704.03    Applications and Registrations

704.03(a)    Subject of Proceeding

37 C.F.R. § 2.122 

• (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

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).
  • (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.

 12.   37 C.F.R. § 2.122(d).

 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).

 28.   37 C.F.R. § 2.122(e).

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).

 11.   37 C.F.R. § 2.122(e).

 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).