Refining Corp., 219 USPQ 440, 441 n.4 (TTAB 1983) (vague reference to reliance on "only those portions of the deposition pertaining to the descriptive nature of the opposed mark" insufficient).
8. See Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787 (TTAB 2001) ("[E]ach party has submitted discovery deposition transcripts in toto, i.e., has made no apparent effort to identify and introduce only those portions that are relevant to our determination of the pleaded claims. While not improper, it is more effective to file only those portions that are relevant and explain their relevancy in the notice of reliance") (citing Wear-Guard Corp. v. Van Dyne-Crotty Inc., 18 USPQ2d 1804, 1805 n.1 (TTAB 1990) and Marion Laboratories Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215, 1217 n.9 (TTAB 1988).
9. 37 C.F.R. § 2.120(k)(7). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.122(a), consistent with § 2.120(k)(7), to add that when evidence has been made of record by one party in accordance with these rules, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. The amendments codify current Office practice."). See also American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1025 (TTAB 2011) (objection based on failure to indicate relevance to applicant's notice of reliance introducing opposer's archival websites sustained, but applicant may rely on copy of opposer's website made of record by opposer's deposition); Chesebrough-Pond's Inc. v. Soulful Days, Inc., 228 USPQ 954, 955 n.4 (TTAB 1985) (notice of reliance on deposition already made of record by the other party is superfluous); Andersen Corp. v. Therm-O-Shield International, Inc., 226 USPQ 431, 432 n.6 (TTAB 1985) (stipulation that deposition relied on by opposer may also be considered as part of applicant's case was unnecessary); Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984); Miles Laboratories, Inc. v. SmithKline Corp., 189 USPQ 290, 291 n.4 (TTAB 1975).
10. See Exxon Corp. v. Motorgas Oil & Refining Corp., 219 USPQ 440, 441 n.4 (TTAB 1983) (opposer’s notice of reliance as to deposition designation indefinite and opposer given time to clarify; response severely narrowed original designation to applicant’s prejudice and not permitted).
11. See, e.g., Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844, 1848 n.6 (TTAB 2008) (because the parties stipulated to the use of discovery depositions as evidence, because petitioner did not object to respondent's reliance on respondent's answers to petitioner's written discovery, and because the discovery responses were used as exhibits during depositions, Board considered the responses as having been properly made of record); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1737 n.11 (TTAB 1990) (no objection to applicant's introduction of discovery deposition of officer of opposer's parent corporation); Maytag Co. v. Luskin's, Inc., 228 USPQ 747, 747 n.4 (TTAB 1986) (deposition taken during discovery but treated by both parties as a testimonial deposition introduced by deposed party treated as trial deposition taken prior to testimony period pursuant to stipulation); Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., 221 USPQ 354, 356 n.5 (TTAB 1984) (deposition of non-party treated as stipulated into the record since adverse party did not object and referred to it as being of record in its brief); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 n.7 (TTAB 1982) (discovery deposition of non-party treated by both parties as properly of record); Pamex Foods, Inc. v. Clover Club Foods Co., 201 USPQ 308, 310 n.3 (TTAB 1978) (considered of record where although opposer did not file a notice of reliance on discovery depositions, both parties referred to the depositions in their briefs); Plus Products v. Don Hall Laboratories, 191 USPQ 584, 585 n.2 (TTAB 1976) (plaintiff's notice of reliance filed during rebuttal testimony period improper where defendant introduced no evidence; but since defendant filed improper notice of reliance in response thereto and because neither party objected to the untimely evidence of the other and moreover addressed each other's evidence, all material was considered); Insta-Foam Products, Inc. v. Instapak Corp., 189 USPQ 793, 795 n.4 (TTAB 1976) (discovery deposition of non-party deemed stipulated into the record where there was no objection and both parties relied on the deposition).
12. See Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1861 (TTAB 2009) (failure to disclose non-party witness in initial disclosures or to supplement initial disclosures did not preclude introduction of discovery deposition at trial when deposition was adequately noticed, at least one of party’s principals attended deposition and attorney cross-examined witness).
13. 37 C.F.R. § 2.120(k)(8). See Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 n.3 (TTAB 1999).
14. 37 C.F.R. § 2.120(k)(6). Cf. West End Brewing Co. of Utica, N.Y. v. South Australian Brewing Co., 2 USPQ2d 1306, 1308 n.3 (TTAB 1987) (party may testify as to veracity of information contained in interrogatory answers or use such answers to refresh memory of witness during testimony deposition).
704.10 Interrogatory Answers; Admissions
- * * * *
- (3)
- (i) A discovery deposition, an answer to an interrogatory, or an admission to a request for admission, or a written initial disclosure, which may be offered in evidence under the provisions of paragraph (j) of this section, may be made of record in the case by filing the deposition or any part thereof with any exhibit to the part that is filed, or a copy of the interrogatory and answer thereto with any exhibit made part of the answer, or a copy of the request for admission and any exhibit thereto and the admission (or a statement that the party from which an admission was requested failed to respond thereto), or a copy of the written initial disclosure, together with a notice of reliance in accordance with § 2.122(g). The notice of reliance and the material submitted thereunder should be filed during the testimony period of the party which files the notice of reliance. An objection made at a discovery deposition by a party answering a question subject to the objection will be considered at final hearing.
- * * * *
- (5) Written disclosures, an answer to an interrogatory, or an admission to a request for admission, may be submitted and made part of the record only by the receiving or inquiring party except that, if fewer than all of the written disclosures, answers to interrogatories, or fewer than all of the admissions, are offered in evidence by the receiving or inquiring party, the disclosing or responding party may introduce under a notice of reliance any other written disclosures, answers to interrogatories, or any other admissions, which should in fairness be considered so as to make not misleading what was offered by the receiving or inquiring party. The notice of reliance filed by the disclosing or responding party must be supported by a written statement explaining why the responding party needs to rely upon each of the additional written disclosures or discovery responses listed in the disclosing or responding party's notice, and absent such statement, the Board, in its discretion, may refuse to consider the additional written disclosures or responses.
- (6) Paragraph (k) of this section will not be interpreted to preclude reading or use of written disclosures or documents, a discovery deposition, or answer to an interrogatory, or admission as part of the examination or cross-examination of any witness during the testimony period of any party.
- (7) When a written disclosure, a discovery deposition, or a part thereof, or an answer to an interrogatory, or an admission, or an authenticated produced document has been made of record by one party in accordance with the provisions of paragraph (k)(3) of this section, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.
- (8) Written disclosures or disclosed documents, requests for discovery, responses thereto, and materials or depositions obtained through the disclosure or discovery process should not be filed with the Board, except when submitted with a motion relating to disclosure or discovery, or in support of or in response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party's testimony period.
Ordinarily, an answer to an interrogatory, or an admission to a request for admission, may be submitted and made part of the record by only the inquiring party. [ Note 1.] See TBMP § 401 and TBMP § 704.14 for further information concerning disclosures.
However, if fewer than all of the answers to a set of interrogatories, or fewer than all of the admissions, are offered in evidence by the inquiring party, the responding party may introduce, under a notice of reliance, any other answers to interrogatories, or any other admissions that should be considered so as to avoid an unfair interpretation of the responses offered by the inquiring party. [ Note 2.] The notice of reliance must be supported by a written statement explaining why the responding party needs to rely on each of the additional interrogatory answers, or admissions, listed in the responding party’s notice, failing which the Board, in its discretion, may refuse to consider the additional responses. [ Note 3.]
An interrogatory answer (including documents provided as all or part of an interrogatory answer under Fed. R. Civ. P. 33), or an admission to a request for admission, [ Note 4.], that may be offered in evidence under 37 C.F.R. § 2.120(k) may be made of record by notice of reliance during the testimony period of the offering party. The party should file a copy of the interrogatory and the answer thereto, with any exhibit made part of the answer, or a copy of the request for admission and any exhibit thereto and the admission (or a statement that the party from which an admission was requested failed to respond thereto), together with its notice of reliance thereon. [ Note 5.]
The notice of reliance must indicate the general relevance of the interrogatory answer or admission (or any part thereof) and associate it with one or more issues in the case. [ Note 6.] Interrogatory answers, or admissions, may be admitted into evidence through the testimony of a witness as an alternative to the notice of reliance procedure. [ Note 7.]
An interrogatory answer may also be made of record by stipulation of the parties, accompanied by a copy of the interrogatory and the answer thereto with any exhibit made part of the answer. Similarly, an admission may be made of record by stipulation of the parties, accompanied by a copy of the request for admission and any exhibit thereto and the admission (or a statement that the party from which an admission was requested failed to respond thereto). [ Note 8.]
When an interrogatory answer, or an admission, has been made of record by one party in accordance with 37 C.F.R. § 2.120(k), it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. [ Note 9.]
An interrogatory answer, or an admission, not properly offered in evidence under 37 C.F.R. § 2.120(k) may nevertheless be considered by the Board if the nonoffering party (parties) does not object thereto; and/or treats the answer, or admission, as being of record; and/or improperly offers an interrogatory answer, or an admission, in the same manner. [ Note 10.]
Written disclosures, disclosed documents, requests for discovery, responses thereto, and materials or depositions obtained through the disclosure or discovery process should not be filed with the Board except when submitted (1) with a motion relating to disclosure or discovery; or (2) in support of or response to a motion for summary judgment; or (3) under a notice of reliance during a party's testimony period; or (4) as exhibits to a testimony deposition; or (5) in support of an objection to proffered evidence on the ground that the evidence should have been, but was not, provided in response to a request for discovery. [ Note 11.] Please Note: Unlike documents that are provided as all or part of an interrogatory answer under Fed. R. Civ. P. 33, documents that are produced in response to a document request cannot be made of record under a notice of reliance unless they are otherwise eligible for submission under a notice of reliance, e.g., because they are printed publications or were provided in connection with a response to an interrogatory or unless they have been authenticated by an admission or stipulation from the producing party. [ Note 12.] See TBMP § 704.08 and TBMP § 704.11.
Nothing in 37 C.F.R. § 2.120(k) precludes reading or using an interrogatory answer, or an admission, as part of the examination or cross-examination of any witness during the testimony period of any party. [ Note 13.]
Denials to admission requests cannot be submitted under notice of reliance. [ Note 14.] "[U]nlike an admission (or a failure to respond which constitutes an admission), the denial of a request for admission establishes neither the truth nor the falsity of the assertion, but rather leaves the matter for proof at trial. Cf. Fed. R. Civ. P. 36(b)." [ Note 15.]
Although parties are obliged to supplement their discovery responses under Fed. R. Civ. P. 26(e)(1), supplemental discovery materials served upon an adversary during trial cannot be made of record unless such materials fall under an exception in 37 C.F.R. § 2.120(k)(8). [ Note 16.]
For information concerning the taking of discovery by way of interrogatories, see TBMP § 405. For information concerning the taking of discovery by way of requests for admission and for the effect of not responding to a request for admission, see TBMP § 407. For information concerning the raising of objections to notices of reliance and materials filed thereunder, see TBMP § 532 and TBMP § 707.02.
Please Note: Some of the cases cited in this section established principles later codified in the cited provisions in former 37 C.F.R. § 2.120(j), now 37 C.F.R. § 2.120(k), or were decided under rules which were the predecessors to such provisions.
NOTES:
1. 37 C.F.R. § 2.120(k)(5). See Bell's Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1342-43 (TTAB 2017) (opposer’s response to request for admission that two words have similar but not identical meanings considered admission properly introduced by applicant under notice of reliance); Daniel J. Quirk Inc. v. Village Car Company, 120 USPQ2d 1146, 1151 (TTAB 2016); Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1217 (TTAB 2011) (defendant's responses to plaintiff's interrogatories and document requests, but not produced documents); Triumph Machinery Co. v. Kentmaster Manufacturing Co., 1 USPQ2d 1826, 1827 n.3 (TTAB 1987); Wilderness Group, Inc. v. Western Recreational Vehicles, Inc., 222 USPQ 1012, 1015 n.7 (TTAB 1984); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 n.8 (TTAB 1982); Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949, 950 (TTAB 1981).
See also Safeway Stores, Inc. v. Captn's Pick, Inc., 203 USPQ 1025, 1027 n.1 (TTAB 1979); Jerrold Electronics Corp. v. Magnavox Co., 199 USPQ 751, 753 n.4 (TTAB 1978; Cities Service Co. v. WMF of America, Inc., 199 USPQ 493, 495 n.4 (TTAB 1978); General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690, 692 n.6 (TTAB 1977) ; Hovnanian Enterprises, Inc. v. Covered Bridge Estates, Inc., 195 USPQ 658, 660 n.2 (TTAB 1977); A. H. Robins Co. v. Evsco Pharmaceutical Corp., 190 USPQ 340 (TTAB 1976); W. R. Grace & Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308, 309 n.6 (TTAB 1976) ; Beecham Inc. v. Helene Curtis Industries, Inc., 189 USPQ 647, 647 (TTAB 1976).
2. 37 C.F.R. § 2.120(k)(5). See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476-77 (TTAB 2014) (concurrent-use defendant's objection to plaintiff's submission of initial answer to interrogatory with notice of reliance, on ground that answer did not include defendant's supplemental response, is overruled, since 37 C.F.R. § 2.120(j)(5) provides in relevant part that inquiring party may make answer to interrogatory of record by notice of reliance, and that, if fewer than all answers to interrogatories are offered in evidence, responding party may introduce, under notice of reliance, any other answers to interrogatories which should in fairness be considered so as to render inquiring party's submission not misleading, and since defendant remedied any perceived unfairness by submitting supplemental answer and documents it produced under Fed. R. Civ. P. 33(d)); Heaton Enterprises of Nevada Inc. v. Lang, 7 USPQ2d 1842, 1844 n.5 (TTAB 1988). Cf. Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1218 (TTAB 2011) (plaintiff introduced its responses to defendant's interrogatories by notice of reliance which were considered only to the extent that defendant submitted the non-confidential portions of plaintiff's responses through its own notice of reliance).
3. 37 C.F.R. § 2.120(k)(5). See Hiraga v. Arena, 90 USPQ2d 1102, 1105 (TTAB 2009) (additional interrogatory responses by answering party not considered because he did not include explanation as to why he needed to rely on each additional discovery response, and not obvious in what way they avoided any unfairness from what propounding party submitted); Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125, 1128 n.4 (TTAB 1995) (notice of reliance on responses stricken since responses did not clarify answers relied on by inquiring party); Heaton Enterprises of Nevada Inc. v. Lang, 7 USPQ2d 1842, 1844 n.5 (TTAB 1988) (TTAB 1988) (answering party is expected to select only the relevant answers and to inform the Board of the relationship of that answer to those offered by propounding party); Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1719 n.4 (TTAB 1987) (other answers may be introduced to clarify, rebut or explain responses relied on by inquiring party; opposer failed to indicate the relevance of its interrogatory responses to rebut those relied on by applicant); Board of Trustees of the University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408, 409 n.3 (TTAB 1986) (broad statement by answering party that without the additional responses the selected responses would be misleading is insufficient); Packaging Industries Group, Inc. v. Great American Marketing, Inc., 227 USPQ 734, 734 n.3 (TTAB 1985) (applicant did not introduce the additional responses referred to in its brief by notice of reliance); Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949, 950 (TTAB 1981) (answering party may not simply rely on all remaining answers and expect Board to determine which, if any, answers require explanation or clarification); Beecham Inc. v. Helene Curtis Industries, Inc., 189 USPQ 647, 647 (TTAB 1976).
4. See Bell's Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1342-43 (TTAB 2017) (opposer’s response to request for admission that two words have similar but not identical meanings considered admission properly introduced by applicant under notice of reliance). Cf. Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008) (denials of requests for admission not admissible; the denial of a request for admission establishes neither the truth nor the falsity of the assertion, but rather leaves the matter for proof at trial).
5. 37 C.F.R. § 2.120(k)(3)(i). See B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1503 (TTAB 2007) (catalog produced in lieu of interrogatory response can be made of record through notice of reliance on interrogatory response); BASF Wyandotte Corp. v. Polychrome Corp., 586 F.2d 238, 200 USPQ 20, 21 (CCPA 1978); M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073 (TTAB 1990) (notice of reliance must specify and be accompanied by the interrogatory to which each document was provided in lieu of an answer); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1447 n.9 (TTAB 1986) (documents provided in lieu of interrogatory answer admissible by notice of reliance); May Department Stores Co. v. Prince, 200 USPQ 803, 805 n.1 (TTAB 1978) (notice of reliance filed after close of testimony period untimely); Bausch & Lomb Inc. v. Gentex Corp., 200 USPQ 117, 119 n.2 (TTAB 1978) (neither party filed notice of reliance on the other party's interrogatories and therefore not of record).
See also E. I. du Pont de Nemours & Co. v. G. C. Murphy Co., 199 USPQ 807, 808 n.2 (TTAB 1978); Miss Nude Florida, Inc. v. Drost, 193 USPQ 729, 731 (TTAB 1976), pet. to Comm'r denied, 198 USPQ 485 (Comm'r 1977); Hollister Inc. v. Ident A Pet, Inc., 193 USPQ 439, 440 n.2 (TTAB 1976); Plus Products v. Don Hall Laboratories, 191 USPQ 584, 585 n.2 (TTAB 1976); A. H. Robins Co. v. Evsco Pharmaceutical Corp., 190 USPQ 340, 341 n.3 (TTAB 1976).
Cf. Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984) (applicant's notice of reliance on responses which were already made of record by opposer was superfluous).
6. See 37 C.F.R. § 2.120(g). On January 14, 2017, the Board added new subsection (g) to 37 C.F.R. § 2.122 detailing the requirements for admission of evidence under notice of reliance, effectively overruling Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881, 883 (TTAB 1979) (not required to set forth the relevance of interrogatory answers). See also 37 C.F.R. § 2.120(k)(3)(i).
7. See Lacoste Alligator S.A. v. Everlast World's Boxing Headquarters Corp., 204 USPQ 945, 947 (TTAB 1979).
8. See Wilderness Group, Inc. v. Western Recreational Vehicles, Inc., 222 USPQ 1012, 1015 n.7 (TTAB 1984) (although parties stipulated that certain interrogatory answers were part of evidentiary record, because copies of the interrogatories and answers were never submitted to the Board, they could not be considered). See also Jerrold Electronics Corp. v. Magnavox Co., 199 USPQ 751, 753 n.4 (TTAB 1978); General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690, 692 n.5 (TTAB 1977). Cf. Wella Corp. v. California Concept Corp., 192 USPQ 158, 160 n.4 (TTAB 1976) (supplemental answers to interrogatories were not covered by the stipulation), rev'd on other grounds, 558 F.2d 1019, 194 USPQ 419 (CCPA 1977).
9. 37 C.F.R. § 2.120(k)(7). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.122(a), consistent with § 2.120(k)(7), to add that when evidence has been made of record by one party in accordance with these rules, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. The amendments codify current Office practice."). See also Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984) (applicant's notice of reliance on matter already made of record by opposer is superfluous); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1025 (TTAB 2011) (objection based on failure to indicate relevance to applicant's notice of reliance sustained, but applicant may rely on copy of record by opposer' deposition); Henry Siegel Co. v. M & R International Manufacturing Co., 4 USPQ2d 1154, 1155 n.5 (TTAB 1987); Beecham Inc. v. Helene Curtis Industries, Inc., 189 USPQ 647, 647 (TTAB 1976) (where party relies on all of adversary’s answers to interrogatories, the adversary need not file its own notice of reliance thereon).
10. See, e.g., L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1435 n.3 (TTAB 2012) (opposer did not object to applicant’s improper introduction of applicant’s responses to interrogatories and requests for admission but instead treated the responses as being of record); Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844, 1848 n.6 (TTAB 2008) (because the parties stipulated to the use of discovery depositions as evidence, petitioner did not object to respondent's reliance on respondent's answers to petitioner's written discovery, and the discovery responses were used as exhibits during depositions, respondent’s discovery responses considered as having been properly made of record); Riceland Foods Inc. v. Pacific Eastern Trading Corp., 26 USPQ2d 1883, 1884 n.3 (TTAB 1993) (no objection to party's reliance on its own answers and moreover the responses set forth facts which were described in the parties' stipulation); Heaton Enterprises of Nevada Inc. v. Lang, 7 USPQ2d 1842, 1844 n.5 (TTAB 1988) (no objection to responding party's notice of reliance on remaining answers and such answers were deemed as explanatory or clarifying); Triumph Machinery Co. v. Kentmaster Manufacturing Co., 1 USPQ2d 1826, 1827 n.3 (TTAB 1987) (no objection to party's reliance on its own answers); Board of Trustees of the University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408, 409 n.3 (TTAB 1986) (objection which was raised for first time in brief waived since defect of failing to explain why the additional responses were necessary could have been cured); Plus Products v. Natural Organics, Inc., 204 USPQ 773, 775 n.4 (TTAB 1979) (no objection to untimely notice of reliance or to failure to submit copies of the discovery requests or responses thereto); Safeway Stores, Inc. v. Captn's Pick, Inc., 203 USPQ 1025, 1027 n.1 (TTAB 1979) (no objection by either party to the other's improper reliance on its own answers; opposer did not object to interrogatories introduced by applicant and in fact referred to answers to other of opposer's interrogatories without benefit of notice of reliance); Pamex Foods, Inc. v. Clover Club Foods Co., 201 USPQ 308, 310 n.3 (TTAB 1978) (discovery depositions filed without a notice of reliance were treated as being of record where both parties referred to the depositions in their briefs and in view of stipulations concerning marking of exhibits in the depositions); Jerrold Electronics Corp. v. Magnavox Co., 199 USPQ 751, 753 n.4 (TTAB 1978) (both parties relied on answers given by each to the other's interrogatories without objection); General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690, 692 n.5 (TTAB 1977) (same); Plus Products v. Don Hall Laboratories, 191 USPQ 584, 585 n.2 (TTAB 1976) (neither party objected to improper notice of reliance by the other and each relied on the contents of the other's notice of reliance); Plus Products v. Sterling Food Co., 188 USPQ 586, 587 n.2 (TTAB 1975) (applicant did not file required notice of reliance on opposer's answers but both parties referred to the answers in their briefs).
Cf. Hiraga v. Arena, 90 USPQ2d 1102, 1106 (TTAB 2009) (additional interrogatory answers not considered because non-offering party timely objected and never treated interrogatory answers as being of record).
12. 37 C.F.R. § 2.120(k)(3)(ii). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69962 (October 7, 2016) ("The Office is amending renumbered § 2.120(k)(3)(ii) to add that a party may make documents produced by another party of record by notice of reliance alone if the party has obtained an admission or stipulation from the producing party that authenticates the documents. This amendment is consistent with the amendment in renumbered § 2.120(i) permitting a party to make one comprehensive request for an admission authenticating specific documents produced by an adverse party."); Bell's Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1343 (TTAB 2017) (confidential settlement agreement produced by opposer proper subject matter for submission by applicant (under seal) under notice of reliance because in response to request for admission, opposer attested that documents produced were true and correct copies of authentic documents).
13. 37 C.F.R. § 2.120(k)(6). See West End Brewing Co. of Utica, N.Y. v. South Australian Brewing Co., 2 USPQ2d 1306, 1308 n.3 (TTAB 1987) (use of interrogatory answers to refresh memory of witness and testifying as to veracity of interrogatory answers permitted). Cf. Steiger Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 169-70 (TTAB 1984) (reading answers into record when witness was present at deposition inadmissible because no written copy given to refresh witness’s memory), different results reached on reh'g, 3 USPQ2d 1708 (TTAB 1984).
14. 37 C.F.R. § 2.120(k)(3)(i). See, e.g., Ayoub, Inc. v. ACS Ayoub Carpet Services, 118 USPQ2d 1392, 1395 n.9 (TTAB 2016); N.Y. Yankees Partnership v. IET Products & Services, Inc., 114 USPQ2d 1497, 1501 n.11 (TTAB 2015) (Board considered only opposer’s admissions, not denials, in response to applicant’s requests for admission); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1477 (TTAB 2014) (concurrent use defendant’s objection to submission of denial to admission request sustained; "rule does not extend to denials"); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1957 (TTAB 2008) (denials to requests for admission inadmissible).
15. Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008).
16. Joel Gott Wines LLC v. Rehobeth Von Gott, Inc., 107 USPQ2d 1424, 1427-28 (TTAB 2013) ("It is true that Fed. R. Civ. P. 26(e)(1) charges parties with a duty to supplement their discovery responses. But this does not make whatever supplemental material is produced of record in the case.").
704.11 Produced Documents and Privilege Logs
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.
- (2) Internet materials may be admitted into evidence under a notice of reliance in accordance with paragraph (g) of this section, in the same manner as a printed publication in general circulation, so long as the date the internet materials were accessed and their source (e.g., URL) are provided.
37 C.F.R. § 2.120(k)(3)(ii) A party that has obtained documents from another party through disclosure or under Rule 34 of the Federal Rules of Civil Procedure may not make the documents of record by notice of reliance alone, except to the extent that they are admissible by notice of reliance under the provisions of § 2.122(e) or the party has obtained an admission or stipulation from the producing party that authenticates the documents.
Documents provided as all or part of an answer to an interrogatory under Fed. R. Civ. P. 33 may be made of record, as an interrogatory answer, by notice of reliance filed in accordance with 37 C.F.R. § 2.120(k)(3)(i) and 37 C.F.R. § 2.120(k)(5). [ Note 1.] See TBMP § 704.10.
However, a party that has obtained documents from another party through disclosure or under Fed. R. Civ. P. 34 may not make the produced documents of record by notice of reliance alone, except to the extent that they are admissible by notice of reliance under 37 C.F.R. § 2.122(e) (as official records; or as 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 the proceeding; or Internet documents); or unless the documents have been authenticated by an admission or stipulation from the producing party. [ Note 2.] See TBMP § 704.07 and TBMP § 704.08.
Listed below are a number of methods by which documents obtained through disclosure or produced in response to a request for production of documents may be made of record:
- (1) A party that has obtained documents through disclosure or under Fed. R. Civ. P. 34 may serve on its adversary requests for admission of the authenticity of the documents, and then, during its testimony period, file a notice of reliance, under 37 C.F.R. § 2.120(k)(3)(i), on the requests for admission, the exhibits thereto, and its adversary's admissions (or a statement that its adversary failed to respond to the requests for admission). [ Note 3.] However, if a party wishes to have an opportunity to serve requests for admission after obtaining documents under Fed. R. Civ. P. 34, it must serve its request for production of documents early in the discovery period, so that when it obtains the produced documents, it will have time to prepare and serve requests for admission, and the responding party will have time to prepare and serve its answers, prior to the expiration of the discovery period. [ Note 4.] For information regarding the need for early initiation of discovery, see TBMP § 403.05(a) and TBMP § 403.05(b).
- (2) A party that has obtained documents through disclosure or under Fed. R. Civ. P. 34 may offer them as exhibits in connection with the taking of its adversary's discovery deposition. With regard to Fed. R. Civ. P. 34 documents, however, the request for production of documents must be served early in the discovery period, so that there will still be time remaining, after the requested documents have been produced, to notice and take a discovery deposition during the discovery period. See TBMP § 403.05.
- (3) A party that has obtained documents through disclosure or under Fed. R. Civ. P. 34 may introduce them as exhibits during the cross-examination of its adversary's witness. [ Note 5.] This method is available only if the adversary takes testimony and the documents pertain to matters within the scope of the direct examination of the witness.
- (4) A party that has obtained documents through disclosure or under Fed. R. Civ. P. 34 may, during its own testimony period, take the testimony of its adversary as an adverse witness and introduce the obtained documents as exhibits during direct examination. [ Note 6.]
- (5) A party that has obtained documents through disclosure or under Fed. R. Civ. P. 34 may, during its own testimony period, make of record by notice of reliance, under 37 C.F.R. § 2.122(e), any of the documents that fall into the category of "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" and Internet materials. [ Note 7.] See also TBMP § 704.07 and TBMP § 704.08.
- (6) A party that wishes to obtain documents under Fed. R. Civ. P. 34 may combine its request for production of documents with a notice of taking discovery deposition, and ask that the requested documents be produced at the deposition. However, the combined request for production and notice of deposition must be served well before the date set for the deposition, because a discovery deposition must be both noticed and taken before the close of the discovery period, and because Fed. R. Civ. P. 34(b) allows a party 30 days in which to respond to a request for production of documents. See TBMP § 403.05.
- (7) Documents obtained through disclosure or under Fed. R. Civ. P. 34 may be made of record by stipulation of the parties. [ Note 8.]
- (8) Documents obtained through disclosure or by request for production of documents under Fed. R. Civ. P. 34, and improperly offered in evidence, may nevertheless be considered by the Board if the nonoffering party (parties) does not object thereto; and/or treats the documents as being of record; and/or in the same manner improperly offers documents which it obtained under Fed. R. Civ. P. 34. [ Note 9.]
For information on initial disclosures and on obtaining discovery by way of a request for production of documents, see TBMP § 401.02 and TBMP § 406.
If no documents exist which are responsive to a document request, a party’s response that no documents exist may be made of record. [ Note 10.]
A privilege log produced by a party during discovery cannot be introduced into evidence through a notice of reliance. [ Note 11.]
NOTES:
1. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476-77 (TTAB 2014) (Board considered documents responsive to interrogatory under Fed. R. Civ. P. 33(d) submitted under notice of reliance); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103-1104 (TTAB 2007) (because respondent produced documents in responding to petitioner's interrogatories and admitted in responses to requests for admissions that the documents it produced were true and correct copies of authentic documents, documents are admissible by way of a notice of reliance); M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073 (TTAB 1990) (notice of reliance failed to indicate that documents were being introduced under 37 C.F.R. § 2.120(j)(3)(i) by specifying and making of record a copy of the particular interrogatories to which each document was provided in lieu of an interrogatory answer); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1447-48 (TTAB 1986).
2. 37 C.F.R. § 2.120(k)(3)(ii). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69962 (October 7, 2016) ("The Office is amending renumbered § 2.120(k)(3)(ii) to add that a party may make documents of record by notice of reliance alone if the party has obtained an admission or stipulation from the producing party that authenticates the documents. This amendment is consistent with the amendment in renumbered § 2.120(i) permitting a party to make one comprehensive request for an admission authenticating specific documents produced by an adverse party."). See, e.g., Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1343 (TTAB 2017) (confidential settlement agreement produced by opposer proper subject matter for submission by applicant (under seal) under notice of reliance because in response to request for admission, opposer attested that documents produced were true and correct copies of authentic documents); Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1032 n.5 (TTAB 2016) (documents produced in response to document production requests made of record by stipulation); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1477 (TTAB 2014) (evidence submitted concurrently with concurrent use applicant’s rebuttal disclosures not considered); Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1932 n.7 (TTAB 2013) (documents produced in response to a request for production of documents may not be introduced under notice of reliance); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 at n.8 (TTAB 2012) (produced documents cannot be introduced by notice of reliance alone); Nike Inc. v. Maher, 100 USPQ2d 1018, 1020-21 n.2 (TTAB 2011) (produced documents not considered because not admissible under notice of reliance); Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1886 n.5 (TTAB 2008); M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073 (TTAB 1990); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1447 n.9 (TTAB 1986); Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 906 n.5 (TTAB 1985) (documents were neither official records nor printed publications); Jeanne-Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58, 59 n.4 (TTAB 1984) (documents were not printed publications).
3. 37 C.F.R. § 2.120(k)(3)(i). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69962 (October 7, 2016) ("The Office is amending renumbered § 2.120(k)(3)(ii) to add that a party may make documents produced by another party of record by notice of reliance alone if the party has obtained an admission or stipulation from the producing party that authenticates the documents. This amendment is consistent with the amendment in renumbered § 2.120(i) permitting a party to make one comprehensive request for an admission authenticating specific documents produced by an adverse party."); Bell's Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1343 (TTAB 2017) (confidential settlement agreement produced by opposer proper subject matter for submission by applicant (under seal) under notice of reliance because in response to request for admission, opposer attested that documents produced were true and correct copies of authentic documents).
4. 37 C.F.R. § 2.120(a)(3). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69951 (October 7, 2016) ("Under the amended rules, discovery must be served early enough in the discovery period that responses will be provided and all discovery will be complete by the close of discovery. This includes production of documents, which have to be produced or inspected by the close of discovery."); Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1270 (TTAB 2017) (discovery must be served early enough in the discovery period so that responses are due no later than the close of discovery).
5. See Harvey Hubbell, Inc. v. Red Rope Industries, Inc., 191 USPQ 119, 121 n.1 (TTAB 1976).
6. See Harvey Hubbell, Inc. v. Red Rope Industries, Inc., 191 USPQ 119, 121 n.1 (TTAB 1976).
7. 37 C.F.R. § 2.122(e); 37 C.F.R. § 2.120(k)(3)(ii); Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010).
8. 37 C.F.R. § 2.120(k)(3)(ii). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69962 (October 7, 2016) ("The Office is amending renumbered § 2.120(k)(3)(ii) to add that a party may make documents of record by notice of reliance alone if the party has obtained an admission or stipulation from the producing party that authenticates the documents. This amendment is consistent with the amendment in renumbered § 2.120(i) permitting a party to make one comprehensive request for an admission authenticating specific documents produced by an adverse party.").
9. See, e.g., Executive Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1179 n.9 (TTAB 2017) (responses to document requests submitted by notice alone treated as being stipulated into record where both parties submitted them in this manner and neither objected); Maids to Order of Ohio Inc. v. Maid-to-Order Inc., 78 USPQ2d 1899, 1901-02 (TTAB 2006); Jeanne-Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58, 59 n.4 (TTAB 1984) (improper subject of notice of reliance but no objection raised); Autac Inc. v. Viking Industries, Inc., 199 USPQ 367, 369 n.2 (TTAB 1978) (neither party objected to other’s offering of Fed. R. Civ. P. 34 documents by notice alone); Southwire Co. v. Kaiser Aluminum & Chemical Corp., 196 USPQ 566, 569 n.1 (TTAB 1977) (applicant did not object to documents produced and introduced by notice alone and referred to those documents in its brief); Harvey Hubbell, Inc. v. Red Rope Industries, Inc., 191 USPQ 119, 121 n.1 (TTAB 1976) (no objection to notice of reliance). Cf. Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 906 n.8 (TTAB 1985).
Cf. Association pour la Defense et la Promotion de l'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838, 1841 (TTAB 2007) (Board did not consider at final decision evidence stricken by the Board in an earlier order as improperly filed, such evidence consisting of petitioner’s interrogatory responses and labels produced by petitioner, even though petitioner did not object to submission of this evidence by respondent).
10. See City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1674 n.10 (TTAB 2013) (responses to document production requests are admissible solely for purposes of showing that a party has stated that there are no responsive documents); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 n.7 (TTAB 2012) (written responses to document requests indicating that no documents exist may be submitted by notice of reliance); Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1217 n.8 (TTAB 2011); Nike Inc. v. Maher, 100 USPQ2d 1018, 1020-21 n.2 (TTAB 2011); Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1547-48 n.5 (TTAB 2011); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883 n.5 (TTAB 2008).
See also Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1829 (TTAB 2012) (document responses consisting of objections and/or representations that the documents would be produced treated as of record).
11. RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1806 n.21 (TTAB 2018) (Board did not consider privilege log submitted under notice of reliance).
704.12 Judicial Notice
37 C.F.R. § 2.122(a) Applicable rules. Unless the parties otherwise stipulate, the rules of evidence for proceedings before the Trademark Trial and Appeal Board are the Federal Rules of Evidence, the relevant provisions of the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of the United States Code, and the provisions of this part. When evidence has been made of record by one party in accordance with these rules, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.
Fed. R. Evid. 201. Judicial Notice of Adjudicative Facts.
- (a) Scope.This rule governs judicial notice of an adjudicative fact only, not a legislative fact.
- (b) Kinds of Facts That May Be Judicially Noticed. The court may judicially notice a fact that is not subject to reasonable dispute because it:
- (1) is generally known within the trial court’s territorial jurisdiction; or
- (2) can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.
- (c) Taking Notice. The court:
- (1) may take judicial notice on its own; or
- (2) must take judicial notice if a party requests it and the court is supplied with the necessary information.
- (d) Timing. The court may take judicial notice at any stage of the proceeding.
- (e) Opportunity to Be Heard. On timely request, a party is entitled to be heard on the propriety of taking judicial notice and the nature of the fact to be noticed. If the court takes judicial notice before notifying a party, the party, on request, is still entitled to be heard.
- (f) Instructing the Jury. In a civil case, the court must instruct the jury to accept the noticed fact as conclusive. In a criminal case, the court must instruct the jury that it may or may not accept the noticed fact as conclusive.
In appropriate instances, the Board may take judicial notice of adjudicative facts. See 37 C.F.R. § 2.122(a) and Fed. R. Evid. 201.
704.12(a) Kind of Fact That May be Judicially Noticed
The only kind of fact that may be judicially noticed by the Board is a fact that is "not subject to reasonable dispute in that it is either (1) generally known within the territorial jurisdiction of the trial court or (2) capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned." [ Note 1.]
For examples of decisions concerning whether particular facts are appropriate subject matter for judicial notice by the Board, see cases cited in the note below. [ Note 2.] See also TBMP § 1208.04 for additional cases.
NOTES:
1. Fed. R. Evid. 201(b). See Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385, 1393 n.5 (TTAB 1999). See, e.g., Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988); Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1603 (TTAB 1999); Omega SA v. Compucorp, 229 USPQ 191, 194 (TTAB 1985); United States National Bank of Oregon v. Midwest Savings and Loan Association, 194 USPQ 232, 235 (TTAB 1977).
Please Note: 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 how to make such registrations of record in an inter partes proceeding. See 37 C.F.R. § 2.122(d) and 37 C.F.R. § 2.122(e). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69955 (October 7, 2016) (Board considered but rejected suggestion of taking judicial notice of USPTO records, explaining various reasons introduction of information contained in USPTO trademark file records is most appropriately borne by the party seeking to introduce the evidence).
2. In re Morinaga Nyuguo Kabushiki Kaisha, 120 USPQ2d 1738, 1744 n.4 (TTAB 2016) (locations of Puyallup, Washington and Mount Rainer-yes); In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767-68 (TTAB 2016) (patent excerpt, and definitions from Wikipedia, definitions from commercial websites that do not constitute dictionary definitions, and excerpts for which the source of the materials was not identified - no); In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767-68 (TTAB 2016) (patent excerpt, and definitions from Wikipedia, definitions from commercial websites that do not constitute dictionary definitions, and excerpts for which the source of the materials was not identified - no); Nike, Inc. v. Palm Beach Crossfit Inc., 116 USPQ2d 1025, 1029 (TTAB 2015) (applicant’s photographs of a person from which its marks were allegedly derived – no); Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080, 1098 n.114 (TTAB 2014) (census data – yes), aff’d, 112 F. Supp. 3d 439, 115 USPQ2d 1524 (E.D. Va. 2015), vacated and remanded, Pro Football, Inc. v. Blackhorse, 709 F. App’x 183 (per curiam) (4th Cir. 2018) (mem.); UMG Recordings Inc. v. Matte, Inc., 100 USPQ2d 1868, 1874, 1879 n.12 (TTAB 2011) (dictionary definition - yes; web pages from websites - no); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 n.61 (TTAB 2011) ( information from encyclopedias- yes), aff’d, 188 F.Supp. 3d 222 (D.D.C. 2016); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1075 n.17 (TTAB 2011) (dictionary definitions- yes); Enbridge Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1542 n.9 (TTAB 2009) (phrase with a possible industry specific-meaning and where the parties have not set forth and addressed a single, definable meaning - no); UMG Recordings, Inc. v. Charles O’Rourke, 92 USPQ2d 1042, 1046 (TTAB 2009) (registration issuing from pleaded application after applicant’s trial brief had been filed, although copy of application was of record -- no); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1117 (TTAB 2009) (definitions from an online source which does not indicate it is the electronic version of a printed reference work but are consistent with definitions in "a more traditional reference source" - yes); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1590 n.8 (TTAB 2008) (online reference works which exist in printed format or have regular fixed editions -- yes); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1723 (TTAB 2008) (items of outerwear and undergarments are related - no); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1889 (TTAB 2008) (the licensing of commercial trademarks on "collateral products" has become a part of everyday life - yes); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1110 (TTAB 2007) (third-party registrations mentioned in trial brief - no); Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1192 n.9 (TTAB 2007) (current status of registration owned by party properly made of record, when status of registration changed between time made of record and time case decided - yes; Office assignment records reflecting current ownership - yes); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1485 (TTAB 2007) (number of applications and registrations in applicant's name - no); In re Red Bull GmbH, 78 USPQ2d 1375, 1378, 1379 n.7 (TTAB 2006) (dictionary definitions – yes; "scholarly reviews" of an essay at several websites - no); Motion Picture Association of America Inc. v. Respect Sportswear Inc., 83 USPQ2d 1555, 1558 (TTAB 2007) (results from Internet search engines and from eBay website - no); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1931 n.26 (TTAB 2006) (third-party website materials - no); B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir. 1988) (dictionary definition of term as trademark - yes, indicates mark is reasonably famous; also, encyclopedias may be consulted); 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) (home cold permanent wave kits have for many years been sold directly to nonprofessional consumers through retail outlets - yes); Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1605 (TTAB 1999) (statements regarding race relations pleaded in the complaint - no); In re Wada, 48 USPQ2d 1689, 1689 n.2 (TTAB 1998) (there are thousands of registered marks incorporating the term NEW YORK for goods and services that do not originate there - no) aff'd, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999); University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982) (dictionary definitions - yes), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002) (online dictionary definition where resource was also available in book form - yes); In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514 n.4 (TTAB 2001) (dictionary entries and other standard reference works -- yes); In re 3Com Corp., 56 USPQ2d 1060, 1061 n.3 (TTAB 2000) (dictionary definitions and technical reference works, e.g., computer dictionary - yes); Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385, 1393 (TTAB 1999) (dictionary definitions judicially noticed although not made of record by either party); In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999) (on-line dictionaries which otherwise do not exist in printed format - no); In re Astra Merck Inc., 50 USPQ2d 1216, 1219 (TTAB 1998) ("Physicians’ Desk Reference" - yes); In re U.S. Cargo Inc., 49 USPQ2d 1702, 1704 (TTAB 1998) ("U.S." means the United States, which is a geographic area with defined boundaries - yes); In re Carolina Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB 1998) (third-party registrations - no); Pinocchio's Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227, 1229 n.6 (TTAB 1989) (Catonsville, Maryland is located between Baltimore, Maryland and Washington, D.C. - yes); Los Angeles Bonaventure Co. v. Bonaventure Associates, 4 USPQ2d 1882, 1884 (TTAB 1987) (whether other companies have expanded from restaurant services to hotel services under a single mark, and, if so, when - no); Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1293 (TTAB 1986) (files of applications and/or registrations, where no copies thereof are filed, and where they are not the subject of the proceeding - no); Omega SA v. Compucorp, 229 USPQ 191, 192 n.6 (TTAB 1985) (presumptions concerning the significance in trade of certain terms - no); Hertz System, Inc. v. A-Drive Corp., 222 USPQ 625, 630 n.14 (TTAB 1984) (the numeral "1" is widely used to indicate superiority - yes); Hamilton Burr Publishing Co. v. E.W. Communications, Inc., 216 USPQ 802, 804 n.5 (TTAB 1982) (probation report -- no); Abbott Laboratories v. Tac Industries, Inc., 217 USPQ 819, 823 (TTAB 1981) (use of antimicrobial agents in the floor covering industry - no); Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852, 860 n.7 (TTAB 1981) (dictionary definitions - yes); Sprague Electric Co. v. Electrical Utilities Co., 209 USPQ 88, 95 n.3 (TTAB 1980) (standard reference works - yes); Cities Service Co. v. WMF of America, Inc., 199 USPQ 493, 495 (TTAB 1978) (third-party registrations and listings in trade directories, where no copies thereof are submitted - no); Plus Products v. Sterling Food Co., 188 USPQ 586, 589 (TTAB 1975) (food supplements and fortifiers are commonly used in producing bakery products - yes); Bristol-Myers Co. v. Texize Chemicals, Inc., 168 USPQ 670, 671 (TTAB 1971) (operations of opposer and applicant - no).
704.12(b) When Taken
The Board will take judicial notice of a relevant fact not subject to reasonable dispute, as defined in Fed. R. Evid. 201(b), if a party (1) requests that the Board do so, and (2) supplies the necessary information. [ Note 1.] The request should be made during the requesting party's testimony period, by notice of reliance accompanied by the necessary information. [ Note 2.] The Board, in its discretion, may take judicial notice of a fact not subject to reasonable dispute, as defined in Fed. R. Evid. 201(b), whether or not it is requested to do so. [ Note 3.]
NOTES:
1. Fed. R. Evid. 201(c). See United States National Bank of Oregon v. Midwest Savings and Loan Association, 194 USPQ 232, 235 (TTAB 1977); Litton Business Systems, Inc. v. J. G. Furniture Co., 190 USPQ 431, 433 (TTAB 1976).
2. See Litton Business Systems, Inc. v. J. G. Furniture Co., 190 USPQ 431, 434 (TTAB 1976). See also Wright Line Inc. v. Data Safe Services Corp., 229 USPQ 769, 770 n.5 (TTAB 1985); Sprague Electric Co. v. Electrical Utilities Co., 209 USPQ 88, 95 n.3 (TTAB 1980).
3. Fed. R. Evid. 201(c). See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006) (Board takes judicial notice of dictionary definitions); Boswell v. Mavety Media Group Ltd,, 52 USPQ2d 1600, 1603 (TTAB 1999) (declined to take judicial notice of slang dictionary definition when submitted as part of rebuttal testimony when could have been submitted with case in chief); University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982) (Board takes judicial notice of dictionary definitions), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); United States National Bank of Oregon v. Midwest Savings and Loan Association, 194 USPQ 232, 235 (TTAB 1977); Litton Business Systems, Inc. v. J. G. Furniture Co., 190 USPQ 431, 433 (TTAB 1976).
704.12(c) Opportunity to be Heard
A party to a proceeding before the Board is entitled, on timely request, "to be heard on the propriety of taking judicial notice and the nature of the fact to be noticed. If the court takes judicial notice before notifying a party, the party, on request, is still entitled to be heard." [ Note 1.] This does not mean, however, that when judicial notice is taken without prior notification, a party is automatically entitled to a hearing on request, even if it makes no offer to show that the taking of judicial notice was improper. [ Note 2.]
NOTES:
1. Fed. R. Evid. 201(e). See Litton Business Systems, Inc. v. J. G. Furniture Co., 190 USPQ 431, 433-34 (TTAB 1976).
2. See In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113 n.6 (Fed. Cir. 1983). See also Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (party can waive right to contest judicial notice if it does not request to be heard at the time), aff’g 204 USPQ 396, 401 n.5 (TTAB 1979) (where the Board took judicial notice of certain facts outside the record).
704.12(d) Time of Taking Notice
Judicial notice may be taken at any stage of a Board proceeding, even on review of the Board's decision on appeal. [ Note 1.] However, the Federal Circuit may decline to consider a request for judicial notice made at the late stage of oral argument on appeal. [ Note 2.]
NOTES:
1. See, e.g., Fed. R. Evid. 201(d); B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (request for judicial notice as to fame of mark made in the briefs on appeal); Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308 (Fed. Cir. 1988) (judicial notice of banking business on appeal); American Security Bank v. American Security and Trust Co., 571 F.2d 564, 197 USPQ 65, 67 n.1 (CCPA 1978) (judicial notice of absence of listing in local telephone directories); Wella Corp. v. California Concept Corp., 192 USPQ 158 (TTAB 1976), rev’d on other grounds, 558 F.2d 1019, 194 USPQ 419, 422 n.5 (CCPA 1977) (fact of common knowledge, e.g., of purchasers and channels of trade for home permanent wave kits, appropriate for judicial notice); Food Specialty Co. v. Kal Kan Foods, Inc., 487 F.2d 1389, 180 USPQ 136, 139 n.3 (CCPA 1973) (judicial notice on appeal of general sentiment towards kittens which differs from that toward other small animal pets); Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385, 1393 n.5 (TTAB 1999) (judicial notice may be taken at any time).
2. See Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1356 (Fed. Cir. 2000) (Court declined to consider whether to take judicial notice of fame where request for judicial notice was made for first time at oral argument on appeal).
704.13 Testimony From Another Proceeding
37 C.F.R. § 2.122(f) Testimony from other proceedings. By order of the Trademark Trial and Appeal Board, on motion, testimony taken in another proceeding, or testimony taken in a suit or action in a court, between the same parties or those in privity may be used in a proceeding, so far as relevant and material, subject, however, to the right of any adverse party to recall or demand the recall for examination or cross-examination of any witness whose prior testimony has been offered and to rebut the testimony.
On motion granted by the Board, testimony taken in another proceeding, or testimony taken in a suit or action in a court, between the same parties or their privies, may be used in a pending Board inter partes proceeding, to the extent that the testimony is relevant and material, subject "to the right of any adverse party to recall or demand the recall for examination or cross-examination of any witness whose prior testimony has been offered and to rebut the testimony." [ Note 1.]
The Board has construed the term "testimony," as used in 37 C.F.R. § 2.122(f), as meaning only trial testimony [ Note 2.], or a discovery deposition which was used, by agreement of the parties, as trial testimony in the other proceeding. The purpose of the rule is to offer a party a means for introducing testimony from a prior proceeding without having to call a witness to authenticate the testimony, thereby allowing a party a relatively quick and simple means by which to introduce testimony from another proceeding into evidence. It is not intended as specifying the only means by which oral or written statements from another proceeding can be introduced at trial in a Board proceeding. [ Note 3.]
Testimony from another proceeding between the parties or their privies may be used, on motion granted by the Board, as evidence in connection with a motion for summary judgment, or as evidence at trial. [ Note 4.] However, when the Board allows testimony of this nature to be used in connection with a motion for summary judgment, the testimony (and any testimony taken on recall of the same witness for examination or cross-examination, or in rebuttal thereof) is of record only for purposes of the motion; it will not be considered at final hearing if the case goes to trial, unless it is reintroduced, on motion granted by the Board, during the appropriate trial period. See TBMP § 528.05(a) and TBMP § 528.05(f).
For information on filing a motion for leave to use testimony from another proceeding, see TBMP § 530.
Testimony from another proceeding may also be made of record in a Board proceeding by stipulation of the parties approved by the Board. The same is true of a discovery deposition.
NOTES:
1. 37 C.F.R. § 2.122(f). See Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 1317 (TTAB 1992) (stating that there is no prerequisite that the Board must have considered the testimony or determined the relevancy in the prior opposition, or that the adverse party actually attended the deposition when originally taken); Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 9 USPQ2d 1061, 1063 n.2 (TTAB 1988) (motion to use testimony from prior district court proceeding granted as uncontested and right to recall the witness waived since no request to do so was made), rev'd on other grounds, 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989); Oxy Metal Industries Corp. v. Technic, Inc., 189 USPQ 57, 58 (TTAB 1975) (motion to rely on testimony from prior cancellation proceeding between the parties granted, subject to applicant’s right to recall witnesses), summary judgment granted, 191 USPQ 50 (TTAB 1976); Izod, Ltd. v. La Chemise Lacoste, 178 USPQ 440 (TTAB 1973).
2. See Threshold.TV Inc. v. Metronome Enterprises Inc., 96 USPQ2d 1031, 1035 n.8 (TTAB 2010) (the term "testimony," as used in Trademark Rule 2.122(f), has been construed to mean only trial testimony, or a discovery deposition which was used, by agreement of the parties, as trial testimony in the other proceeding); Marcon Ltd. v. Avon Products Inc., 4 USPQ2d 1474, 1475 n.3 (TTAB 1987) (discovery deposition from previous proceeding to which applicant was not a party would not be admissible under this rule, but in this case, it was made of record by another means); Philip Morris Inc. v. Brown & Williamson Tobacco Corp., 230 USPQ 172, 182 (TTAB 1986) (cf. dissent at 182 n.13 contending that discovery deposition should have been admitted as admission against interest).
3. Threshold.TV Inc. v. Metronome Enterprises Inc., 96 USPQ2d 1031, 1035 (TTAB 2010).
4. See, e.g., Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1467 n.4 (TTAB 2016) (motions for leave to use testimony and evidence introduced in a civil action granted as uncontested); Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 9 USPQ2d 1061, 1063 n.2 (TTAB 1988) (evidence on the case); Oxy Metal Industries Corp. v. Technic, Inc., 189 USPQ 57, 58 (TTAB 1975) (summary judgment evidence).
704.14 Initial Disclosures and Disclosed Documents
37 C.F.R. § 2.120(k) Use of discovery deposition, answer to interrogatory, admission or written disclosure.
- (3)
- (i) A discovery deposition, an answer to an interrogatory, an admission to a request for admission, or a written initial disclosure, which may be offered in evidence under the provisions of paragraph (k) of this section, may be made of record in the case by filing the deposition or any part thereof with any exhibit to the part that is filed, or a copy of the interrogatory and answer thereto with any exhibit made part of the answer, or a copy of the request for admission and any exhibit thereto and the admission (or a statement that the party from which an admission was requested failed to respond thereto), or a copy of the written initial disclosure, together with a notice of reliance in accordance with § 2.122(g). The notice of reliance and the material submitted thereunder should be filed during the testimony period of the party that files the notice of reliance. An objection made at a discovery deposition by a party answering a question subject to the objection will be considered at final hearing.
- (ii) A party that has obtained documents from another party through disclosure or under Rule 34 of the Federal Rules of Civil Procedure may not make the documents of record by notice of reliance alone, except to the extent that they are admissible by notice of reliance under the provisions of § 2.122(e), or the party has obtained an admission or stipulation from the producing party that authenticates the documents.
- * * * *
- (5) Written disclosures, an answer to an interrogatory, or an admission to a request for admission, may be submitted and made part of the record only by the receiving or inquiring party except that, if fewer than all of the written disclosures, answers to interrogatories, or fewer than all of the admissions, are offered in evidence by the receiving or inquiring party, the disclosing or responding party may introduce under a notice of reliance any other written disclosures, answers to interrogatories, or any other admissions, which should in fairness be considered so as to make not misleading what was offered by the receiving or inquiring party. The notice of reliance filed by the disclosing or responding party must be supported by a written statement explaining why the disclosing or responding party needs to rely upon each of the additional written disclosures or discovery responses listed in the disclosing or responding party’s notice, and absent such statement, the Board, in its discretion, may refuse to consider the additional written disclosures or responses.
- (6) Paragraph (k) of this section will not be interpreted to preclude reading or use of written disclosures or documents, a discovery deposition, or answer to an interrogatory, or admission as part of the examination or cross-examination of any witness during the testimony period of any party.
- (7) When a written disclosure, a discovery deposition, or a part thereof, or an answer to an interrogatory, or an admission, or an authenticated and produced document has been made of record by one party in accordance with the provisions of paragraph (k)(3) of this section, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.
- (8) Written disclosures or disclosed documents, requests for discovery, responses thereto, and materials or depositions obtained through the disclosure or discovery process should not be filed with the Board, except when submitted with a motion relating to disclosure or discovery, or in support of or in response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party’s testimony period.
A written initial disclosure which may be offered in evidence under 37 C.F.R. § 2.120(k)(3)(i) may be made of record by filing a copy of the written disclosure with a notice of reliance. [ Note 1.] The notice of reliance and the material submitted should be filed during the testimony period of the party that files the notice of reliance. [ Note 2.]
Disclosed documents, if provided in lieu of descriptions of documents, may be introduced at trial by a notice of reliance but only if otherwise appropriate for such filing pursuant to 37 C.F.R. § 2.122(e), or the party has obtained an admission or stipulation from the producing party that authenticates the documents. [ Note 3.] See TBMP § 704.07 and TBMP § 704.08. In essence, initial written disclosures and initial disclosures of documents will be treated like responses to written discovery requests. [ Note 4.]
Written disclosures may be submitted and made part of the record only by the receiving or inquiring party except that, if fewer than all of the written disclosures are offered in evidence by the receiving or inquiring party, the disclosing or responding party may introduce under a notice of reliance any other written disclosures which should in fairness be considered so as to make not misleading what was offered by the receiving or inquiring party. The notice of reliance filed by the disclosing or responding party must comply with the requirements set forth in 37 C.F.R. § 2.122(g) and also be supported by a written statement explaining why the disclosing or responding party needs to rely upon each of the additional written disclosures or discovery responses listed in the disclosing or responding party’s notice, and absent such statement the Board, in its discretion, may refuse to consider the additional written disclosures or responses. [ Note 5.]
The Board will not interpret 37 C.F.R. § 2.120(k) to preclude the reading or use of written disclosures or documents as part of the examination or cross-examination of any witness during the testimony period of any party. [ Note 6.]
When a written disclosure or a part thereof has been made of record by one party in accordance with the provisions of 37 C.F.R. § 2.120(k)(3), it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. [ Note 7.]
Written disclosures or disclosed documents should not be filed with the Board, except when submitted with a motion relating to disclosure or discovery, or in support of or in response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party’s testimony period. [ Note 8.]
Please Note: Effective January 14, 2017, former subsection (j) of 37 C.F.R. § 2.120 was amended and redesignated as 37 C.F.R. § 2.120(k).
NOTES:
1. 37 C.F.R. § 2.120(k)(3)(i). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69962 (October 7, 2016) ("The Office is amending renumbered § 2.120(k)(3)(i) to clarify that the disclosures referenced are initial disclosures, to remove the exclusion of disclosed documents, and to incorporate a reference to new § 2.122(g)."); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1956 (TTAB 2008); Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1117 (TTAB 2005).
2. 37 C.F.R. § 2.120(k)(3)(i).
3. 37 C.F.R. § 2.120(k)(3)(ii). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69962 (October 7, 2016) ("The Office is amending renumbered § 2.120(k)(3)(ii) to add that a party may make documents of record by notice of reliance alone if the party has obtained an admission or stipulation from the producing party that authenticates the documents. This amendment is consistent with the amendment in renumbered § 2.120(i) permitting a party to make one comprehensive request for an admission authenticating specific documents produced by an adverse party.").
4. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See Kairos Institute. of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 (TTAB 2008).
5. 37 C.F.R. § 2.120(k)(5). See 37 C.F.R. § 2.122(g) and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) ("The Office is adding new § 2.122(g) detailing the requirement for admission of evidence by notice of reliance. Section 2.122(g) provides that a notice must indicate generally the relevance of the evidence offered and associate it with one or more issues in the proceeding, but failure to do so with sufficient specificity is a procedural defect that can be cured by the offering party within the time set by Board order. The amendment codifies current case law and Office practice."),
7. 37 C.F.R. § 2.120(k)(7). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.122(a), consistent with § 2.120(k)(7), to add that when evidence has been made of record by one party in accordance with these rules, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. The amendments codify current Office practice.").
8. 37 C.F.R. § 2.120(k)(8). See Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1542 n.3 (TTAB 2008).