701    Time of Trial

37 C.F.R. § 2.116 

• (b) The opposer in an opposition proceeding or the petitioner in a cancellation proceeding shall be in the position of plaintiff, and the applicant in an opposition proceeding or the respondent in a cancellation proceeding shall be in the position of defendant. A party that is a junior party in an interference proceeding or in a concurrent use registration proceeding shall be in the position of plaintiff against every party that is senior, and the party that is a senior party in an interference proceeding or in a concurrent use registration proceeding shall be a defendant against every party that is junior.
• (c) The notice of opposition or the petition for cancellation and the answer correspond to the complaint and answer in a court proceeding.
• (d) The assignment of testimony periods corresponds to setting a case for trial in court proceedings.
• (e) The submission of notices of reliance, declarations and affidavits, as well as the taking of depositions during the assigned testimony periods corresponds to the trial in court proceedings.

37 C.F.R. § 2.121  Assignment of times for taking testimony and presenting evidence.

• (a) The Trademark Trial and Appeal Board will issue a trial order setting a deadline for each party’s required pretrial disclosures and assigning to each party its time for taking testimony and presenting evidence ("testimony period"). No testimony shall be taken or evidence presented except during the times assigned, unless by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. The deadlines for pretrial disclosures and the testimony periods may be rescheduled by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. If a motion to reschedule any pretrial disclosure deadline and/or testimony period is denied, the pretrial disclosure deadline or testimony period and any subsequent remaining periods may remain as set. The resetting of the closing date for discovery will result in the rescheduling of pretrial disclosure deadlines and testimony periods without action by any party. The resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party.
• * * * *
• (b)
  • (1) The Trademark Trial and Appeal Board will schedule a testimony period for the plaintiff to present its case in chief, a testimony period for the defendant to present its case and to meet the case of the plaintiff, and a testimony period for the plaintiff to present evidence in rebuttal.
  • (2) When there is a counterclaim, or when proceedings have been consolidated and one party is in the position of plaintiff in one of the involved proceedings and in the position of defendant in another of the involved proceedings, or when there is an interference or a concurrent use registration proceeding involving more than two parties, the Board will schedule testimony periods so that each party in the position of plaintiff will have a period for presenting its case in chief against each party in the position of defendant, each party in the position of defendant will have a period for presenting its case and meeting the case of each plaintiff, and each party in the position of plaintiff will have a period for presenting evidence in rebuttal.
  
• (c) A testimony period which is solely for rebuttal will be set for fifteen days. All other testimony periods will be set for thirty days. The periods may be shortened or extended by stipulation of the parties approved by the Trademark Trial and Appeal Board, or may be extended upon motion granted by the Board, or by order of the Board. If a motion for an extension is denied, the testimony periods and their associated pretrial disclosure deadlines may remain as set.
• (d) When parties stipulate to the rescheduling of a deadline for pretrial disclosures and subsequent testimony periods or to the rescheduling of the closing date for discovery and the rescheduling of subsequent deadlines for pretrial disclosures and testimony periods, a stipulation presented in the form used in a trial order, signed by the parties, or a motion in said form signed by one party and including a statement that every other party has agreed thereto, shall be submitted to the Board through ESTTA, with the relevant dates set forth and an express statement that all parties agree to the new dates.
• (e) … [N]o later than fifteen days prior to the opening of each testimony period, or on such alternate schedule as may be provided by order of the Board, the party scheduled to present evidence must disclose the name and, if not previously provided, the telephone number and address of each witness from whom it intends to take testimony, or may take testimony if the need arises, general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness. The testimony of a witness may be taken upon oral examination and transcribed, or presented in the form of an affidavit or declaration, as provided in § 2.123. Pretrial disclosure of a witness under this paragraph (e) does not substitute for issuance of a proper notice of examination under § 2.123(c) or § 2.124(b). If a party does not plan to take testimony from any witnesses, it must so state in its pretrial disclosure.

On receipt of a properly filed notice of opposition or petition to cancel, or for a concurrent use proceeding which is not based on a court decision or a prior Board decision, see TBMP § 1106.04, the Board serves the complaint on the defendant in the form of a link to, or web address for, TTABVUE in the notice advising the parties of the institution of the proceeding. The notice includes a trial order setting deadlines for the answer, discovery conference, initial and expert disclosures, discovery, and each party’s required pretrial and rebuttal disclosures, and assigning each party’s trial period (referred to as the "testimony period" or "rebuttal period"), during which the party may take testimony and introduce other evidence in the case. [ Note 1.] See TBMP § 310.01 (oppositions and cancellations); TBMP § 1007 (interferences) and TBMP § 1106.04 (concurrent use proceedings). See also TBMP § 403.01.

In the trial order, the Board schedules a 30-day testimony period for the plaintiff to present its case in chief, a 30-day testimony period for the defendant to present its case and to meet the case of the plaintiff, and a 15-day testimony period for the plaintiff to present rebuttal testimony and evidence. [ Note 2.] The plaintiff’s period for presenting its case in chief is scheduled to open 60 days after the close of the discovery period; the defendant’s testimony period is scheduled to open 30 days after the close of the plaintiff’s testimony period in chief; and the plaintiff’s rebuttal testimony period is scheduled to open 30 days after the close of the defendant’s testimony period. [ Note 3.] The trial order also schedules the time for pretrial and rebuttal disclosures of witnesses: each party must make pretrial or rebuttal disclosures no later than fifteen days prior to the opening of its testimony or rebuttal period, respectively. [ Note 4.]

If there is a counterclaim, or if proceedings have been consolidated and one party is in the position of plaintiff in one of the involved proceedings and in the position of defendant in another, or if there is an interference or a concurrent use registration proceeding involving more than two parties, the Board schedules testimony periods as specified in 37 C.F.R. § 2.121(b)(2), i.e., giving each plaintiff a period for presenting its case in chief as against each defendant, giving each defendant a period for presenting its case and meeting the case of each plaintiff, and giving each plaintiff a period for rebuttal. The testimony periods are separated from the discovery period by a 60-day interval, and from each other by 30-day intervals. [ Note 5.] In an interference or concurrent use proceeding, a junior party is in the position of plaintiff and a senior party is in the position of defendant. [ Note 6.] See TBMP § 1005, TBMP § 1007 and TBMP § 1108.

A party may not take testimony or present evidence outside of its assigned testimony period, except by stipulation of the parties approved by the Board, or, on motion, by order of the Board. [ Note 7.]

Testimony periods may be rescheduled, extended, shortened, reopened, or bifurcated by stipulation of the parties approved by the Board, or on motion granted by the Board, or by order of the Board. [ Note 8.] See TBMP § 501 and TBMP § 509 regarding stipulations and motions to extend or reopen. A stipulation or consented motion to reschedule a deadline for pretrial disclosures and subsequent testimony periods or to reschedule the closing date for discovery and to reschedule subsequent deadlines for pretrial disclosures and testimony periods must be submitted to the Board through ESTTA and must be presented in the form used in a trial order with the relevant dates set forth, specifying the deadline for each subsequent period, including, as applicable, the deadline for initial, expert and pretrial disclosures, the closing date for discovery and testimony periods, and an express statement that the parties agree to the new dates. [ Note 9.] It is preferable, where such a motion is unconsented, that the motion request that the new deadlines be determined, and any period or periods be set to run, from the date of the Board’s decision on the motion. See TBMP § 509.02.

The resetting of the closing date for discovery results in the automatic rescheduling of pretrial disclosure deadlines and testimony periods, without action by any party. Likewise, the resetting of a party’s testimony period results in the automatic rescheduling of the remaining pretrial disclosure deadlines without action by any party. [ Note 10.] For information regarding extensions of the discovery period and time to respond to discovery requests, see TBMP § 403.04.

In Board inter partes proceedings, the submission of evidence and testimony during the parties’ assigned testimony periods corresponds to the trial in court proceedings. [ Note 11.] The trial period commences with the opening of the first testimony period. [ Note 12.] An oral hearing, if requested, corresponds to oral summation in court proceedings. [ Note 13.] See TBMP § 802.

The Board may sua sponte enter judgment for the defendant in cases where the plaintiff has not submitted evidence or taken testimony during its assigned testimony period where it is clear that the plaintiff has not offered any other evidence. [ Note 14.]

NOTES:

 1.   See 37 C.F.R. § 2.120(a)  and 37 C.F.R. § 2.121.

 2.   See 37 C.F.R. § 2.121(b)(1)  and 37 C.F.R. § 2.121(c).

 3.   See Stagecoach Properties, Inc. v. Wells Fargo & Co., 199 USPQ 341, 356 (TTAB 1978) (thirty-day interval between each testimony period), aff’d, 685 F.2d 302, 216 USPQ 480 (9th Cir. 1982).

 4.   See 37 C.F.R. § 2.121(e).

 5.   See 37 C.F.R. § 2.121(b)(2)  and 37 C.F.R. § 2.121(c). Sample trial schedules can be found in the Appendix of Forms.

 6.   See 37 C.F.R. § 2.99(e).

 7.   37 C.F.R. § 2.121(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.121(a) to clarify that evidence must be presented during a party’s testimony period, codifying current Office practice."). See also Spotify AB v. U.S. Software Inc., 2022 USPQ2d 37, at *5 (TTAB 2022) (objection sustained to testimony declaration executed more than one year prior to trial); Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 71345, at *2 (TTAB 2020) ("a party may introduce testimony and evidence only during its assigned testimony period"); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *2 n.3 (TTAB 2020) (parties stipulated that any declaration or affidavit shall be admissible even though executed before and not during the testimony period of a party); Optimal Chemical Inc. v. Srills LLC, 2019 USPQ2d 338409, at *3 n.28 (TTAB 2019) (submission of exhibits to the notice of reliance one month after the rebuttal period was untimely; however, since respondent did not object to their timeliness, the procedural objection was waived); Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *4 n.23 (TTAB 2019) (three year old declaration from application file was not of record as trial testimony as it was not executed (taken) during petitioner’s testimony period; declaration submitted with summary judgment reply brief that was executed several months before trial was not trial testimony and was not considered because it was not affirmed by other trial testimony that attested to its accuracy), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019); Baseball America Inc. v. Powerplay Sports, 71 USPQ2d 1844, 1846 n.8 (TTAB 2004) (documentary evidence submitted outside assigned testimony period given no consideration); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 n.4 (TTAB 2002) (parties stipulated that exhibits to their notices of reliance could be submitted after the close of each party’s testimony period); M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1072 (TTAB 1990) (untimely deposition stricken); Maytag Co. v. Luskin’s, Inc., 228 USPQ 747, 747 n.4 (TTAB 1986) (opposer’s discovery deposition of non-party witness treated as testimony deposition taken by stipulation prior to trial); Fischer GmbH. v. Molnar & Co., 203 USPQ 861, 867 (TTAB 1979) (discovery deposition of non-party inadmissible as evidence under a notice of reliance filed by one party without express or implied consent of adverse party; should have taken deposition during trial period or at least moved to take trial testimony prior to assigned testimony period).

Cf. International Dairy Foods Association v. Interprofession du Gruyère, 2020 USPQ2d 10892, at *3 n.12 (TTAB 2020) (declarations signed prior to testimony period and submitted by opposers as trial testimony considered to have been properly submitted because applicants did not object to them as untimely and treated them as part of the record by raising substantive objections against them), aff’d, ___ F. Supp. 3d ___, 2021 WL 6286234 (E.D. Va. Dec. 15, 2021), appeal docketed, No. 22-1041 (4th Cir. Jan. 11, 2022); Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (where opposer’s testimony deposition was taken two days prior to the opening of opposer’s testimony period, but applicant first raised an untimeliness objection in its brief on the case, objection held waived, since the premature taking of the deposition could have been corrected on seasonable objection).

 8.   Fed. R. Civ. P. 6(b); 37 C.F.R. § 2.121(a), 37 C.F.R. § 2.121(c)  and 37 C.F.R. § 2.121(d). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.121(c) to add that testimony periods may be shortened by stipulation of the parties approved by the Board or may be extended on motion granted by the Board or order of the Board."). See, e.g., AT&T Mobility LLC v. Thomann, 2020 USPQ2d 53785, at p.*3 (TTAB 2020) (parties stipulated to an initial trial phase directed to standing, and if standing was resolved in opposer’s favor, a subsequent trial phase directed to the remaining issues in the proceeding); Fairline Boats plc v. New Howmar Boats Corp., 59 USPQ2d 1479, 1480 (TTAB 2000) (motion to extend testimony filed on last day with vague references to settlement and no detailed information concerning apparent difficulty in identifying and scheduling its witnesses for testimony denied); Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1760 (TTAB 1999) (motion to extend denied where sparse motion contained insufficient facts on which to find good cause); Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1790 (TTAB 1998) (motion to reopen to submit new evidence denied); Pumpkin Ltd v. The Seed Corps, 43 USPQ2d 1582, 1588 (TTAB 1997) (motion to reopen filed over three months after close of testimony period, due to a docketing error, denied).

 9.   See 37 C.F.R. § 2.121(d). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.121(d) to add that stipulations to reschedule the deadlines for the closing date of discovery, pretrial disclosures, and testimony periods must be submitted through ESTTA with the relevant dates set forth and an express statement that all parties agree to the new dates. These amendments codify current Office practice.").

 10.   See 37 C.F.R. § 2.121(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.121(a) to clarify that evidence must be presented during a party’s testimony period. The Office is further amending § 2.121(a) to add that the resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party. These amendments codify current Office practice.").

 11.   See 37 C.F.R. § 2.116(e). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69959 (October 7, 2016) ("The Office is amending § 2.116(e) to add that the submission of notices of reliance, declarations, and affidavits, as well as the taking of depositions, during the testimony period corresponds to the trial in court proceedings. The revision codifies current Office practice and is consistent with amendments relating to declarations and affidavits."); Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988) (Board proceedings approximate the proceedings in a courtroom trial); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002) (trial in a Board proceeding takes place during the testimony periods).

 12.   37 C.F.R. § 2.121(a).

 13.   37 C.F.R. § 2.116(f).

 14.   37 C.F.R. § 2.132(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (October 7, 2016) ("The Office is amending § 2.132(a) to clarify that, if a plaintiff has not submitted evidence and its time for taking testimony has expired, the Board may grant judgment for the defendant sua sponte.").

702    Pretrial Disclosures; Manner of Trial; and Introduction of Evidence

37 C.F.R. § 2.121  Assignment of times for taking testimony and presenting evidence.

• (a) ... The resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party.
• (e) A party need not disclose, prior to its testimony period, any notices of reliance it intends to file during its testimony period. However, no later than fifteen days prior to the opening of each testimony period, or on such alternate schedule as may be provided by order of the Board, the party scheduled to present evidence must disclose the name and, if not previously provided, the telephone number and address of each witness from whom it intends to take testimony, or may take testimony if the need arises, general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness. The testimony of a witness may be taken upon oral examination and transcribed, or presented in the form of an affidavit or declaration, as provided in § 2.123. Pretrial disclosure of a witness under this paragraph (e) does not substitute for issuance of a proper notice of examination under § 2.123(c) or § 2.124(b). If a party does not plan to take testimony from any witnesses, it must so state in its pretrial disclosure. When a party fails to make required pretrial disclosures, any adverse party or parties may have remedy by way of a motion to the Board to delay or reset any subsequent pretrial disclosure deadlines and/or testimony periods. A party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition. When testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt filing of a motion to strike, as provided in §§ 2.123 and 2.124.

37 C.F.R. § 2.123(e)(3)  If pretrial disclosures or the notice of examination of witnesses served pursuant to paragraph (c) of this section are improper or inadequate with respect to any witness, an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances.

• (i) A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with § 2.121(e).
• (ii) A motion to strike the testimony of a witness for lack of proper or adequate notice of examination must request the exclusion of the entire testimony of that witness and not only a part of that testimony.

Fed. R. Civ. P. 26(a)(3) Pretrial Disclosures.

• (A) In General. In addition to the disclosures required by Rule 26(a)(1) and (2), a party must provide to the other parties and promptly file the following information about the evidence that it may present at trial other than solely for impeachment:
  • (i) the name and, if not previously provided, the address and telephone number of each witness — separately identifying those the party expects to present and those it may call if the need arises;
  • (ii) the designation of those witnesses whose testimony the party expects to present by deposition and, if not taken stenographically, a transcript of the pertinent parts of the deposition; and
  • (iii) an identification of each document or other exhibit, including summaries of other evidence — separately identifying those items the party expects to offer and those it may offer if the need arises.
  

702.01    Pretrial Disclosures

Pretrial disclosures are governed by 37 C.F.R. § 2.121(e)  and Fed. R. Civ. P. 26(a)(3) with one exception: the Board does not require pretrial disclosure of each document or other exhibit that a party plans to introduce at trial as provided by Fed. R. Civ. P. 26(a)(3)(A)(iii). [ Note 1.] Disclosures allow parties to know prior to trial the identity of trial witnesses, thus avoiding surprise witnesses. [ Note 2.]

Because the trial schedule in a Board proceeding employs alternating testimony periods with gaps between them, the due dates for pretrial disclosures will be different for each party and will be specified in the Board’s notice instituting the proceeding. [ Note 3.] Under 37 C.F.R. § 2.121(e), the party scheduled to present evidence must make pretrial disclosures no later than fifteen days prior to the opening of each testimony period, or on such alternate schedule as may be provided by order of the Board. Witnesses who are expected to or may testify must be disclosed under Fed. R. Civ. P. 26(a)(3)(A). [ Note 4.]

In making its pretrial disclosures, the party must disclose the name and, if not previously provided, the telephone number and address of each witness from whom it intends to take testimony, or may take testimony if the need arises. [ Note 5.] The party must disclose general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness. [ Note 6.]

Pretrial disclosure of a witness under 37 C.F.R. § 2.121(e)  does not substitute for issuance of a proper notice of examination under 37 C.F.R. § 2.123(c)  or 37 C.F.R. § 2.124(b). [ Note 7.]

If a party does not plan to take testimony from any witnesses in any form, it must so state in its pretrial disclosure. [ Note 8.]

When a party fails to make required pretrial disclosures, any adverse party or parties may have remedy by way of a motion to the Board to delay or reset any subsequent pretrial disclosure deadlines and/or testimony periods. [ Note 9.]

A party may object to improper or inadequate pretrial disclosures. [ Note 10.] See TBMP § 533.02(b).

The pretrial disclosure requirement cannot simply be ignored because some information about a testifying individual may be known by the adverse party or parties. [ Note 11.]

A party need not disclose, prior to its testimony period, any notices of reliance it intends to file during its testimony period. [ Note 12.] Thus, each document or other exhibit that a party plans to introduce at trial does not need to be disclosed to the other party. [ Note 13.] A party planning to introduce an adverse party’s discovery deposition, or part thereof, need not disclose such plans. [ Note 14.] For further information regarding the submission of discovery depositions under notice of reliance, see TBMP § 704.09.

If pretrial disclosures or the notice of examination of witnesses served pursuant to 37 C.F.R. § 2.123(c)  are improper or inadequate with respect to any witness, an adverse party may move to quash a noticed testimony deposition of that witness before the deposition occurs. [ Note 15.] The adverse party may also cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all relevant circumstances. [ Note 16.] When testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt filing of a motion to strike. [ Note 17.] A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with 37 C.F.R. § 2.121(e). [ Note 18.] On the other hand, a motion to strike the testimony of a witness for lack of proper or adequate notice of examination must request the exclusion of the entire testimony of that witness and not only a part of that testimony. [ Note 19.]

If the deficiencies in the pretrial disclosure are technical in nature, the parties are encouraged to resolve the matter between themselves, or to bring the matter to the Board’s attention promptly for resolution for judicial economy and before the parties incur the expense associated with taking a testimonial deposition. The Board allows parties to cure timely, but technically deficient matters. [ Note 20.]

A party making a pretrial disclosure is not required to file routinely a copy of such disclosure with the Board. In this regard, the Board’s practice varies slightly from that set forth in Fed. R. Civ. P. 26(a)(3)(A). Alerting the Board to a party’s witness list is not a purpose of the pretrial disclosure requirement, as the Board does not preside at the taking of testimony or at a pretrial conference. [ Note 21.]

Parties may stipulate to waive the requirement for pretrial disclosures in ACR cases. [ Note 22.]

The resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party. [ Note 23.]

For information on pretrial disclosure of expert witnesses, see TBMP § 401.03 or for motions to strike the testimony of an expert witness, see TBMP § 533.02(b).

NOTES:

 1.   See 37 C.F.R. § 2.121(e). Accord Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1103 (TTAB 2018).

 2.   Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372 (TTAB 2011) and Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009) (citing MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42257-58 (August 1, 2007)). See, e.g., Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1099-1104 (TTAB 2018) (opposer’s motion to strike pretrial disclosure of the identity of three witnesses denied--no surprise where one witness had been identified in initial and supplemental initial disclosures, and failure to disclose in supplemental initial disclosures the identities of the other two found substantially justified and harmless when applicant ascertained the identities shortly before serving pretrial disclosures, but applicant had listed the subject matter of their testimony in initial disclosures, and the record showed that opposer was aware of the witnesses and the pertinent information covered in their testimony declarations); Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015) (both parties are required to serve initial disclosures identifying witnesses having discoverable information and to serve pretrial disclosures naming the witnesses expected to testify at trial); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1655 (TTAB 2014) (identity of trial witnesses may not be designated as confidential) ,appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (witness first identified in pretrial disclosure and not previously identified in initial disclosures, discovery responses or supplements resulted in unfair surprise and was neither harmless nor substantially justified); Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011) (failure to identify witnesses during discovery but named in pretrial disclosures resulted in unfair surprise to adversary).

 3.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 4.   37 C.F.R. § 2.121(e). Accord Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1100-01 (TTAB 2018). See Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015); Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371-72 n.1 (TTAB 2011) ("A party is expected to disclose all witnesses it expects to call as well as those that it may call if the need arises").

 5.   37 C.F.R. § 2.121(e). See Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1099-1104 (TTAB 2018) (pretrial disclosures identifying three witnesses sufficient under the circumstances); Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371 (TTAB 2011) (pretrial disclosure adequate and sufficient); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444-45 (TTAB 2009) (under Trademark Rules, petitioner is required to name any witnesses from whom it intended to take testimony, or even might take testimony, if needed; 37 C.F.R. § 2.121(e) contemplates that contact information of a witness may previously have been provided to the party receiving a disclosure and need not be repeated). Cf. Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *2-3 (TTAB 2020) (respondent’s motion to strike rebuttal witness for failure to disclose denied where petitioner substituted its legal assistant for its previously disclosed attorney for same authentication purpose).

 6.   37 C.F.R. § 2.121(e). See Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1099-1104 (TTAB 2018) (applicant’s pretrial disclosures identifying three witnesses sufficient under the circumstances); Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 (TTAB 2015) (respondent’s pretrial disclosures defective to the extent that they fail to summarize the types of documents and things respondent intended to introduce as exhibits to his testimony; all forty-six exhibits attached thereto and all portions of respondent’s testimony referring to the attached exhibits not considered); Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371 (TTAB 2011) (pretrial disclosure adequate and sufficient).

 7.   37 C.F.R. § 2.121(e).

 8.   37 C.F.R. § 2.121(e).

 9.   37 C.F.R. § 2.121(e).

 10.   See 37 C.F.R. § 2.121(e)  and 37 C.F.R. § 2.123(e)(3). See also Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1655 (TTAB 2014) (identity of trial witnesses may not be designated as confidential), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 n.4 (TTAB 2011). Cf. Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *7 (TTAB 2020) (objection that evidence was not adequately disclosed in pretrial disclosures overruled as untimely when first raised in trial brief; objection is curable and should have been made via motion to strike promptly after testimony declaration and exhibits were filed); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *1 n.2 (TTAB 2019) (petitioner’s objection to respondent’s erroneous reference to Fed. R. Evid. 702 in its second amended pretrial disclosures overruled as harmless; error did not void the disclosures or any of the referenced testimony because of clarification in an earlier disclosure of the error and none of its disclosed witnesses were experts).

 11.   See Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009).

 12.   37 C.F.R. § 2.121(e). Accord Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 n.4 (TTAB 2015).

 13.   37 C.F.R. § 2.121(e).

 14.   See 37 C.F.R. § 2.120(k)(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.").

 15.   37 C.F.R. § 2.121(e). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.121(e) to add that a party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition. The amendment codifies current Office practice.").

 16.   37 C.F.R. § 2.123(e)(3).

 17.   37 C.F.R. § 2.121(e). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.121(e) to add that when testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt filing of a motion to strike…"). See also 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). Cf. Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *2-3 (TTAB 2020) (respondent’s motion to strike declaration of rebuttal witness denied where petitioner substituted its legal assistant for its previously disclosed attorney for same authentication purpose); Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1099-1104 (TTAB 2018) (denying opposer’s motion to strike pretrial disclosure of the identity of three witnesses where one witness had been identified in initial and supplemental initial disclosures and failure to disclose earlier the identities of the other two found substantially justified and harmless).

 18.   37 C.F.R. § 2.123(e)(3)(i). See Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1099-1104 (TTAB 2018) (denying opposer’s motion to strike pretrial disclosure of the identity of three witnesses where one witness had been identified in initial and supplemental initial disclosures and failure to disclose earlier the identities of the other two found substantially justified and harmless); Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 (TTAB 2015) (respondent’s improper service of pretrial disclosures at counsel for petitioner’s former address held harmless to the extent the disclosure identified a single witness, respondent himself); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1655 (TTAB 2014) (identity of trial witnesses may not be designated as confidential), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327-28 (TTAB 2011) (Opposer’s failure to name one witness until original pretrial closures and twenty-six witnesses until supplement to amended pretrial disclosures was neither harmless nor substantially justified and motion to quash granted as to twenty-six witnesses but testimony of one witness, identified months before in original pretrial disclosure, not excluded provided adverse party be given an opportunity to take a discovery deposition); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009) (failure to disclose testimony witness in initial disclosures considered as a relevant circumstance in determining whether to strike testimony deposition). Cf. Empresa Cubana Del Tabaco d.b.a Cubatabaco v. General Cigar Co., Inc., 2020 USPQ2d 10988, at *3 (TTAB 2020) (supplemental expert report stricken as untimely and improper supplementation under Fed. R. Civ. P. 26(e) because failure to disclose supplemental report not substantially justified or harmless).

 19.   37 C.F.R. § 2.123(e)(3)(ii).

 20.   See Carl Karcher Enterprise, Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 n.4 (TTAB 2011). Cf. Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011) (applicant could not cure surprise without moving to quash, or seeking to reopen discovery, or engaging in unplanned preparation to cross-examine witnesses identified for the first time in pretrial disclosures).

 21.   See Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 (TTAB 2011).

 22.   Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 n.5 (TTAB 2015) (where neither party served pretrial disclosures and the parties’ ACR stipulation did not provide for the exchange of pretrial disclosures, motion to strike witness declaration denied).

 23.   37 C.F.R. § 2.121(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.121(a) to add that the resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party. These amendments codify current Office practice.").

702.02    Introduction of Evidence

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.

37 C.F.R. § 2.120(k)(7)  When a written disclosure, a discovery deposition, or 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.

Unless the parties otherwise stipulate, the introduction of evidence in inter partes proceedings before the Board is governed by the Federal Rules of Evidence, the relevant portions of the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of the United States Code, and the rules of practice in trademark cases (i.e., the provisions of Part 2 of Title 37 of the Code of Federal Regulations). [ Note 1.] See TBMP § 101.01 and TBMP § 101.02. 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. [ Note 2.] See TBMP § 101.02

Within the parameters of these rules, there are a number of ways to introduce evidence into the record in a proceeding before the Board. Evidence may be introduced either in the form of testimony depositions taken by a party during its testimony period or in the form of affidavits or declarations subject to the right of the adverse party to conduct cross-examination. Documents and other exhibits may be made of record with appropriate identification and introduction by the witness during the course of the testimony deposition or in a testimony affidavit or declaration. See generally TBMP § 703.01 regarding affidavits, declarations and oral testimony depositions and TBMP § 703.02 regarding testimony depositions on written questions. See also TBMP § 704.13 regarding introducing testimony from another proceeding, and TBMP § 530 regarding motions to use testimony from another proceeding. Certain specified types of evidence, including official records and printed publications as described in 37 C.F.R. § 2.122(e)  and discovery responses under 37 C.F.R. § 2.120(k), may, but need not, be introduced in connection with the testimony of a witness. Such evidence may instead be made of record by filing the materials with the Board under cover of a notice of reliance during the testimony period of the offering party. [ Note 3.] See generally TBMP § 704.02 regarding the types of evidence that may be submitted by notice of reliance and the requirements for the introduction of such evidence by notice of reliance. In addition, the parties may enter into a wide variety of stipulations concerning the timing and/or introduction of specified matter into evidence. See TBMP § 705 regarding stipulated evidence. For example, the parties may stipulate that matter otherwise improper for a notice of reliance (such as documents obtained by production under Fed. R. Civ. P. 34) may be introduced in that manner, that a party may rely on its own discovery responses or that notices of reliance can be filed after the testimony periods have closed. There may also be circumstances where improperly offered or otherwise noncomplying evidence may nevertheless be deemed stipulated into the record where, for example, no objection to the evidence is raised and/or the nonoffering party treats the evidence as being of record. [ Note 4.] See generally TBMP § 704 regarding the introduction of other evidence, and TBMP § 704.11 regarding documents obtained through disclosure or document production request deemed stipulated into the record.

A discussion of the time and manner of taking testimony depositions, presenting testimony in affidavit or declaration form, and introducing evidence is presented in the sections that follow.

NOTES:

 1.   37 C.F.R. § 2.122(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.122(a) to clarify the heading of the paragraph and to specify that parties may stipulate to rules of evidence for proceedings before the Board."). See also Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (citing TBMP § 702.02 to support a finding that Board did not abuse its discretion in determining that a party submitted no evidence).

 2.   37 C.F.R. § 2.122(a)  and 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) (amended effective January 14, 2017 to codify current Board practice). See, e.g., Nazon v. Ghiorse, 119 USPQ2d 1178, 1181 n.6 (TTAB 2016) ("Once evidence is properly of record, it may be relied on by any party for any purpose.").

 3.   See Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 n.4 (TTAB 2002) (notices of reliance must be filed before closing date of party’s testimony period).

 4.   See, e.g., International Dairy Foods Association v. Interprofession du Gruyère, 2020 USPQ2d 10892, at *3 n.12 (TTAB 2020) (declarations signed prior to testimony period and submitted by opposers as trial testimony considered to have been properly submitted because applicants did not object to them as untimely, and, in fact, treated them as part of the record by raising substantive objections against them), aff’d, ___ F. Supp. 3d ___, 2021 WL 6286234 (E.D. Va. Dec. 15, 2021), appeal docketed, No. 22-1041 (4th Cir. Jan. 11, 2022); Optimal Chemical Inc. v. Srills LLC, 2019 USPQ2d 338409, at *14 n.90 (TTAB 2019) (Board considered Internet evidence for the truth of the matters asserted where the petitioner did not object and opined on its accuracy in its rebuttal testimony and rebuttal brief); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1787 n.5 (TTAB 2018) (because petitioner referred to and relied on respondent’s initial disclosures in presenting its case-in-chief, Board considered them stipulated into record); WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1038 (TTAB 2018) (portions of Internet evidence deemed stipulated into record where both parties submitted printouts via notices of reliance and each accepted as fact those portions); Executive Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1176 n.9 (TTAB 2017) ("because both parties introduced responses to document requests by notice alone and neither party objected, we will treat the responses as being stipulated into the record"); Coach Services Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1603, n.3 (TTAB 2010), aff’d-in-part, rev’d-in-part and remanded on other grounds, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012).

702.03    Manner of Trial

Because the Board is an administrative tribunal, its rules and procedures differ in some respects from those prevailing in the federal district courts. [ Note 1.] See TBMP § 102.03 regarding Board proceedings in general and TBMP § 502.01 regarding motions that may be filed at the Board. For example, in lieu of live testimony, proceedings before the Board are conducted in writing, and the Board’s actions in a particular case are based on the written record therein. [ Note 2.] The Board does not preside at the taking of testimony. Rather, all testimony is taken out of the presence of the Board, by affidavit or declaration, or on oral examination or written questions, and the affidavits, declarations and written deposition transcripts, together with any exhibits thereto, are then submitted to the Board. [ Note 3.]

Depositions may be noticed for any reasonable place in the United States. [ Note 4.] As a result, parties do not have to travel to the offices of the Board, or to the geographic area surrounding the Board’s offices, to take their testimony. Plaintiffs also have the option of presenting witness testimony in affidavit or declaration form subject to the right of any adverse party to elect to take and bear the expense of oral cross-examination of that witness. [ Note 5.] With regard to oral testimony depositions, any redirect and recross is to be taken at the same time as the oral cross-examination. [ Note 6.] See TBMP § 703.01(b) and TBMP § 703.01(h). Depositions and oral cross-examinations of deponents and affiants must be noticed for a reasonable place. [ Note 7.] Depositions and oral cross-examinations may be conducted by telephone or videoconference if the parties so agree. [ Note 8.] A party to a proceeding before the Board need never come to the offices of the Board at all, unless the party wishes to argue its case at oral hearing at the offices of the Board, or unless otherwise ordered by the Board.

An oral hearing is held only if requested by a party to the proceeding. [ Note 9.] See TBMP § 802.02.

Submissions made during the course of an inter partes proceeding are stored in electronic form and are available for viewing on the Board home page of the USPTO website via TTABVUE (http://ttabvue.uspto.gov ). Filings in Board proceedings are made electronically via ESTTA, and in the rare circumstances that filing in paper form is permitted under the rules, such paper submissions are scanned into the electronic record. The electronic record constitutes the official record of the proceeding. See TBMP § 120. No document, exhibit, etc., whether submitted electronically or as paper, will be considered as evidence in the case unless it has been introduced in evidence in accordance with the applicable rules, see TBMP § 706, [ Note 10.], or the parties stipulate or otherwise treat the evidence as being of record, see TBMP § 702.02.

For a further discussion regarding viewing and obtaining Board records, see TBMP § 121.

If the parties to a proceeding desire to obtain a final resolution of a proceeding prior to the scheduled trial period, they may consider Accelerated Case Resolution ("ACR"). For information on ACR, see TBMP § 528.05(a)(2), TBMP § 702.04 and TBMP § 705.

NOTES:

 1.   See Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988); La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm’r 1976). For a general discussion of inter partes proceedings before the Board, see B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015).

 2.   37 C.F.R. § 2.191. B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015).

 3.   See B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *3 n.6 (TTAB 2019) ("Under the amended Rules, trial testimony is still not ‘in court’ or taken ‘live’ before the Board."); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1553 (TTAB 1991); La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm’r 1976).

 4.   See 37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.123(c). See, e.g., Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *1 n.3 (TTAB 2019) (Board ordinarily finds the vicinity of the witness’ place of business or domicile to be a reasonable place for oral cross-examination). Cf. USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047-48 (TTAB 2017) (notice of election of oral cross-examination requiring declarants to travel from Washington, DC, where they live and work, to Santa Monica, CA quashed because not noticed for reasonable place).

 5.   37 C.F.R. § 2.123(a)(1). See Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 (TTAB 2019) (a respondent who takes testimony by declaration bears the expense of producing its witnesses for oral cross-examination while a petitioner must schedule the witnesses and bear the expense of the court reporter); Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1166 (TTAB 2017) (party seeking oral cross-examination of affiant or declarant bears cost of its own travel and attorney expenses, the court reporter, and, if necessary, the venue). Cf. WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (opposer’s objection to applicant’s testimony declarations overruled where applicant provided notice to opposer via pretrial disclosures about witnesses and the subject matter of their anticipated testimony, testimony declarations were timely served, and opposer had opportunity but chose not to cross-examine the witnesses).

 6.   Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *4-5 (TTAB 2020) (overruling objection to redirect examination of a testimony declarant after oral cross-examination).

 7.   See Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *1 n.3 (TTAB 2019) (Board ordinarily finds the vicinity of the witness’ place of business or domicile to be a reasonable place for oral cross-examination). Cf. USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047-48 (TTAB 2017) (notice of election of oral cross-examination requiring declarants to travel from Washington, DC, where they live and work, to Santa Monica, CA quashed because not noticed for reasonable place).

 8.   See Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 (TTAB 2019) (granting petitioner’s alternate motion to take oral cross-examination by telephone or remotely by other means, due to concern about travel and accommodation expense); USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1048 (TTAB 2017) (notice of election of oral cross-examination of declarants quashed because not noticed for reasonable place, but applicant may accept opposer’s offer to make witnesses available for oral cross-examination by videoconference or telephone, thus alleviating some concern about travel and attorney expenses).

 9.   See 37 C.F.R. § 2.129(a).

 10.   See 37 C.F.R. § 2.123(k).

702.04    Accelerated Case Resolution

702.04(a)    In General

Accelerated Case Resolution ("ACR") is an alternative to typical Board inter partes proceedings with full discovery, trial and briefing, in which parties to a Board proceeding can obtain a determination of the claims and defenses in their case in a shorter time period than contemplated in the typical Board proceeding. The form of ACR can vary, but the process generally approximates a summary bench trial or cross-motions for summary judgment and accompanying evidentiary submissions that the parties agree to submit in lieu of creating a traditional trial record [ Note 1.] and traditional briefs at final hearing. Other approaches to accelerating resolution of a case include simplifying proceedings through the use of fact stipulations and stipulations regarding the admissibility of certain evidence. [ Note 2.] Clearly worded stipulations are vital, regardless of the ACR form. [ Note 3.] Oral hearings generally are available in ACR cases in accordance with 37 C.F.R. § 2.129(a). See TBMP § 802. If parties agree to conduct the case as an ACR case and to utilize the bench trial or cross-motions for summary judgment model, and the Board approves trial of the case by ACR, the Board generally will render a final decision within fifty (50) days following the completion of briefing.

By reducing the complexity of a case and total time expended in litigating a case, ACR is a more efficient and economical alternative to the typical Board inter partes proceeding. Not all Board cases involve complicated or disputed facts or require the full discovery and trial periods set out by the Trademark Rules, to arrive at a final determination. Parties may therefore save time and expense by focusing only on those issues genuinely in dispute, and opting for ACR early in the proceeding. For example, if the parties stipulate to facts, no time need be spent proving those facts (although there may be some typical costs involved in preparing and exchanging documents and other materials that illustrate for the involved parties that facts are not genuinely in dispute and therefore can be stipulated). When the issues in a proceeding are limited, savings can be even greater, because all aspects of the proceeding, including discovery, trial and briefing, are focused on such limited matters. While many of the changes to the Board’s rules in 2017 were adopted with an eye towards smoother and more efficient inter partes proceedings, parties are encouraged to continue to explore whether ACR is useful to them, and to craft stipulations that work for them and accelerate the timing of the Board’s final decision. [ Note 4.]

The Board is willing to consider almost any claim under ACR unless the complexity or novelty of the facts and/or legal theory of the case requires a full trial. However, the most appropriate cases for ACR are those in which, for example, little discovery is necessary, the parties are able to stipulate to many facts, each party expects to rely on the testimony of one or two witnesses, or the overall record will not be extensive. [ Note 5.] ACR may not be suited to cases that generate a large record, complicated factual or legal issues, or cases where the parties are unwilling to stipulate to any matters (i.e., limitations on discovery or trial schedules, the absence of any genuine dispute about particular facts, or entry of evidence into the record).

ACR presently can be implemented only by consent of the parties and agreement by a Board attorney or judge, and will not be approved by unilateral motion of one party. ACR can also be implemented by all parties accepting an invitation or suggestion from a Board attorney or judge to participate in the process. [ Note 6.] The parties are required to discuss the possibility of using ACR in their discovery conference and may seek the assistance of the Board in structuring their case so that it qualifies for ACR and the Board’s objective to render a decision within fifty days (50) from the completion of briefing. [ Note 7.]

Parties seeking to optimize their chances for early determination of their case and savings in their resources are advised to opt for ACR early in the proceeding. To opt for ACR, the parties may jointly file a statement indicating their desire to proceed under ACR along with a proposed modified schedule which may include an abbreviated discovery period and/or briefing period under any form of ACR. The assigned attorney may, and likely will, then convene a conference by telephone to discuss the proceeding with the parties and explore how they wish to proceed under ACR. The parties may seek Board assistance when contemplating ACR to determine which form of ACR to follow and/or determine the discovery, trial and briefing schedule. Any modified discovery, trial and briefing schedule, including limits on discovery or discovery devices or trial, must be negotiated by the parties and approved by the Board. If, however, the parties choose to follow the traditional discovery and trial schedule, but merely wish to stipulate to particular facts or that particular items of evidence shall be considered by the Board, they may so agree and file their written agreement with the Board without need of a conference with a Board attorney. While this approach yields efficiency and savings, since prescribed discovery procedures and discovery and trial schedules are unchanged, a conference with a Board attorney typically would not be necessary.

The parties may limit discovery in a number of ways. For example, parties may limit the number of interrogatories, requests for production and requests for admissions as well as the number and duration of discovery depositions. They may exchange more extensive disclosures in lieu of formal discovery, or stipulate to facts and the exchange of certain documents, or propound interrogatory requests only on particular issues. If the parties are unable to agree on discovery limits, they will not have optimized any cost and time savings available through ACR. When discovery devices (e.g., number of depositions, document requests, or interrogatory requests) are limited, practice is necessarily more focused and cost efficient.

Parties which agree to conduct the proceeding under ACR and which have stipulated to limited discovery may still take testimonial depositions or introduce testimony by affidavit or declaration, subject to the right of the nonoffering party to cross-examine the witness. By limiting the number or duration of testimonial depositions, or by introducing testimony by affidavit or declaration, they may realize additional savings in cost and time. They may also agree that the offering party may use discovery depositions at trial.

Parties may also agree under ACR to forego pretrial disclosures. Furthermore, if an ACR stipulation is silent on the issue of pretrial disclosures and no pretrial disclosures were in fact filed by either party, the Board will interpret the stipulation as waiving this requirement. [ Note 8.]

The standards of proof in an ACR proceeding are the same as the standards of proof in a traditional Board proceeding. In either an opposition or cancellation, the burden of proof remains with the plaintiff, who must establish its case by a preponderance of the evidence. [ Note 9.] In a concurrent use proceeding, the burden of proof remains with the applicant, who is in the position of the plaintiff. [ Note 10.]

A final decision rendered under ACR may be appealed in the same manner and under the same time frames as non-ACR decisions by the Board. [ Note 11.] For further information regarding appeals of inter partes decisions, see TBMP Chapter 900.

Parties to cancellation proceedings involving only claims of abandonment or nonuse (or both) are encouraged to agree to ACR. [ Note 12.]

Please Note: Some of the cases cited in this section established efficiencies later codified in amended 37 C.F.R. § 2.123(a)(1), effective January 14, 2017, which allows parties to present direct testimony by affidavit or declaration subject to cross-examination by the adverse party.

NOTES:

 1.   See, e.g., Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *2 (TTAB 2020); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *2-3 (TTAB 2020); Stawski v. Lawson, 129 USPQ2d 1036, 1039 (TTAB 2018), appeal dismissed, No. 19-1617 (Fed. Cir. December 19, 2019); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1787 (TTAB 2018); Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1602 (TTAB 2018); TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411 (TTAB 2018); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 (TTAB 2015); Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1304 (TTAB 2014); Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2016 (TTAB 2014); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1950 (TTAB 2014), 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) appeal dismissed without prejudice sub nom. Snyder’s- Lance, Inc. v. Frito-Lay North America, Inc., 414 F. Supp. 3d 822, 2019 USPQ2d 401574 (W.D.N.C. 2019), reversed and remanded on other grounds, 991 F.3d 512 (4th Cir. 2021); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1827-28 (TTAB 2012); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 676 (TTAB 1986). See also Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 47 USPQ2d 1953, 1954-55 (2d Cir. 1998).

 2.   See, e.g., Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *2 (TTAB 2020) (per ACR stipulation, opposer withdrew some claims with prejudice; applicant stipulated as to opposer’s standing; parties agreed to rely on materials submitted with summary judgment briefs as trial evidence with the right to supplementation during trial; parties reserved the right to object to evidence on substantive grounds); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *2-3 (TTAB 2020) (parties waived disclosures and discovery, stipulated to facts, and filed their testimony and evidence with their main briefs in lieu of trial); Stawski v. Lawson, 129 USPQ2d 1036, 1039-40 (TTAB 2018) (per ACR stipulation in concurrent use proceeding, "all office records, matters of public record, affidavits, declaratitons and the like incorporated in or annexed as exhibits to the prior or final motions, affidavits or declarations shall be deemed to have been properly filed pursuant to notice of reliance under Trademark Rule 2.122(e)." Parties also agree to forego traditional trial and oral hearing, and to submit evidence with their briefs), appeal dismissed, No. 19-1617 (Fed. Cir. December 19, 2019); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016) (parties stipulated to forgo reply briefing and that they could rely on the materials submitted in connection with previously filed motions for summary judgment); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 (TTAB 2015) (parties filed ACR stipulation to present all testimony by declaration and to submit discovery responses and documents produced in discovery as exhibits without the need for accompanying testimony); Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (parties filed ACR stipulation, agreed to forego discovery, waived disclosures, stipulated to facts and attached documents, filed briefs with additional evidence); Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734, 1738 (2014) (parties filed joint stipulation that testimony could be submitted by declaration or affidavit subject to cross-examination upon request, and all documents produced in response to a request for production of documents were deemed authentic business records and were admissible subject to any objections other than authenticity); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 (TTAB 2014) (parties’ stipulation under ACR provided limitations on discovery, excluded the filing of motions for summary judgment and the use of expert testimony, streamlined the methods for introduction of evidence during trial, stipulated to fact regarding no actual confusion), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1186 (TTAB 2014) (stipulation to the admission and use of produced documents and waiver of objections based on authenticity or hearsay); Sheetz of Delaware Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344 (TTAB 2013) (parties stipulated under ACR that they could rely on the materials submitted in support of and against opposer’s previously filed motion for summary judgment, that testimony could be submitted by declaration, that pretrial disclosures were not required, and that all evidence may be submitted through declarations or notices of reliance); Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1547 (TTAB 2012) (parties filed a joint stipulation of undisputed facts); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676 (TTAB 2007) (parties stipulated to the entire record: 13 paragraphs of facts, including applicant’s dates of first use, channels of trade for applicant, extent and manner of applicant’s use, recognition by others of applicant’s use, as well as the dates, nature and extent of descriptive use by the opposer’s parent company; the admissibility of business records, government documents, marketing materials and Internet printouts and to forgo trial).

 3.   See Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1602 n.3 (TTAB 2018) ("To obtain the full benefit of ACR, it is important that parties draft clearly-worded stipulations regarding procedures, claims and defenses, and the factual record.").

 4.   See TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1412 (TTAB 2018) (highlighting continued utility of ACR following 2017 rules changes).

 5.   See Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1828 (TTAB 2012) (for claim of likelihood of confusion, parties’ stipulations included priority, pleaded registration, and "lawn seed" and "grass seed" as legally identical descriptions of goods).

 6.   See Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *2 (TTAB 2020) (parties agreed to ACR at Board’s suggestion made in prior Board order denying motion for partial summary judgment); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at * 1-2 (TTAB 2020) (Board identified case as eligible for expedited cancellation pilot; after Board case conference, parties agreed to litigate the proceeding as an expedited cancellation using ACR procedures); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1787 (TTAB 2018) (Board identified case as candidate for pilot expedited cancellation proceeding, suggested same to parties during their discovery conference, and parties agreed to participate); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Hewlett-Packard Development Co. v. Vudu Inc., 92 USPQ2d 1630, 1634 n.6 (TTAB 2009) (in granting partial summary judgment, the Board suggested the parties may seek to use ACR on the remaining disputed issues without the need for a formal trial).

 7.   See Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (early election of ACR, no motion practice, utilized conference with Board attorney for dispute re: stipulation, from notice to briefing less than a year, resulting in clean and concise record); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 n.3 (TTAB 2014) (ACR proceeding experienced delay in issuing decision due to precedential nature of decision and the number and nature of objections), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1829-30 n.9 (TTAB 2012) (although the parties crafted and proceeded with their own ACR approach, better practice is to contact the assigned Board attorney when the parties elect to pursue ACR); Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009).

 8.   Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 n.5 (TTAB 2015) ("While parties are obligated to identify trial witnesses in their pretrial disclosures, there is no indication in the record that either party served pretrial disclosures in this ACR case (and the parties’ ACR Stipulation does not provide for the exchange of pretrial disclosures)." No basis for motion to strike and declaration at issue considered).

 9.   B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049, 2056 (2015) (party opposing registration bears the burden of proof); Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).

 10.   See Stawski v. Lawson, 129 USPQ2d 1036, 1038 (TTAB 2018), appeal dismissed, No. 19-1617 (Fed. Cir. December 19, 2019).

 11.   See 37 C.F.R. § 2.145.

 12.   See Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at pp. *1-2 (TTAB 2020) (Board identified case as eligible for expedited cancellation pilot; after Board case conference, parties agreed to litigate the proceeding as an expedited cancellation using ACR procedures); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1787 (TTAB 2018) (case decided under expedited cancellation pilot using ACR procedures).

702.04(b)    ACR using Summary Judgment Briefs

For a case prosecuted on the summary judgment model of ACR, the trial and briefing periods occur in one phase. That is, the summary judgment briefs and accompanying evidentiary submissions encompass both the trial and briefing periods. Because the parties have, in essence, agreed to create the record for the case by their summary judgment submissions, testimony will be presented by affidavit or declaration, and any exhibits referenced by the affiants or declarants.

In addition to filing summary judgment briefs, the parties should file a joint stipulation of undisputed facts, and, as attachments or exhibits to their briefs, any materials that, in a typical trial, could be submitted by notice of reliance (the notice of reliance itself need not be filed). The parties are free to enter into other stipulations regarding the submission of evidence. [ Note 1.] For example, they may agree that documents and things produced in response to requests for production may be submitted as exhibits without the need for accompanying testimony. The stipulations regarding the submission of evidence remove any question about the admissibility of the evidence, but the parties may reserve the right to object to the evidence on substantive grounds such as competency, relevancy or materiality, or the weight to be accorded particular items of evidence. [ Note 2.] A party may not raise objections to the admissibility of evidence that it has stipulated into the record. [ Note 3.] To obtain the full benefit of ACR, parties should draft clearly-worded stipulations about procedures, evidence, and the factual record. [ Note 4.] Parties may stipulate to facts, supported by the record, that underlie necessary legal determinations such as whether the plaintiff has an entitlement to a statutory cause of action to bring the proceeding (formerly referred to as "standing"), see TBMP § 309.03(b), or whether confusion is likely. [ Note 5.] However, because the Board makes determinations of the law governing a registration dispute, the Board is not bound by the parties’ stipulations or agreements with respect to questions of law. [ Note 6.]

ACR summary judgment briefs may be presented either as cross motions for summary judgment or as a single motion for summary judgment. If the parties stipulate to ACR and file cross motions for summary judgment, each party is entitled to file a response to the other’s motion and a reply in support of its own motion. [ Note 7.] If the parties stipulate to ACR and the summary judgment motion is in the form of a single motion by plaintiff, then defendant may file a brief in response and only plaintiff is entitled to file a reply. [ Note 8.] In the absence of a stipulation to the contrary, the parties are limited to 25 pages for the ACR summary judgment briefs, inclusive of table of contents and cases, index of cases, description of the record, statement of the issues, recitation of facts, argument and summary. Reply briefs are limited to 10 pages unless otherwise stipulated [ Note 9.] and arguments should be restricted to rebuttal of the adverse party’s case in chief.

In using the summary judgment form of ACR, the parties must provide a stipulation that the Board may resolve any genuine disputes of material fact that may be presented by the record or which may be discovered by the panel considering the case at final hearing. [ Note 10.]

If the parties decide early in the case to use the ACR motion for summary judgment model, they should file a stipulation with the Board selecting the ACR summary judgment model and setting forth the negotiated schedule for discovery and any limitation on discovery, submission of stipulations, and briefing. [ Note 11.]

For more information regarding ACR motions for summary judgment, see TBMP § 528.05(a)(2).

NOTES:

 1.   See, e.g., TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411 (TTAB 2018); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).

 2.   See, e.g., TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411 (TTAB 2018).

 3.   See Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1827 (TTAB 2009) (by stipulating to introduction of affidavit and its exhibits into evidence, applicant waived its right to object to the admissibility of exhibits attached to affidavit), 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. Mar. 7, 2013).

 4.   See Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1602 n.3 (TTAB 2018) (parties had "somewhat different views" about language in their stipulation, Board emphasized importance of drafting "clearly-worded stipulations" so parties may "obtain the full benefit of ACR").

 5.   Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *3 n.6 (TTAB 2020) ("while the parties may not stipulate to a plaintiff’s standing in the absence of supporting facts, thereby creating standing where none otherwise exists, the parties may stipulate as to the facts which would support standing, eliminating the need for separate proof of those facts.").

 6.   Cf. Sanford’s Estate v. Commissioner of Internal Revenue, 308 U.S. 39, 51 (1939) ("We are not bound to accept, as controlling, stipulations as to questions of law") (citing Swift & Co. v. Hocking Valley Railway Co., 243 U.S. 281, 289 (1917)); Technicon Instruments Corp. v. Alpkem Corp., 866 F.2d 417, 9 USPQ2d 1540, 1543 (Fed. Cir. 1989) ("If the stipulation is to be treated as an agreement concerning the legal effect of admitted facts, it is obviously inoperative, since the court cannot be controlled by agreement of counsel on a subsidiary question of law.") (quoting Swift & Co. v. Hocking Valley Railway Co., 243 U.S. 281, 289 (1917)); Julius Forstmann & Co. v. United States, 26 CCPA 336, 338 (CCPA 1939) ("in attempting to stipulate facts, it is clear that litigants improperly circumscribe the freedom of the judicial function, it is elementary that such stipulations [of law] are not binding upon the court"); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *3 n.6 (TTAB 2020) ("while the parties may not stipulate to a plaintiff’s standing in the absence of supporting facts, thereby creating standing where none otherwise exists, the parties may stipulate as to the facts which would support standing, eliminating the need for separate proof of those facts.").

 7.   37 C.F.R. § 2.127(a)  and 37 C.F.R. § 2.127(e)(1).

 8.   37 C.F.R. § 2.127(a)  and 37 C.F.R. § 2.127(e)(1).

 9.   37 C.F.R. § 2.127(a). But see Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775 (TTAB 2013) (parties’ ACR agreement provided that "the page limit for the parties’ briefs shall be the page limit permitted for trial briefs pursuant to Trademark Rule 2.128(b).").

 10.   See, e.g., TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411 (TTAB 2018); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).

 11.   See, e.g., Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775 (TTAB 2013) (pursuant to their ACR stipulation, parties agreed to forgo discovery and reliance on expert testimony).

702.04(c)    ACR Conversion - Summary Judgment Briefs

In circumstances where the parties have already filed summary judgment briefs, the Board may, in appropriate cases, invite the parties to agree to the Board’s treatment of the summary judgment briefs and evidence as the final records and briefs. [ Note 1.] Alternatively, the parties may stipulate to treating the summary judgment briefs and evidence as the record and final briefs on the case, even in the absence of an invitation to do so extended by the Board. [ Note 2.]

In either case, the parties must stipulate that the Board may resolve any genuine disputes of material fact that may be presented by the record or which may be discovered by the panel considering the case at final hearing.

For more information regarding ACR motions for summary judgment, see TBMP § 528.05(a)(2).

NOTES:

 1.   See, e.g., Daniel J. Quirk Inc. v. Village Car Co., 120 USPQ2d 1146, 1147 and 1147 n.5 (TTAB 2016); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1950 (TTAB 2014) (after suggestion by Board in order denying motion for summary judgment, parties stipulated to forego trial and rely on evidence submitted in support of the motions for summary judgment, supplemented by expert declarations, trial briefs and an oral hearing), 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), dismissed without prejudice sub nom. Snyder’s-Lance, Inc. v. Frito-Lay North America, Inc., 414 F. Supp. 3d 822, 2019 USPQ2d 401574 (W.D.N.C. 2019), reversed and remanded on other grounds, 991 F.3d 512 (4th Cir. 2021).

 2.   See, e.g., Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Freeman v. National Association of Realtors, 64 USPQ2d 1700, 1701 (TTAB 2002) (parties stipulated that case would be decided on petitioner’s motion for summary judgment and respondent’s response); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 676 (TTAB 1986) (parties stipulated that cross motions for summary judgment would be treated as testimony, evidence and briefs at final hearing).

702.04(d)    ACR using Stipulated Record and Trial Briefs

Under the stipulated record and trial briefs ACR model, the case proceeds to final decision on an evidentiary record that has been stipulated to, in whole or in substantial part. Thus, the parties must be prepared to stipulate to the admissibility of most of the record. They may, however, reserve the right to object in trial briefs on substantive grounds to particular evidence such as on the grounds of competency, relevancy or materiality. Testimony periods may not be needed for cases prosecuted on the stipulated record model (with or without stipulated facts), if the evidentiary record has been stipulated to by the parties. [ Note 1.] Essentially, the parties are agreeing to an abbreviated trial on the merits.

Just as with any non-ACR case, the Board will decide disputed facts as part of the final decision.

The Board has found that cases that proceed along the ACR stipulated record model, involving many stipulated facts and stipulated evidence, yield highly effective records because evidentiary submissions are focused on the disputed facts. Stipulations of fact are useful but are not required in an ACR case prosecuted on a stipulated record.

Parties which agree to conduct the proceeding under ACR and which have stipulated to limited discovery may still take testimonial depositions or introduce testimony by affidavit or declaration, subject to the right of the nonoffering party to cross-examine the witness. However, by limiting the number or duration of testimonial depositions or testimony in affidavit or declaration form, they may realize additional savings in cost and time. They may also agree to use discovery depositions at trial.

Parties using this form of ACR and who agree to forgo the testimony period should file a stipulation indicating such an intention, along with their stipulations to the record with respect to facts, evidence and testimony (e.g., using discovery depositions in lieu of testimonial depositions). [ Note 2.] To obtain the full benefit of ACR, parties should draft clearly-worded stipulations. Parties may stipulate to facts, supported by the record, that underlie necessary legal determinations such as whether the plaintiff has an entitlement to a statutory cause of action to bring the proceeding (formerly referred to as "standing"), see TBMP § 309.03(b), or whether confusion is likely. However, because the Board makes determinations of the law governing a registration dispute, the Board is not bound by the parties’ stipulations or agreements with respect to questions of law. [ Note 3.]

Stipulations regarding the submission of evidence promote efficiency by removing any question about the admissibility of the evidence, while still allowing the parties to reserve the right to object to the evidence on substantive grounds such as competency, relevancy or materiality. [ Note 4.] A party may not raise objections to the admissibility of evidence that it has stipulated into the record. [ Note 5.]

As with regular trial briefs, the parties are limited to 55 pages for the ACR trial briefs under the stipulated record model, inclusive of table of contents, index of cases, description of the record, statement of issues, recitation of the facts, argument and summary. [ Note 6.] Unless counterclaims are involved, only the plaintiff may file a reply brief, and it is limited to 25 pages consisting solely of a rebuttal of the adverse party’s case in chief. [ Note 7.] See TBMP § 801.

For additional information regarding stipulated evidence and ACR, see TBMP § 705.

NOTES:

 1.   See, e.g., Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *2 (TTAB 2020) (parties stipulated to file testimony and documentary evidence submitted together with their main briefs in lieu of trial); Lebanon Seaboard Corp. v. R & R Turf Supply, Inc., 101 USPQ2d 1826, 1828 (TTAB 2012) (parties stipulated to a schedule that did not include testimony periods, but resulted in the concurrent submission of briefs and supporting evidence); Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties selected ACR and agreed to forgo trial by stipulating to use evidence submitted in support of opposer’s motion for summary judgment as trial evidence and allowing for any additional evidence to be submitted with their trial briefs on the case); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties stipulated to the entirety of the record and agreed to forgo trial).

 2.   See, e.g., Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (early election of ACR, no motion practice, utilized conference with Board attorney for dispute re stipulation, resulted in clean and concise record, and the time frame from notice to briefing took less than a year); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 (TTAB 2014) (parties’ stipulation under ACR provided limitations on discovery, excluded the filing of motions for summary judgment and the use of expert testimony, streamlined the methods for introduction of evidence during trial, stipulated to fact regarding no actual confusion), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1547 (TTAB 2012) (parties filed a joint stipulation of undisputed facts and a stipulation to seek a determination through ACR); Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties agreed to forgo trial by stipulating to use evidence submitted in support of opposer’s motion for summary judgment as trial evidence and allowing for any additional evidence to be submitted with their trial briefs on the case); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties stipulated to the entirety of the record and stipulated to forgo trial); Zimmerman v. National Association of Realtors, 70 USPQ2d 1425, 1427 (TTAB 2004) (in addition to reliance on a discovery deposition of one of the parties, the parties stipulated that the evidentiary record from an earlier Board case would be considered); Devries v. NCC Corp., 227 USPQ 705, 708 (TTAB 1985) (parties stipulated to waive trial periods and stipulated to the following: petitioner’s pleaded registration; each party’s responses to certain interrogatories and requests for production of documents served upon it by the other party; and stipulated facts and affidavit testimony, with attached exhibits).

But see Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1830 (TTAB 2012) (parties who stipulated to certain facts and issues, yet also submitted evidence to prove these points, have gone to needless effort and expense and the Board unnecessarily must review this evidence).

 3.   Sanford’s Estate v. Commissioner of Internal Revenue, 308 U.S. 39, 51 (1939) ("We are not bound to accept, as controlling, stipulations as to questions of law") (citing Swift & Co. v. Hocking Valley Railway Co., 243 U.S. 281, 289 (1917)); Technicon Instruments Corp. v. Alpkem Corp., 866 F.2d 417, 9 USPQ2d 1540, 1543 (Fed. Cir. 1989); ("If the stipulation is to be treated as an agreement concerning the legal effect of admitted facts, it is obviously inoperative, since the court cannot be controlled by agreement of counsel on a subsidiary question of law.") (quoting Swift & Co. v. Hocking Valley Railway Co., 243 U.S. 281, 289 (1917)); Julius Forstmann & Co. v. United States, 26 CCPA 336, 338 (CCPA 1939) ("in attempting to stipulate facts, it is clear that litigants improperly circumscribe the freedom of the judicial function, it is elementary that such stipulations [of law] are not binding upon the court"); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *3 n.6 (TTAB 2020) ("while the parties may not stipulate to a plaintiff’s standing in the absence of supporting facts, thereby creating standing where none otherwise exists, the parties may stipulate as to the facts which would support standing, eliminating the need for separate proof of those facts.").

 4.   See Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties agreed to reserve the right to object to facts and documents on the bases of relevance, materiality and weight). See also Real Foods Pty Ltd. v. Frito-Lay North America, Inc., 906 F.3d 965, 128 USPQ2d 1370, 1376 (Fed. Cir. 2018) (the parties waived objections to the admissibility of the evidence, without prejudice to their rights to argue the probative value of such evidence, in order to take advantage of the Board’s Accelerated Case Resolution procedure).

 5.   See Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1827 (TTAB 2009) (by stipulating affidavit and exhibits thereto into evidence, applicant waived its right to object to the admissibility of exhibits attached to affidavit), 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).

But see Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, 111 USPQ2d 1559, 1561 (TTAB 2014) (parties’ stipulation provided for the admission into evidence of specific dated expert reports and accompanying exhibits and an expert discovery deposition transcript, but did not provide for the admission into evidence of any supplemental expert reports or additional expert testimony by affidavit or declaration, in view thereof, supplemental expert report not admissible on this basis).

 6.   37 C.F.R. § 2.128(b).

 7.   37 C.F.R. § 2.128(b).

702.04(e)    Utilizing Stipulations in Non-ACR Board cases

37 C.F.R. § 2.123(b)  Stipulations. If the parties so stipulate in writing, depositions may be taken before any person authorized to administer oaths, at any place, upon any notice, and in any manner, and when so taken may be used like other depositions. The parties may stipulate in writing what a particular witness would testify to if called; or any relevant facts in the case may be stipulated in writing.

37 C.F.R. § 2.127(e)(2)  If any motion for summary judgment is denied, the parties may stipulate that the materials submitted with briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional evidence during trial.

Parties may utilize stipulations of facts and evidence to realize cost efficiencies in non-ACR cases. For example, they may stipulate to the entire record, to portions of the record, or to particular facts. [ Note 1.] The parties are reminded that the Board is not bound by stipulations as to questions of law. [ Note 2.] If any motion for summary judgment is denied, the parties may stipulate that the materials submitted with briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional evidence during trial. [ Note 3.] Parties may stipulate to ACR-type efficiencies at any stage of a proceeding in order to expedite the remainder of the trial schedule.

See TBMP § 705 regarding stipulated evidence.

Please Note: Some of the cases cited in this section established principles later codified in amended 37 C.F.R. § 2.123(a)(1), effective January 14, 2017, which allows parties to unilaterally present direct testimony by affidavit or declaration subject to cross-examination by the adverse party.

NOTES:

 1.   See 37 C.F.R. § 2.123(b)  and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.123(b) … to clarify that parties may stipulate to any relevant facts."). See, e.g., The Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *2 (TTAB 2020) (parties stipulated to admission of evidence: documents produced through discovery may be submitted under notice of reliance without witness testimony and will be deemed authentic business records; documents submitted in conjunction with an earlier-filed summary judgment motion deemed admitted into record; and the admission of testimony and related exhibits by declaration, and of discovery depositions and related exhibits by notice of reliance), appeal dismissed-in-part, aff’d-in-part, vacated-in-part, and remanded, 17 F.4th 129, 2021 USPQ2d 1069 (Fed. Cir. 2021); New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, at *3 (TTAB 2020) (parties stipulated to the admissibility and authenticity of evidence); Moke America LLC v. Moke USA, LLC, 2020 USPQ2d 10400, at *1-2, nn.8, 10 and 11 (TTAB 2020) (parties stipulated to admissibility of interrogatory responses through notice of reliance, and to withdraw certain paragraphs from two testimony declarations), civil action filed, No. 3:20-cv-00400-MHL (E.D. Va. June 5, 2020); AT&T Mobility LLC v. Thomann, 2020 USPQ2d 53785, at *3-5, *4-5 nn. 13, 14, & 20 (TTAB 2020) (parties stipulated to bifurcate the proceeding into two phases, with the initial phase directed to standing, and if opposer was found to have standing, the second phase directed to remaining issues; stipulation as to expert testimony and stipulation as to authenticating evidence as business records); Hanscomb Consulting, Inc. v. Hanscomb Ltd., 2020 USPQ2d 10085,at *2 (TTAB 2020) (parties stipulated to treat discovery responses and documents produced in earlier Board proceeding as discovery responses and documents produced in response to discovery requests in present Board proceeding); Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 USPQ2d 460354, at *2 (TTAB 2019) (parties stipulated to admissibility of certain declarations and exhibits submitted by each party on summary judgment), complaint filed, No. 20-cv-109 (M.D.N.C. Feb. 3, 2020); Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *1 n.5 (TTAB 2019) (parties stipulated to treat discovery responses provided in prior federal civil action as responses to discovery propounded in Board proceeding, and to introduce the discovery depositions of certain witnesses taken in the Board proceeding as trial testimony in lieu of taking their testimonial depositions); Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1416 (TTAB 2016) (parties stipulated that testimony may be introduced by affidavit or declaration in lieu of testimonial depositions and that the documents exchanged during discovery are authentic and may be made of record by either party); Ayoub, Inc. v. ACS Ayoub Carpet Services, 118 USPQ2d 1392, 1394 (TTAB 2016) (parties stipulated to submission of testimony by declaration, to the use of any Fed. R. Civ. P. 30(b)(6) discovery deposition transcripts in their case-in-chief or rebuttal, and to the authenticity of all documents produced by either party during discovery); N.Y. Yankees Partnership v. IET Products & Services, Inc., 114 USPQ2d 1497, 1500 (TTAB 2015) (parties stipulated that witness testimony would be submitted solely by declaration and without cross-examination); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1426 (TTAB 2014) (stipulation to submission of witness declarations and discovery depositions, the authenticity of certain documents, retail prices of opposers’ goods, the fact that advertisements and news articles refer to opposers, and press clippings are representative of the media in which opposers advertise); Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734, 1738 (2014) (parties filed joint stipulation that testimony could be submitted by declaration or affidavit subject to cross-examination upon request, and all documents produced in response to a request for production of documents were deemed authentic business records and were admissible subject to any objections other than authenticity); Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1186 (TTAB 2014) (stipulation to the admission and use of certain produced documents and waiver of objections based on authenticity or hearsay as to those documents); Miller v. Miller, 105 USPQ2d 1615, 1617 n.6 (TTAB 2013) (parties stipulated to testimony by affidavit and provided a stipulation of undisputed facts); Blackhorse v. Pro-Football Inc., 111 USPQ2d 1080, 1084-85 (TTAB 2014) (parties stipulated that the record of a prior proceeding may be submitted into evidence under notice of reliance reserving the right to object based on relevance) aff’d, 112 F. Supp. 3d 439, 115 USPQ2d 1524 (E.D. Va. 2015), vacated and remanded on other grounds, 709 F. App’x 183 (4th Cir. 2018) (mem.); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1563 (TTAB 2011) (parties stipulated to authenticity of produced documents and to the introduction of testimony in affidavit or declaration form, with certain guidelines), rev’d on other grounds, slip op. No. 11-3684 (D.N.J. August 29, 2017); Kistner Concrete Products Inc. v. Contech Arch Technologies Inc., 97 USPQ2d 1912, 1915 (TTAB 2011) (parties stipulated to authenticity of produced documents); Brooks v. Creative Arts by Calloway, LLC, 93 USPQ2d 1823, 1824-25 (TTAB 2010) (parties stipulated to admission of various testimony declarations and to facts), 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); UMG Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1044 (TTAB 2009) (parties stipulated to introduce testimony by declaration and to live cross-examination); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1585 (TTAB 2008) (parties stipulated to testimony by declaration, with exhibits); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1847 n.5 (TTAB 2008) (stipulation to use discovery depositions as trial testimony); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 n.2 (TTAB 1998) (stipulation to use evidence and exhibits submitted in connection with a motion for summary judgment at trial); Domino’s Pizza Inc. v. Little Caesar Enterprises Inc., 7 USPQ2d 1359, 1360 (TTAB 1988) (stipulations to facts by applicant, testimony by affidavit by opposer, and use of certain testimonial depositions taken in prior civil action); Wilderness Group, Inc. v. Western Recreational Vehicles, Inc., 222 USPQ 1012, 1013 (TTAB 1984) (stipulated to the filing of facts and exhibits on behalf of each party during each party’s testimony period); Hayes Microcomputer Products, Inc. v. Business Computer Corp., 219 USPQ 634, 635 (TTAB 1983) (parties stipulated to facts, legal conclusions and testimony, including cross-examination and redirect examination with respect to stipulated testimony).

 2.   Sanford’s Estate v. Commissioner of Internal Revenue, 308 U.S. 39, 51 (1939) ("We are not bound to accept, as controlling, stipulations as to questions of law") (citing Swift & Co. v. Hocking Valley Railway Co., 243 U.S. 281, 289 (1917)); Technicon Instruments Corp. v. Alpkem Corp., 866 F.2d 417, 9 USPQ2d 1540, 1543 (Fed. Cir. 1989); ("If the stipulation is to be treated as an agreement concerning the legal effect of admitted facts, it is obviously inoperative, since the court cannot be controlled by agreement of counsel on a subsidiary question of law.") (quoting Swift & Co. v. Hocking Valley Railway Co., 243 U.S. 281, 289 (1917); Julius Forstmann & Co. v. United States, 26 CCPA 336, 338 (CCPA 1939), ("in attempting to stipulate facts, it is clear that litigants improperly circumscribe the freedom of the judicial function, it is elementary that such stipulations [of law] are not binding upon the court"); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *3 n.6 (TTAB 2020) ("while the parties may not stipulate to a plaintiff’s standing in the absence of supporting facts, thereby creating standing where none otherwise exists, the parties may stipulate as to the facts which would support standing, eliminating the need for separate proof of those facts.").

 3.   37 C.F.R. § 2.123(e)(2). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69967 (October 7, 2016) ("The Office is amending § 2.127(e)(2) to add that if a motion for summary judgment is denied, the parties may stipulate that the materials submitted with briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional evidence during trial. The revision codifies an approach used by parties in proceedings incorporating ACR-type efficiencies at trial.").

702.05    Overly Large Records

The Board notes that in recent years there has been a trend regarding the introduction of irrelevant and/or cumulative evidence at trial. [ Note 1.] The Board views parties who engage in this practice with disfavor. [ Note 2.] The introduction of such evidence impedes the orderly administration of the case, and obscures the impact of truly relevant evidence. In addition to diminishing the effectiveness of a party’s evidentiary record, "papering" the Board causes delays in rendering a final decision. Parties should submit only relevant, non-cumulative evidence. [ Note 3.] For all evidence submitted under notice of reliance, the notice must indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding. [ Note 4.] Failure to do so, however, is a curable procedural defect that does not necessitate reopening a party’s testimony period. [ Note 5.] For a discussion of the requirements for evidence submitted under notice of reliance, see TBMP § 704.02.

The Board may require the parties to take steps to assist with organizing the evidence such as preparing and filing tables summarizing testimony and other evidence and specifying 1) the probative value of particular facts or testimony and 2) the location in the record of such facts or testimony. [ Note 6.] Deposition transcripts must contain a word index, listing the pages where the words appear in the deposition. [ Note 7.]

Pursuant to 37 C.F.R. § 2.120(j)(2), the Board may require the parties to meet with the Board for a pretrial conference where the Board has determined that the case has the potential to become overly contentious and/or involve the creation by the parties of excessive records. [ Note 8.] See TBMP § 502.06(b) for more information about pretrial conferences.

NOTES:

 1.   See, e.g., Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *5, n.18 (TTAB 2020) (given parties’ ACR stipulation, opposer’s refiling of numerous portions of its summary judgment evidence was duplicative and unnecessary); RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1803 (TTAB 2018) (the parties introduced into the record thousands of pages of testimony and other evidence without regard to what they needed to prove), aff’d, 377 F. Supp. 3d 588 (E.D. Va. 2019), aff’d, 986 F.3d 361, 2021 USPQ2d 81 (4th Cir. 2021); Sheetz of Delaware Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344 n.5 (TTAB 2013) ("While we commend the parties for agreeing to efficiencies intended to facilitate the introduction of evidence at trial, ideally, [ACR] cases do not merely facilitate introduction of more evidence, but should also limit the amount of evidence placed before the Board."); Corporacion Habanos S.A. v. Guantanamera Cigars, Co., 102 USPQ2d 1085, 1091 (TTAB 2012) (another case which does not warrant a record of this size); UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1873 (TTAB 2011) (overly large records tax the resources of the Board and are entirely unnecessary); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591-92 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential) (Board expressed frustration with sizeable record and overzealous litigation); Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1218 (TTAB 2011) (with its supplemental notice of reliance, plaintiff resubmitted the first 25 items listed in its first notice of reliance, needlessly adding bulk to the record and wasting Board resources); Stuart Spector Designs Ltd. v. Fender Musical Instruments, Corp., 94 USPQ2d 1549, 1552 (TTAB 2009) ("voluminous" evidence of record); Carefirst of Maryland Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495 (TTAB 2005) ("It is simply inconceivable to the Board that the issues herein warranted either a record of this size or the large number of motions relating thereto."), aff’d, 479 F.3d 825, 81 USPQ2d 1919 (Fed. Cir. 2007). See also United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) ("The case was neither prosecuted nor defended based on any clear theory of the case. Neither party made a concise and compelling evidentiary showing, and neither was judicious in the introduction of only relevant testimony and evidence.").

 2.   See, e.g., RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1803 (TTAB 2018) ("Simply put, the parties introduced into the record thousands of pages of testimony and other evidence without regard to what they needed to prove, apparently in the hope that in wading through it, we might find something probative. This is not productive. ‘Judges are not like pigs, hunting for truffles buried in briefs.’") aff’d, 377 F. Supp. 3d 588 (E.D. Va. 2019), aff’d, 986 F.3d 361, 2021 USPQ2d 81 (4th Cir. 2021); Sheetz of Delaware Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344 n.5 (TTAB 2013) ("A larger record is not necessarily a better record."); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential) ("Even counsel at the oral hearing acknowledged that the present record is of a magnitude generally reserved for district court litigation."); Carefirst of Maryland Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495 (TTAB 2005) ("It is simply inconceivable to the Board that the issues herein warranted either a record of this size or the large number of motions relating thereto."), aff’d, 479 F.3d 825, 81 USPQ2d 1919 (Fed. Cir. 2007).

 3.   See, e.g., Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *5, n.18 (TTAB 2020) (given parties’ ACR stipulation, opposer’s refiling of numerous portions of its summary judgment evidence was duplicative and unnecessary); RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1803 (TTAB 2018) (thousands of pages of testimony and other evidence without regard to what needed to be proved, is not productive. "Neither party made a concise and compelling evidentiary showing, and neither was judicious in the introduction of only relevant testimony and evidence."), aff’d, 377 F. Supp. 3d 588 (E.D. Va. 2019), aff’d, 986 F.3d 361, 2021 USPQ2d 81 (4th Cir. 2021); Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1040 n.19 (TTAB 2010) ("It is not necessary for the parties to introduce every document obtained from an Internet search especially when it includes duplicative and irrelevant materials."); Blue Man Productions v. Tarmann, 75 USPQ2d 1811, 1814 (TTAB 2005) (foreign language materials submitted with no translation), rev’d on other grounds, slip op No. 05-2037 (D.D.C. Apr. 3, 2008).

 4.   37 C.F.R. § 2.122(g). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69652, 69964 (October 7, 2016) (" … 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, e.g., Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1164 (TTAB 2017) (failure to delineate the relevant element of a claim or defense for specific pages in the notice of reliance as required under Trademark Rule 2.122(g) is "particularly problematic because of the sheer volume of pages").

 5.   37 C.F.R. § 2.122(g). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69652, 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."). See, e.g., Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1164 (TTAB 2017) (failure to comply with Trademark Rule 2.122(g) is a curable defect that can be remedied without reopening party’s testimony period).

 6.   See AT&T Mobility LLC v. Thomann, 2020 USPQ2d 53785, at *12 (TTAB 2020) (parties required to file an appendix of all testimony and documentary evidence, explaining relevance, location in record where found, and TTABVUE docket entry and page number where evidentiary item appears; parties required to add electronic bookmarks to any testimony or evidence filed as a PDF document in ESTTA); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1592 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential) (after oral hearing, Board required parties to submit a joint index and amended briefs with citations to the joint index); Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1635-36 (TTAB 2011) (tables of evidence required).

 7.   37 C.F.R. § 2.123(g)(3). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.123(g)(3) to add that deposition transcripts must contain a word index, listing the pages where the words appear in the deposition.").

 8.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69951 (October 7, 2016) ("The existing rule for convening a pretrial conference because of the complexity of issues is amended so that it is limited to exercise only by the Board, upon the Board’s initiative.").

703    Taking and Introducing Testimony

703.01    Affidavits, Declarations and Oral Testimony Depositions

703.01(a)    In General

In addition to submission of evidence under notices of reliance, parties may introduce evidence in the form of testimony depositions taken by a party during its assigned testimony period, or in the form of affidavit or declaration testimony submitted during its testimony period, subject to the right of the adverse party to conduct cross-examination. The submission of evidence and testimony during the parties’ assigned testimony periods corresponds to the trial in court proceedings. [ Note 1.] For information concerning submission of evidence by notice of reliance, see TBMP § 704.

Testimony is taken out of the presence of the Board, by affidavit or declaration, or on oral examination or written questions, and the affidavits, declarations and written deposition transcripts, together with any exhibits thereto, are then submitted to the Board. See TBMP § 702. See also TBMP § 502.01. During a party’s testimony period, testimony is taken by or on behalf of the party, of the party himself or herself (if the party is an individual), or of an official or employee of the party, or of some other witness testifying (either willingly or under subpoena) on behalf of the party.

Testimony affidavits, declarations and depositions are the means by which a party may present the testimony of its witnesses and also introduce into the record those documents and other exhibits that may not be made of record by notice of reliance. See generally TBMP § 704 describing types of evidence admissible by notice of reliance. However, only evidence admissible under the applicable rules of evidence may properly be adduced during a testimony deposition or presented by affidavit or declaration; inadmissibility is a valid ground for objection. [ Note 2.] See TBMP § 707.03. In addition, once evidence has properly been made of record, any party may refer to it for any purpose permitted by the Federal Rules of Evidence. [ Note 3.]

Declarations or affidavits from the application file, that form part of the record, are not trial testimony under 37 C.F.R. § 2.122(b)(2). [ Note 4.]

For a comparison of testimony depositions and discovery depositions, see TBMP § 404.09. For information on how to make discovery depositions of record during trial, see TBMP § 704.09.

NOTES:

 1.   37 C.F.R. § 2.116(e). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69959 (October 7, 2016) ("The Office is amending § 2.116(e) to add that the submission of notices of reliance, declarations, and affidavits, as well as the taking of depositions, during the testimony period corresponds to the trial in court proceedings. The revision codifies current Office practice and is consistent with amendments relating to declarations and affidavits."). See Spotify AB v. U.S. Software Inc., 2022 USPQ2d 37, at *5 (TTAB 2022) (objection sustained to testimony declaration executed more than one year prior to trial); Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *3-4 (TTAB 2019) (absent stipulation or Board order, "a testimony affidavit or declaration must be taken–that is, executed–during the assigned testimony period, as required by Rule 2.121(a)"), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *2 (TTAB 2019) (during its testimony period a party may take the testimony of a witness, by affidavit or declaration, or by deposition upon oral examination, or, if the witness is located in a foreign country, by deposition upon written questions); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 n.4 (TTAB 2002) ("trial testimony depositions are noticed and taken during the party’s assigned testimony period"). For a general discussion of Board inter partes proceedings, see B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015).

 2.   See 37 C.F.R. § 2.122(a)  and 37 C.F.R. § 2.123(l); Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *3 (TTAB 2019) (declaration testimony submitted during opposer’s testimony period is trial testimony, not hearsay, and "the equivalent of live testimony ‘in court.’").

 3.   37 C.F.R. § 2.122(a). 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, e.g., New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, at *12 (TTAB 2020) (citing Trademark Rule 2.122(a)); Nazon v. Ghiorse, 119 USPQ2d 1178, 1181 n.6 (TTAB 2016) ("Once evidence is properly of record, it may be relied on by any party for any purpose."). See also Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 129 USPQ2d 1027, 1030 n.29 (TTAB 2018) (party may rely on testimony from a discovery deposition already made of record by adverse party-no need to resubmit), rev'd and remanded on other grounds, 965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir. 2020), reh'g en banc denied, 2020 USPQ2d 11438 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 82 (2021); Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984) (once filed, testimony depositions are of record for both parties for all relevant purposes; adversary’s discovery responses, once filed, are considered to be in evidence for both parties for all purposes permitted by the Federal Rules of Evidence). 37 C.F.R. § 2.120(k)(7).

 4.   Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *4, n.23 (TTAB 2019) (declaration submitted in application file during prosecution not considered trial testimony since it was dated over three years prior to petitioner’s testimony period; declaration submitted with summary judgment reply brief that was executed several months before trial was not trial testimony and was not considered because it was not affirmed by other trial testimony that attested to its accuracy), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019).

703.01(b)    Form of Testimony

37 C.F.R. § 2.123 

• (a)
  • (1) The testimony of witnesses in inter partes cases may be submitted in the form of an affidavit or a declaration pursuant to § 2.20 and in conformance with the Federal Rules of Evidence, filed during the proffering party’s testimony period, subject to the right of any adverse party to elect to take and bear the expense of oral cross-examination of that witness as provided under paragraph (c) of this section if such witness is within the jurisdiction of the United States, or conduct cross-examination by written questions as provided in § 2.124 if such witness is outside the jurisdiction of the United States, and the offering party must make that witness available; or taken by deposition upon oral examination as provided by this section or by deposition upon written questions as provided by § 2.124.
  • (2) Testimony taken in a foreign country shall be taken by deposition upon written questions as provided by § 2.124, unless the Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate; or by affidavit or declaration, subject to the right of any adverse party to elect to take and bear the expense of cross-examination by written questions of that witness. If a party serves notice of the taking of a testimonial deposition upon written questions of a witness who is, or will be at the time of the deposition, present within the United States or any territory which is under the control and jurisdiction of the United States, any adverse party may, within twenty days from the date of service of the notice, file a motion with the Trademark Trial and Appeal Board, for good cause, for an order that the deposition be taken by oral examination.
  
• (b) Stipulations. If the parties so stipulate in writing, depositions may be taken before any person authorized to administer oaths, at any place, upon any notice, and in any manner, and when so taken may be used like other depositions. The parties may stipulate in writing what a particular witness would testify to if called; or any relevant facts in the case may be stipulated in writing.

Ordinarily, the testimony of a witness may be taken by affidavit, declaration or on oral examination pursuant to 37 C.F.R. § 2.123, or by deposition on written questions pursuant to 37 C.F.R. § 2.124. [ Note 1.] For information concerning testimony depositions on written questions, see TBMP § 703.02.

A party may unilaterally choose to submit the trial testimony of any witness or witnesses of any party in the form of an affidavit or declaration pursuant to 37 C.F.R. § 2.20  and in conformance with the Federal Rules of Evidence, subject to the right of any adverse party to cross-examine the witness orally if the witness is within the jurisdiction of the United States, or by written questions pursuant to 37 C.F.R. § 2.124  if the witness is not within the jurisdiction of the United States. [ Note 2.] The affidavit or declaration must be under oath and subject to cross-examination. [ Note 3.] In addition, the offering party must make the witness available for cross-examination if elected. [ Note 4.] As with cross-examination at oral testimony depositions, the party cross-examining the affiant or declarant must pay its own travel and attorney expenses. [ Note 5.] The proffering party has and continues to bear the expense of producing its witness. [ Note 6.] However, the party seeking oral cross-examination of an affiant or declarant must cover the expense of the court reporter. [ Note 7.] Any redirect and recross is to be taken at the same time as the oral cross-examination, with the party who originally sought oral cross-examination bearing the cost of the court reporter. [ Note 8.]

The Board ordinarily finds the vicinity of the witness’ place of business or domicile to be a reasonable place for oral cross-examination of an affiant or declarant. [ Note 9.] By stipulation or upon motion for good cause, oral cross-examination of a witness located within the jurisdiction of the United States may be conducted by telephone or other remote means. [ Note 10.]

The testimony of a witness ordinarily may also be taken by deposition on written questions. [ Note 11.] However, testimony taken in a foreign country must be taken: by deposition on written questions, unless the Board, on motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate; or by affidavit or declaration, subject to the right of any adverse party to elect to take and bear the expense of cross-examination by written questions of that witness. [ Note 12.] See TBMP § 404.03(b), TBMP § 520, TBMP § 531 and TBMP § 703.02.

If a declaration or affidavit of a witness in a foreign country is offered, the proffering party must make the witness available for cross-examination by written questions. [ Note 13.] A party seeking cross-examination by written questions of an affiant or declarant outside the jurisdiction of the United States must cover the expense of the court reporter or other official to swear in the witness, record the answers and to create a written transcript of the examination. [ Note 14.] See TBMP § 703.02(g) for information on cross-examination of the witness by written questions, including the procedures for redirect and recross by written questions.

In addition, if a party serves notice of the taking of a testimony deposition on written questions of a witness who is, or will be at the time of the deposition, present within the United States (or any territory that is under the control and jurisdiction of the United States), any adverse party may, within 20 days from the date of service of the notice, file a motion with the Board, for good cause, for an order that the deposition be taken by oral examination. [ Note 15.] What constitutes good cause to take an oral deposition is determined on a case-by-case basis. [ Note 16.] See TBMP § 531.

Parties may stipulate that depositions may be taken in a foreign country by oral examination. [ Note 17.] The parties should determine whether the taking of the oral deposition will be permitted by the foreign country, and, if so, what procedure must be followed. [ Note 18.] See TBMP § 703.01(g).

The parties may also stipulate in writing to any relevant facts in the case, or what a particular witness would testify to if called, or that a party may use a discovery deposition as testimony. [ Note 19.] See TBMP § 702.04(e) regarding stipulations.

NOTES:

 1.   See 37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.123(a)(2). Effective January 14, 2017, the Office amended these rules by allowing a unilateral option for trial testimony by affidavit or declaration subject to the right of oral cross-examination by the adverse party or parties. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69951 (October 7, 2016). See Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *4 n.21 (TTAB 2019) (referencing TBMP § 703.01(a)), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *2 (TTAB 2019).

 2.   37 C.F.R. § 2.123(a)(1). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.123(b) to remove the requirement for written agreement of the parties to submit testimony in the form of an affidavit, as provided in amendments to § 2.123(a)(1), and to clarify that parties may stipulate to any relevant facts."). See Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *2 (TTAB 2019) (amended Trademark Rules provide for testimony by declaration, even in the absence of a stipulation); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *2 (TTAB 2019) (the method of cross-examination of a witness who presented testimony by affidavit or declaration depends on whether the witness is located in the United States or outside the jurisdiction of the United States); Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *2 (TTAB 2019) (if the offering party submits trial testimony in the form of an affidavit or declaration of a foreign witness, the adverse party may elect to take and bear the expense of cross-examination by written questions of that witness).

 3.   See 37 C.F.R. § 2.123(a)(1); B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 135 S. Ct. 1293, 113 USPQ2d 2045 (2015) (Supreme Court focused on fact that Board proceedings require testimony to be under oath and subject to cross-examination); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (concerning the unilateral option of permitting submission of witness testimony by affidavit or declaration, "The new procedure retains what the Supreme Court focused on in B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, 113 USPQ2d 2045 (2015): That testimony be under oath and subject to cross-examination. The ability to elect cross-examination of the witness in the new unilateral procedure maintains the fairness and weightiness of Board proceedings."); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *2 (TTAB 2019) (testimony by declaration or affidavit is subject to the right of the adverse party to elect cross-examination); Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *2 (TTAB 2019) (same); Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1102 (TTAB 2018) ("[T]he right to seek cross examination is integral to the right to offer testimony by declaration."); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1790, 1790 n.16 (TTAB 2018) (statements made in defendant’s initial disclosures about attached documents are not properly sworn or otherwise verified under Trademark Rule 2.20 and thus are not testimony; defendant could have introduced additional documents through testimony of potential witness listed in initial disclosure, subject to cross-examination, but defendant chose not to do so); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1790 n.18 (TTAB 2018) (unsworn statement, submitted with duplicate copies of initial disclosures, simply "declaring" use of the mark during the relevant period not considered because defendant’s statement that "the foregoing is true and correct" is not in affidavit form).

See also WeaponX Performance Products. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (opposer’s objection to applicant’s testimony declarations overruled where applicant provided notice to opposer via pretrial disclosures about witnesses and the subject matter of their anticipated testimony, testimony declarations were timely served, and opposer had opportunity but chose not to cross-examine the witnesses).

 4.   37 C.F.R. § 2.123(a)(1); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *2-3 (TTAB 2019) (party offering witness testimony by declaration or affidavit bears the expense of producing witnesses for oral cross-examination for witness within jurisdiction of the United States); Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *2 (TTAB 2019) (party offering foreign witness testimony by declaration or affidavit must make witness available for cross-examination by written questions); Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1104 n.9 (TTAB 2018) ("when choosing a declarant, the proffering party must weigh its ability to make the declarant available for cross examination, or risk the Board’s refusal to consider the testimony.").

 5.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) ("Even with oral testimony depositions, the party cross-examining the witness must pay its own travel expense and its own attorney expenses. … The goal of the final rule is to minimize the ability of a party seeking cross-examination to thwart the other party’s efforts to rein in the cost of litigation by opting for testimony by affidavit or declaration."); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 (TTAB 2019) (petitioner’s counsel alternatively sought to take oral cross-examination remotely due to travel and accommodation expense); USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047 and 1047 n.1 (TTAB 2017) (party seeking oral cross-examination of affiant or declarant must pay its own travel and attorney expenses including, if necessary, cost of lodging and procuring accommodation for the deposition); Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1166-67 (TTAB 2017) (only new costs to party seeking oral cross-examination of affiant or declarant are that of court reporter and the venue if necessary).

 6.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) ("The proffering party has had and will retain the expense of producing its witness."); USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047 and 1047 n.1 (TTAB 2017) (party proffering affiant or declarant for oral cross-examination has and continues to bear expense of producing the witness, as with cross-examination at oral testimony depositions).

 7.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) ("The provision that the party seeking oral cross-examination must bear the expense of oral cross-examination is intended to cover the expense of the court reporter. … The goal of the final rule is to minimize the ability of a party seeking cross-examination to thwart the other party’s efforts to rein in the cost of litigation by opting for testimony by affidavit or declaration."); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 (TTAB 2019) (party seeking to orally cross-examine declarant bears the expense of the court reporter); USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047 and 1047 n.1 (TTAB 2017) (same); Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1166-67 (TTAB 2017) (only new costs to party seeking oral cross-examination of affiant or declarant are that of court reporter and the venue if necessary).

 8.   See 37 C.F.R. § 2.123(a)(1). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) ("Any redirect and recross is to be taken at the same time, with the party the originally sought cross-examination bearing the cost of the court reporter. The goal of the final rule is to minimize the ability of a party seeking cross-examination to thwart the other party’s efforts to rein in the cost of litigation by opting for testimony by affidavit or declaration."); Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *4-5 (TTAB 2020) (overruling objection to redirect examination of a testimony declarant after oral cross-examination); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 (TTAB 2019) (any redirect and recross examination are to be taken at the same time as oral cross-examination).

 9.   See Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *1 n.3 (TTAB 2019) (vicinity of the witness's place of business or domicile is a reasonable place for cross-examination); U.S. Postal Serv. v. RPost Communications Ltd., 124 USPQ2d 1045, 1047 n.2 (TTAB 2017) (same).

 10.   Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 (TTAB 2019) (the Board’s rules do not mandate that oral cross-examination of a declarant or affiant be in person; by stipulation of the parties or upon motion for good cause, oral cross-examination may be conducted by telephone or other remote means); USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047-48 (TTAB 2017) (oral cross-examination of witness may be taken by telephone or other remote means). See also Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1654 (TTAB 2007) (party unable to attend a trial testimony deposition in person may attend by telephone by stipulation or on motion); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552 (TTAB 1991) (motion of counsel to attend trial deposition by telephone granted).

 11.   See 37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.124; Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990) (party obtained subpoena from United States district court to compel testimony deposition on written questions of adverse party’s United States witness after unsuccessfully attempting to take testimony deposition on written questions on notice alone).

 12.   37 C.F.R. § 2.123, 37 C.F.R. § 2.123(a)(2), and 37 C.F.R. § 2.124. See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *2 (TTAB 2019) (when direct testimony of a witness outside of the United States is offered by affidavit or declaration, the method of cross-examination available is written questions; there is no exception to take oral cross-examination of a declarant or affiant outside of the United States upon motion for good cause). With respect to discovery depositions, see 37 C.F.R. § 2.120(c)(1); Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998); Orion Group Inc. v. Orion Insurance Co., 12 USPQ2d 1923, 1925-26 (TTAB 1989) (good cause shown to take oral deposition of witness in England under the circumstances and since fares to England were not that much greater than fares within the United States and no translation was required).

 13.   See 37 C.F.R. § 2.123(a)  and 37 C.F.R. § 2.123(a)(2); Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *2 (TTAB 2019) (party offering foreign witness testimony by declaration or affidavit must make witness available for cross-examination by written questions).

 14.   Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 n.8 (TTAB 2019) (expense of a court reporter (or other officer) is the same whether cross-examination is taken orally or by written questions).

 15.   37 C.F.R. § 2.123(a)(2). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) ("The Office is further amending § 2.123(a)(1) to move to § 2.123(a)(2) a provision permitting a motion for deposition on oral examination of a witness in the United States whose testimonial deposition on written questions has been noticed.").

 16.   See Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 1990), corrected at 19 USPQ2d 1479 (TTAB 1990) (good cause shown to take oral deposition of expert witness, during rebuttal testimony period); Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980) (good cause shown where deponents were former employees of respondent and present employees of petitioner and were being deposed for first time during rebuttal period).

 17.   37 C.F.R. § 2.123(a)(2). See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *1 n.8 (TTAB 2019) (parties may stipulate that depositions be taken in a foreign country by oral examination).

 18.   See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *3 n.12 (TTAB 2019) (party seeking to take a deposition in a foreign country should first determine whether it will be permitted by the foreign country, and, if so, what procedure must be followed).

 19.   37 C.F.R. § 2.123(b). See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *1 n.5 (TTAB 2019) (parties stipulated to introduce the discovery depositions of certain witnesses as trial testimony in lieu of taking their testimonial depositions); Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009) (discovery deposition may be filed by notice of reliance if parties have stipulated to introduction of the deposition); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1847 n.5 (TTAB 2008) (stipulation to use discovery depositions as trial testimony); Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties stipulated to 13 paragraphs of facts involving such issues as applicant’s dates of first use and the extent and manner in which a designation is used and advertised, the channels of trade for such use, and recognition by third parties of such use; and the dates, nature and extent of descriptive uses of designation by opposer’s parent company); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990) (stipulation for use of discovery deposition as testimony deposition); Oxy Metal Industries Corp. v. Transene Co., 196 USPQ 845, 847 n.20 (TTAB 1977) (litigation expenses can be saved where parties agree to introduce all uncontroverted facts by affidavit or stipulated facts and provide balance through deposition testimony).

703.01(c)    Time for Taking Trial Testimony

37 C.F.R. § 2.121  Assignment of times for taking testimony and presenting evidence. (a) The Trademark Trial and appeal Board will issue a trial order … assigning to each party its time for taking testimony and presenting evidence ("testimony period"). No testimony shall be taken or evidence presented except during the times assigned, unless by stipulation of the parties approved by the Board, or upon motion granted by the Board, or upon order of the Board. …

A party may take trial testimony only during its assigned testimony period, except by stipulation of the parties approved by the Board, or, on motion, by order of the Board. [ Note 1.] See TBMP § 701.

For information concerning the assignment of testimony periods, and the rescheduling, extension, and reopening thereof, see TBMP § 509 and TBMP § 701.

NOTES:

 1.   See 37 C.F.R. § 2.121(a); Spotify AB v. U.S. Software Inc., 2022 USPQ2d 37, at *5 (TTAB 2022) (objection sustained to testimony declaration executed more than one year prior to trial); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *2 n.3 (TTAB 2020) (parties stipulated that any declaration or affidavit shall be admissible even though executed before and not during the testimony period of a party); Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *3-4 (TTAB 2019) (absent stipulation or Board order, "a testimony affidavit or declaration must be taken--that is, executed--during the assigned testimony period, as required by Rule 2.121(a)"), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019). See also Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1454 n.1 (TTAB 1998) (parties stipulated that testimony deposition of applicant’s witness could be taken prior to its testimony period on the same day as opposer’s witness to achieve efficiencies in time and cost). Cf. International Dairy Foods Association v. Interprofession du Gruyère, 2020 USPQ2d 10892, at *3 n.12 (TTAB 2020) (declarations signed prior to testimony period and submitted by opposers as trial testimony considered to have been properly submitted because applicants did not object to them as untimely, and, in fact, treated them as part of the record by raising substantive objections against them), aff’d, ___ F. Supp. 3d ___, 2021 WL 6286234 (E.D. Va. Dec. 15, 2021), appeal docketed, No. 22-1041 (4th Cir. Jan. 11, 2022); Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (where opposer’s testimony deposition was taken two days prior to the opening of opposer’s testimony period, and applicant first raised a timeliness objection in its brief on the case, objection held waived, since the premature taking of the deposition could have been corrected on seasonable objection).

703.01(d)    Time and Place of Oral Testimony Deposition

37 C.F.R. § 2.123 

• (a)
  • (1) The testimony of witnesses in inter partes cases may be submitted in the form of an affidavit or a declaration pursuant to § 2.20 and in conformance with the Federal Rules of Evidence, filed during the proffering party’s testimony period, subject to the right of any adverse party to elect to take and bear the expense of oral cross-examination of that witness as provided under paragraph (c) of this section if such witness is within the jurisdiction of the United States, or conduct cross-examination by written questions as provided in § 2.124 if such witness is outside the jurisdiction of the United States, and the offering party must make that witness available; or taken by deposition upon oral examination as provided by this section; or by deposition upon written questions as provided by § 2.124.
  • (2) Testimony taken in a foreign country shall be taken: by deposition upon written questions as provided by § 2.124, unless the Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate;
  
• * * * *
• (c) Notice of examination of witnesses. Before the oral depositions of witnesses shall be taken by a party, due notice in writing shall be given to the adverse party or parties, as provided in § 2.119(b), of the time when and place where the depositions will be taken, of the cause or matter in which they are to be used, and the name and address of each witness to be examined. Depositions may be noticed for any reasonable time and place in the United States. A deposition may not be noticed for a place in a foreign country except as provided in paragraph (a)(2) of this section. No party shall take depositions in more than one place at the same time, nor so nearly at the same time that reasonable opportunity for travel from one place of examination to the other is not available. When a party elects to take oral cross-examination of an affiant or declarant, the notice of such election must be served on the adverse party and a copy filed with the Board within 20 days from the date of service of the affidavit or declaration and completed within 30 days from the date of service of the notice of election.

An oral testimony deposition upon direct examination may be noticed for any reasonable time during the deposing party’s testimony period. [ Note 1.] When a party elects to take oral cross-examination of an affiant or declarant, the notice of such election must be served on the adverse party and a copy filed with the Board within 20 days from the date of service of the affidavit or declaration and completed within 30 days from the date of service of the notice of election. [ Note 2.] A testimony deposition may not be taken outside the deposing party’s testimony period except by stipulation of the parties approved by the Board, or, on motion, by order of the Board. [ Note 3.] See TBMP § 701.

An oral testimony deposition to be taken in the United States may be noticed for any reasonable place. [ Note 4.] A party may not take oral testimony depositions in more than one place at the same time, nor so nearly at the same time that reasonable opportunity for travel from one place of examination to the other is not available. [ Note 5.]

A testimony deposition may not be noticed for a place in a foreign country, unless the deposition is to be taken on written questions as provided by 37 C.F.R. § 2.124, or unless the Board, on motion for good cause, orders, or the parties stipulate, that the deposition be taken by oral examination. [ Note 6.] See TBMP § 703.01(b). The motion for good cause to take an oral deposition under 37 C.F.R. § 2.123(a)(2)  concerns direct examination testimony taken in a foreign country by oral deposition rather than by written questions. This portion of the rule is not applicable to cross-examination testimony by an affiant or declarant. [ Note 7.] The available method for cross-examination of a witness outside the United States is by written questions pursuant to 37 C.F.R. § 2.124. [ Note 8.]

If the parties so stipulate in writing, a testimony deposition may be taken before any person authorized to administer oaths, at any place, on any notice, and in any manner, and when so taken may be used like any other deposition. [ Note 9.]

NOTES:

 1.   See 37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.123(c); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 n.4 (TTAB 2002) ("trial testimony depositions are noticed and taken during the party’s assigned testimony period").

 2.   37 C.F.R. § 2.123(c).

 3.   See 37 C.F.R. § 2.121(a)  See Spotify AB v. U.S. Software Inc., 2022 USPQ2d 37, at *5 (TTAB 2022) (objection sustained to testimony declaration executed more than one year prior to trial); Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1454 n.1 (TTAB 1998) (stipulation that testimony deposition of applicant’s witness could be taken prior to its testimony period on the same day as opposer’s witness to achieve efficiencies in time and cost). Cf. Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (where opposer’s testimony deposition was taken two days prior to the opening of opposer’s testimony period, and applicant first raised a timeliness objection in its brief on the case, objection held waived, since the premature taking of the deposition could have been corrected on seasonable objection).

 4.   See 37 C.F.R. § 2.123(c); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *1 n.3 (TTAB 2019) (the vicinity of the witness’ place of business or domicile has been found to be a reasonable place for oral cross-examination of an affiant or declarant); USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047-48 (TTAB 2017) (notice of election of oral cross-examination of declarants quashed because requiring them to travel from Washington, DC, where they live and work, to Santa Monica, CA, is not a reasonable place).

 5.   See 37 C.F.R. § 2.123(c).

 6.   See 37 C.F.R. § 2.123(a), 37 C.F.R. § 2.123(a)(2)  and 37 C.F.R. § 2.123(c); Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *2 n.9, *3 (TTAB 2019) (the rules allow for a motion to take oral direct trial testimony of a witness outside the jurisdiction of the United States upon a showing of good cause; notices of election of oral cross-examination of foreign witnesses are of no effect).

 7.   Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *1 n.8, *2 (TTAB 2019).

 8.   37 C.F.R. § 2.123(a)(1), 37 C.F.R. § 2.123(a)(2), and 37 C.F.R. § 2.124(b)(3). See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *1 n.8, *2 (TTAB 2019) (the method of cross-examination available when direct testimony of a witness outside of the United States is offered by affidavit or declaration is written questions; the trademark rules do not provide an exception to take oral cross-examination of a declarant or affiant outside of the United States upon motion for good cause).

 9.   37 C.F.R. § 2.123(b).

703.01(e)    Notice of Oral Deposition and Notice of Election of Oral Cross-Examination of Affiant or Declarant

37 C.F.R. § 2.123(b)  Stipulations. If the parties so stipulate in writing, depositions may be taken before any person authorized to administer oaths, at any place, upon any notice, and in any manner, and when so taken may be used like other depositions. The parties may stipulate in writing what a particular witness would testify to if called; or any relevant facts in the fact may be stipulated in writing.

37 C.F.R. § 2.123(c)  Notice of examination of witnesses. Before the oral depositions of witnesses shall be taken by a party, due notice in writing shall be given to the adverse party or parties, as provided in § 2.119(b), of the time when and place where the depositions will be taken, of the cause or matter in which they are to be used, and the name and address of each witness to be examined. Depositions may be noticed for any reasonable time and place in the United States. A deposition may not be noticed for a place in a foreign country except as provided in paragraph (a)(2) of this section. No party shall take depositions in more than one place at the same time, nor so nearly at the same time that reasonable opportunity for travel from one place of examination to the other is not available. When a party elects to take oral cross-examination of an affiant or declarant, the notice of such election must be served on the adverse party and a copy filed with the Board within 20 days from the date of service of the affidavit or declaration and completed within 30 days from the date of service of the notice of election. Upon motion for good cause by any party, or upon its own initiative, the Board may extend the periods for electing and taking oral cross-examination. When such election has been made but cannot be completed within that testimony period, the Board, after the close of that testimony period, shall suspend or reschedule other proceedings in the matter to allow for the orderly completion of the oral cross-examination(s).

Before a party may take the oral testimony deposition upon direct examination of a witness, the party must give due (i.e., reasonable) notice in writing to every adverse party. [ Note 1.] See TBMP § 533.02(a). Cf. TBMP § 404.05. In assessing whether a party gave reasonable notice of a deposition, the Board counts calendar days, not business days. [ Note 2.]

The notice must specify the time and place the depositions will be taken, the cause or matter in which they are to be used, and the name and address of each witness to be examined. [ Note 3.] Cf. TBMP § 404.05.

For information concerning the raising of an objection to a testimony deposition on the ground of improper or inadequate notice, see 37 C.F.R. § 2.123(e)(3), TBMP § 533.02, and TBMP § 707.03(b)(2).

If the parties so stipulate in writing, an oral testimony deposition may be taken before any person authorized to administer oaths, at any place, on any notice, and in any manner, and when so taken may be used like any other deposition. [ Note 4.]

Unlike a deposition transcript, a notice of oral deposition need not be filed with the Board. [ Note 5.] However, if a certified copy of the notice of deposition is, for some reason, required for use before a federal district court, the notice of deposition must be filed with the Board via ESTTA for purposes of certification. [ Note 6.] See TBMP § 122 and TBMP § 703.01(f)(2).

A party who elects to take oral cross-examination of an affiant or declarant must serve the notice of such election on the adverse party and file a copy of the notice of election with the Board within 20 days from the date of service of the affidavit or declaration, and the party must complete the oral cross-examination within 30 days from the date of service of the notice of election. [ Note 7.] On motion for good cause, or on its own initiative, the Board may extend the periods for electing and taking oral cross-examination. When a party has elected to take oral cross-examination of an affiant or declarant, but cannot complete the cross-examination within that testimony period, the Board, after the close of that testimony period, will suspend or reschedule proceedings in the matter to allow for the orderly completion of the oral cross-examination(s). [ Note 8.] The notice of election of oral cross-examination of a declarant or affiant to be taken in the United States must be noticed for a reasonable time and place. [ Note 9.] Oral cross-examination is not available for an affiant or declarant that is not within the jurisdiction of the United States and must be taken by written questions pursuant to 37 C.F.R. § 2.124. [ Note 10.] For information concerning taking depositions in foreign countries, see TBMP § 703.01.

NOTES:

 1.   37 C.F.R. § 2.123(c). See Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1653 (TTAB 2007) (six calendar days is reasonable notice); Gaudreau v. American Promotional Events, Inc., 82 USPQ2d 1692, 1696 (TTAB 2007) (two days notice prior to the close of the testimony period was unreasonable); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1444 (TTAB 2000) (one and two-day notices were not reasonable without compelling need for such haste; three-day notice was reasonable); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 (TTAB 1999) (two-day notice was not reasonable); Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1284 (TTAB 1998) (one-day notice for deposition of expert witness was short but not prejudicial where party gave notice "as early as possible" and moreover offered to make witness again available at a future date); Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1074 (TTAB 1990) (24 hours not sufficient time to prepare for deposition); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 n.6 (TTAB 1982) (two-day notice of deposition, although short, was not unreasonable where deposition was held a short distance from applicant’s attorney’s office and where no specific prejudice was shown).

 2.   Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1653 (TTAB 2007).

 3.   See 37 C.F.R. § 2.123(c). See also Steiger Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 169 (TTAB 1984) (testimony not considered where notice failed to specify name of party being deposed), different results reached on reh’g, 3 USPQ2d 1708 (TTAB 1984); O. M. Scott & Sons Co. v. Ferry-Morse Seed Co., 190 USPQ 352, 353 (TTAB 1976) (testimony stricken where notice identified one witness and indicated that "possibly others will testify" and where opposer proceeded to take testimony of unidentified witness, applicant objected, did not cross-examine the witness, and moved to strike testimony).

 4.   37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.123(b).

 5.   See 37 C.F.R. § 2.123(f).

 6.   See 37 C.F.R. § 2.126(a)  and 37 C.F.R. § 2.126(b).

 7.   See 37 C.F.R. § 2.123(c); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 (TTAB 2019) (oral cross-examination must be completed within 30 days of service of the notice of election). Cf. WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (opposer’s objection to applicant’s testimony declarations overruled where applicant provided notice to opposer via pretrial disclosures about witnesses and the subject matter of their anticipated testimony, testimony declarations were timely served, and opposer had opportunity but chose not to cross-examine the witnesses).

 8.   See 37 C.F.R. § 2.123(c)  and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is further amending § 2.123(c) to add that, when a party elects to take oral cross-examination of an affiant or declarant, the notice of such election must be served on the adverse party and a copy filed with the Board within 20 days from the date of service of the affidavit or declaration and completed within 30 days from the date of service of the notice of election. The Office is further amending § 2.123(c) to add that the Board may extend the periods for electing and taking oral cross-examination and, when necessary, shall suspend or reschedule proceedings in the matter to allow for the orderly completion of oral cross-examination(s) that cannot be completed within a testimony period."). Cf. Empresses Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *3 (TTAB 2019) (parties’ joint request to extend deadlines to serve notice of cross-examination on written questions of the Cuban declarants, as well as redirect questions granted).

 9.   See Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *1 n.3 (TTAB 2019) (the vicinity of the witness’ place of business or domicile has been found to be a reasonable place for oral cross-examination of an affiant or declarant). Cf. Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1110 (TTAB 2018) ("the Board issued an order granting an intervening motion to quash the notice of election of cross-examination as to the location of the cross-examination"); USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047 n.2, 1048 (TTAB 2017) (notice of election of oral cross-examination requiring declarants who live and work in Washington, DC to travel to Santa Monica, CA quashed because not noticed for reasonable place, which ordinarily, would be in the vicinity of the witness’ place of business or domicile).

 10.   37 C.F.R. § 2.123(a)(1), 37 C.F.R. § 2.123(a)(2), and 37 C.F.R. § 2.124(b)(3). See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *1 n.8, *2 (TTAB 2019) (the method of cross-examination available when direct testimony of a witness outside of the United States is offered by affidavit or declaration is written questions; the trademark rules do not provide an exception to take oral cross-examination of a declarant or affiant outside of the United States upon motion for good cause).

703.01(f)    Securing Attendance of Unwilling Adverse Party or Non-party for Testimony Deposition

Please Note: This section only pertains to testimony depositions, as a party who takes testimony by affidavit or declaration must make the witness available for cross-examination under 37 C.F.R. § 2.123(a)  and 37 C.F.R. § 2.123(a)(2). See TBMP § 703.01(b).

703.01(f)(1)    In General

Normally, during a party’s testimony period, testimony depositions are taken, by or on behalf of the party, of the party himself or herself (if the party is an individual), or of an official or employee of the party, or of some other witness who is willing to appear voluntarily to testify on behalf of the party. These testimony depositions may be taken, at least in the United States, on notice alone.

However, where a party wishes to take the testimony of an adverse party or non-party, or an official or employee of an adverse party or non-party, and the proposed witness is not willing to appear voluntarily to testify, the deposition may not be taken on notice alone. Rather, the party that wishes to take the deposition must take steps, discussed below, to compel the attendance of the witness. [ Note 1.] If the witness resides in a foreign country, the party may not be able to take the deposition. See TBMP § 703.01(f)(2) (securing attendance of unwilling witness residing in United States), TBMP § 703.01(f)(3) (securing attendance of unwilling witness residing in foreign country), and TBMP § 703.02 (testimony depositions on written questions).

NOTES:

 1.   See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *3 n.12 (TTAB 2019) (to the extent the nonparty employee witnesses located outside the United States are not willing to appear voluntarily to testify during respondent’s testimony period, the deposition may not be taken on notice alone, but respondent must take steps to compel their attendance); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990) (after unsuccessfully attempting to take testimony deposition on written questions of adverse party’s officer on notice alone, opposer obtained subpoena from U.S. district court ordering appearance); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583 (TTAB 1976) (it is incumbent on deposing party to have a subpoena issued from the U.S. district court where witness is located and have same properly served on witness with sufficient time to apprise him that he is under order to appear). See also Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 55 n.7 (TTAB 1983) (no adverse inference can be drawn from adverse party’s failure to appear and produce requested documents at testimony deposition where party attempted to secure attendance by notice alone), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984).

703.01(f)(2)    Unwilling Witness Residing in United States

If a party wishes to take the trial testimony of an adverse party or non-party (or an official or employee of an adverse party or non-party) residing in the United States, and the proposed witness is not willing to appear voluntarily to testify, the party wishing to take the testimony must secure the attendance of the witness by subpoena pursuant to 35 U.S.C. § 24 and Fed. R. Civ. P. 45. [ Note 1.] Cf. TBMP § 404.03(a)(2) (securing attendance of non-party residing in U.S. at discovery deposition).

The subpoena must be issued, pursuant to 35  U.S.C. § 24  and Fed. R. Civ. P. 45, from the United States district court in the federal judicial district where the witness resides or is regularly employed. [ Note 2.] Occasionally district courts may request a "matter number" for the issuance of a subpoena. If that is the case, the requesting party should obtain one from the court or determine whether the Board’s proceeding number will satisfy the court. If, for any reason, a certified copy of the notice of deposition is required in connection with the subpoena, such as for purposes of a motion to quash the subpoena, or a motion to enforce the subpoena, the interested party should contact the clerk of the court to determine whether the court will require a formal certified copy (i.e., a certified copy bearing a USPTO seal) of the notice. [ Note 3.] A certified copy of a notice of deposition is a copy prepared by the party noticing the deposition, and certified by the USPTO as being a true copy of the notice of deposition filed in the proceeding before the Board. A copy of a notice of deposition cannot be certified by the USPTO unless it has been filed in the Board proceeding. For information relating to USPTO certification of a notice of deposition, see TBMP § 121 and TBMP § 122.

If a person named in a subpoena compelling attendance at a testimony deposition fails to attend the deposition, or refuses to answer a question propounded at the deposition, the deposing party must seek enforcement from the United States district court that issued the subpoena. Similarly, any request to quash a subpoena must be directed to the United States district court that issued the subpoena. The Board has no jurisdiction over depositions by subpoena. [ Note 4.]

NOTES:

 1.   See Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583-84 (TTAB 1976).

 2.   Cf. 37 C.F.R. § 2.120(b).

Please Note: To the extent that the 2013 amendments to Fed. R. Civ. P. 45(a)(2) and Fed. R. Civ. P. 45(f) conflict with 35 U.S.C. § 24, § 24 is controlling. See 37 C.F.R. § 2.116(a)  ("Except as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.").

 3.   Please Note: The Board no longer provides verified copies of filings.

 4.   See, e.g., In re Johnson & Johnson, 59 F.R.D. 174, 178 USPQ 201, 201 (D. Del. 1973) (no power to grant protective order with respect to depositions taken by subpoena); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 n.3 (TTAB 1987) (no authority to quash subpoena); PRD Electronics Inc. v. Pacific Roller Die Co., 169 USPQ 318, 319 n.3 (TTAB 1971) (opposer’s allegation in its brief that applicant defied a subpoena to produce witnesses is a matter opposer should have pursued before the court that issued the subpoena). Cf. Ate My Heart v. GA GA Jeans, 111 USPQ2d 1564, 1565 n.5 (TTAB 2014) (notice of deposition of unwilling non-party witness must include subpoena, and related motions must be filed with district court that issued subpoena, not Board).

703.01(f)(3)    Unwilling Witness Residing in Foreign Country

There is no certain procedure for obtaining, in a Board inter partes proceeding, the trial testimony deposition of a witness who resides in a foreign country, is an adverse party or a non-party (or an official or employee of an adverse party or non-party), and is not willing to appear voluntarily to testify. However, the deposing party may be able to obtain the testimony deposition of such a witness through the letter rogatory procedure or The Hague Convention letter of request procedure. [ Note 1.]

For information concerning these procedures, see TBMP § 404.03(c)(2) and TBMP § 703.01(g).

The U.S. Court of Appeals for the Fourth Circuit has held, however, that a district court has the power to issue a subpoena for a trial deposition noticed under Fed. R. Civ. P. 30(b)(6), requiring a foreign corporate applicant to produce an appropriate representative in the United States for testimony on the subjects identified in the subpoena, regardless of the domicile of the representative. [ Note 2.]

The deposition of an unwilling witness (adverse party or non-party) who resides in a foreign country may not be taken on notice alone; steps must be taken to compel the unwilling witness to appear. [ Note 3.]

NOTES:

 1.   See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *3 n.12 (TTAB 2019) (quoting TBMP § 703.01(f)(3)); Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009) (attendance of non-party witness residing outside the United States could not be compelled).

 2.   Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 511 F.3d 437, 85 USPQ2d 1385 (4th Cir. 2007), cert. denied, 128 S. Ct. 2508 (2008).

 3.   See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *3 n.12 (TTAB 2019) (steps must be taken to compel attendance of Cuban declarants).

703.01(g)    Persons Before Whom Depositions May be Taken

37 C.F.R. § 2.123(d)  Persons before whom depositions may be taken. Depositions may be taken before persons designated by Rule 28 of the Federal Rules of Civil Procedure.

Fed. R. Civ. P. 28. Persons Before Whom Depositions May Be Taken.

• (a) Within the United States.
  • (1) In General. Within the United States or a territory or insular possession subject to United States jurisdiction, a deposition must be taken before:
    • (A) an officer authorized to administer oaths either by federal law or by the law in the place of examination; or
    • (B) a person appointed by the court where the action is pending to administer oaths and take testimony.
  • (2) Definition of "Officer." The term "officer" in Rules 30, 31 and 32 includes a person appointed by the court under this rule or designated by the parties under Rule 29(a).
  
• (b) In a Foreign Country.
  • (1) In General. A deposition may be taken in a foreign country:
    • (A) under an applicable treaty or convention;
    • (B) under a letter of request, whether or not captioned a "letter rogatory";
    • (C) on notice, before a person authorized to administer oaths either by federal law or by the law in the place of examination; or
    • (D) before a person commissioned by the court to administer any necessary oath and take testimony.
  • (2) Issuing a Letter of Request or a Commission. A letter of request, a commission, or both may be issued:
    • (A) on appropriate terms after an application and notice of it; and
    • (B) without a showing that taking the deposition in another manner is impracticable or inconvenient.
  • (3) Form of a Request, Notice, or Commission. When a letter of request or any other device is used according to a treaty or convention, it must be captioned in the form prescribed by that treaty or convention. A letter of request may be addressed "To the Appropriate Authority in [name of country]." A deposition notice or a commission must designate by name or descriptive title the person before whom the deposition is to be taken.
  • (4) Letter of Request--Admitting Evidence. Evidence obtained in response to a letter of request need not be excluded merely because it is not a verbatim transcript, because the testimony was not taken under oath, or because of any similar departure from the requirements for depositions taken within the United States.
  
• (c) Disqualification. A deposition must not be taken before a person who is any party’s relative, employee, or attorney; who is related to or employed by any party’s attorney; or who is financially interested in the action.

Depositions in Board inter partes proceedings may be taken before the persons described in Fed. R. Civ. P. 28. [ Note 1.]

Thus, in the United States (or in any territory or insular possession subject to the jurisdiction of the United States) a testimony deposition in a Board proceeding "must be taken before an officer authorized to administer oaths either by federal law or by the law in the place of examination; or before a person appointed by the court where the action is pending to administer oaths and take testimony." [ Note 2.] As a practical matter, Board proceeding depositions taken in the United States are usually taken before a court reporter who is authorized to administer oaths in the jurisdiction where the deposition is taken.

In a foreign country, a testimony deposition in a Board proceeding may be taken pursuant to Fed. R. Civ. P. 28(b). This means, for example, that a testimony deposition in a Board proceeding taken of a willing witness in a foreign country usually may be taken on notice before a U.S. consular official, or before anyone authorized by the law of the foreign country to administer oaths therein. Some countries, however, may prohibit the taking of testimony within their boundaries for use in any other country, including the United States, even though the witness is willing; or may permit the taking of testimony only if certain procedures are followed. [ Note 3.] A party which wishes to take a testimony deposition in a foreign country should first consult with local counsel in the foreign country, and/or with the Office of American Citizen Services, U.S. Department of State, in order to determine whether the taking of the deposition will be permitted by the foreign country, and, if so, what procedure must be followed. The testimony of an unwilling adverse party or non-party witness may be taken in a foreign country, if at all, only by the letter rogatory procedure, or by the letter of request procedure provided under the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters, or by any other procedure provided for the purpose by any future treaty into which the United States may enter. [ Note 4.] Cf. TBMP § 404.03(c) (concerning discovery deposition of non-party residing in foreign country) and TBMP § 703.01(f)(3) (securing attendance of unwilling witness residing in foreign country). If the parties so stipulate in writing (and if permitted by the laws of the foreign country, in the case of a deposition to be taken in a foreign country), a deposition may be taken before any person authorized to administer oaths, at any place, on any notice, and in any manner, and when so taken may be used like any other deposition. [ Note 5.]

NOTES:

 1.   37 C.F.R. § 2.123(d).

 2.   See Fed. R. Civ. P. 28(a).

 3.   See 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2083 (3d ed. April 2021 Update).

 4.   Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 n.5 (TTAB 2009). See also Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *3 n.12 (TTAB 2019) (party that wishes to take a deposition in a foreign country should first determine whether the taking of the deposition will be permitted by the foreign country, and, if so, what procedure must be followed).

 5.   37 C.F.R. § 2.123(b).

703.01(h)    Examination of Witnesses

37 C.F.R. § 2.123(e)  Examination of witnesses.

• (1) Each witness before providing oral testimony shall be duly sworn according to law by the officer before whom the deposition is to be taken. Where oral depositions are taken, every adverse party shall have a full opportunity to cross-examine each witness. When testimony is proffered by affidavit or declaration, every adverse party will have the right to elect oral cross-examination of any witness within the jurisdiction of the United States. For examination of witnesses outside the jurisdiction of the United States, see § 2.124.
• (2) The deposition shall be taken in answer to questions, with the questions and answers recorded in their regular order by the officer, or by some other person (who shall be subject to the provisions of Rule 28 of the Federal Rules of Civil Procedure) in the presence of the officer except when the officer’s presence is waived on the record by agreement of the parties. The testimony shall be recorded and transcribed, unless the parties present agree otherwise. Exhibits which are marked and identified at the deposition will be deemed to have been offered into evidence, without any formal offer thereof, unless the intention of the party marking the exhibits is clearly to the contrary.
• (3) If pretrial disclosures or the notice of examination of witnesses served pursuant to paragraph (c) of this section are improper or inadequate with respect to any witness, an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances.
  • (i) A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with 2.121(e).
  • (ii) A motion to strike the testimony of a witness for lack of proper or adequate notice of examination must request the exclusion of the entire testimony of that witness and not only a part of that testimony.
  
• (4) All objections made at the time of an oral examination to the qualifications of the officer taking the deposition, or to the manner of taking it, or to the evidence presented, or to the conduct of any party, and any other objection to the proceedings, shall be noted by the officer upon the deposition. Evidence objected to shall be taken subject to the objections.

37 C.F.R. § 2.123(g)  Form of deposition. (1) The pages of each deposition must be numbered consecutively, and the name of the witness plainly and conspicuously written at the top of each page. The deposition must be in written form. The questions propounded to each witness must be consecutively numbered unless the pages have numbered lines. Each question must be followed by its answer. The deposition transcript must be submitted in full-sized format (one page per sheet), not condensed (multiple pages per sheet).

Fed. R. Civ. P. 30(b)(4) By Remote Means. The parties may stipulate — or the court may on motion order — that a deposition be taken by telephone or other remote means. For the purpose of this rule and Rules 28(a), 37(a)(2), and 37(b)(1), the deposition takes place where the deponent answers the questions.

Before providing oral testimony, a witness whose testimony deposition is being taken for use in a Board inter partes proceeding must be duly sworn, according to law, by the officer before whom the deposition is to be taken. [ Note 1.] See TBMP § 703.01(g).

Testimony by affidavit or declaration pursuant to 37 C.F.R. § 2.20  must be made in conformance with the Federal Rules of Evidence. The testimony affidavit is a sworn statement, signed and dated, while the declaration permits a comparable alternative unsworn statement, signed and dated. Both options are under penalty of perjury, and statements in Board proceedings are subject to 18 U.S.C. § 1001. [ Note 2.]

The deposition is taken in answer to questions, and the questions and answers are recorded in order by the officer, or by some other person (who is subject to the provisions of Fed. R. Civ. P. 28) in the presence of the officer, except when the officer’s presence is waived on the record by agreement of the parties. The deposition testimony is recorded and transcribed, unless the parties present agree otherwise. [ Note 3.]

The Board does not accept videotape testimony. [ Note 4.] An affidavit, declaration or testimony deposition must be submitted to the Board in written form via ESTTA, unless ESTTA is unavailable due to technical problems, or under extraordinary circumstances. [ Note 5.]

On stipulation of the parties, or on motion granted by the Board, a deposition may be taken or attended by telephone or other remote means. [ Note 6.] A deposition taken by telephone or other remote means is taken in the district and at the place where the witness is to answer the questions propounded to him or her. [ Note 7.]

Exhibits which are marked and identified at the deposition will be deemed to have been offered in evidence, even if no formal offer thereof is made, unless the intention of the party marking the exhibits is clearly to the contrary. [ Note 8.]

Regardless of the form of the direct testimony, every adverse party must be given an opportunity to cross-examine the witness, and the proffering party may conduct redirect examination of a witness following cross-examination. [ Note 9.] For information concerning cross-examination of witnesses on written questions, see TBMP § 703.02. If pretrial disclosures or the notice of deposition served by a party is improper or inadequate with respect to the witness, an adverse party may file a motion to quash before the deposition is scheduled to take place, or alternatively, cross-examine the witness under protest while reserving the right to object to the receipt of the testimony in evidence. [ Note 10.] When testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial or rebuttal disclosure, the remedy for any adverse party is the prompt filing of a motion to strike. [ Note 11.] For information concerning the raising of an objection to a testimony deposition on the ground of improper or inadequate pretrial disclosures or notice, see 37 C.F.R. § 2.121(e), 37 C.F.R. § 2.123(e)(3), TBMP § 533.02, TBMP § 707.03(b)(2) and TBMP § 707.03(b)(3).

All objections made at the time of the taking of a testimony deposition as to the qualifications of the officer taking the deposition, the manner of taking the deposition, the evidence presented, the conduct of any party, or any other objection to the proceedings, are noted by the officer upon the deposition. Evidence objected to is taken subject to the objections. [ Note 12.] See TBMP § 707.03.

Questions to which an objection is made ordinarily should be answered subject to the objection, but a witness may properly refuse to answer a question asking for information that is, for example, privileged, trade secret or otherwise protected from disclosure by the protective order in place for the case. See TBMP § 404.09. For information concerning the propounding party’s recourse if a witness not only objects to, but also refuses to answer, a particular question, see TBMP § 404.09 and TBMP § 707.03(d).

For further information concerning the raising of objections to testimony depositions, affidavits and declarations, see TBMP § 533 and TBMP § 707.03.

If the parties so stipulate in writing, a deposition may be taken before any person authorized to administer oaths, at any place, on any notice, and in any manner, and when so taken may be used like any other deposition. [ Note 13.]

For information concerning depositions of witnesses in foreign countries, see TBMP § 703.01(g).

NOTES:

 1.   37 C.F.R. § 2.123(e)(1). See Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382, 1384 (TTAB 2000) (objection to deposition taken in Honduras that officer designated in notice did not take deposition and that the transcript did not show due administration of the oath overruled where the person who conducted the deposition had authority to do so under Honduran law and the oath was administered in standard manner under Honduran law). Cf. TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1790 (TTAB 2018) (statements made in defendant’s initial disclosures about attached documents are not properly sworn or otherwise verified under Trademark Rule 2.20 and thus are not testimony); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1790 n.18 (TTAB 2018) (unsworn statement, submitted with duplicate copies of initial disclosures, "declaring" use of the mark during the relevant period not considered although parties agreed to present testimony by affidavit, because defendant’s "declaration," at the end of the statement, that "the foregoing is true and correct," is not in affidavit form).

 2.   See 28 U.S.C. § 1746. See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (in response to a comment, "the Office has adopted language in the final rule directed to the concerns expressed regarding affidavit testimony by explicitly requiring that the affidavit or declaration pursuant to § 2.20 be made in conformance with the Federal Rules of Evidence. Regarding the concern raised about affidavit or declaration testimony being ‘duly sworn’ and under penalty of perjury, the testimony affidavit is a sworn statement, while the declaration permits a comparable alternative unsworn statement. See 28 U.S.C. § 1746. Either option is under penalty of perjury, and statements in Board proceedings are subject to 18 U.S.C. § 1001."); M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd., 2019 USPQ2d 149090, at *2-3 (TTAB 2019) (motion to strike testimony declaration of foreign witness made under 28 U.S.C. § 1746 granted because the original declaration and substitute declaration by foreign witness did not refer to the laws of the United States as to penalty of perjury); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1790 (TTAB 2018) (statements made in defendant’s initial disclosures about attached documents are not properly sworn or otherwise verified under Trademark Rule 2.20 and thus are not testimony); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1790 n.18 (TTAB 2018) (unsworn statement, submitted with duplicate copies of initial disclosures, "declaring" use of the mark during the relevant period not considered although parties agreed to present testimony by affidavit, because defendant’s "declaration," at the end of the statement, that "the foregoing is true and correct," is not in affidavit form). See also Optimal Chemical Inc. v. Srills LLC, 2019 USPQ2d 338409, at *3 n.37 (TTAB 2019) (declaration that lacked signature and date not considered).

 3.   37 C.F.R. § 2.123(e)(2).

 4.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (Board considered but rejected suggestion of allowing videotape depositions: "The Board has never accepted video testimony …. The current online filing system is not able to accept video testimony however, this possibility may be considered in subsequent rulemakings as TTAB’s online systems are enhanced."); USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047 n.3 (TTAB 2017) (Board does not accept video testimony; transcripts must be submitted).

 5.   37 C.F.R. § 2.123(g)  and 37 C.F.R. § 2.126.

 6.   See Fed. R. Civ. P. 30(b)(4); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 (TTAB 2019) (granting petitioner’s alternate motion to take oral cross- examination by telephone or other remote means due to travel and accommodation expense); Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1654 (TTAB 2007) (noting parties may resolve conflict concerning the scheduling of deposition where travel for one party is involved, by conducting deposition by telephone or other electronic means); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1552-53 (TTAB 1991) (Board granted request to attend deposition by telephone, noting that trademark rules do not specifically provide for or prohibit depositions by telephone and that federal court practice favors use of technological benefits). Cf. USPS v. RPost Communication Ltd., 124 USPQ2d 1045 (TTAB 2017) (notice of election of oral cross-examination of declarants quashed because not noticed for reasonable place, but applicant may accept opposer’s offer to make witnesses available for oral cross-examination by videoconference or telephone, thus alleviating some concern about travel and attorney expenses).

 7.   Fed. R. Civ. P. 30(b)(4).

 8.   37 C.F.R. § 2.123(e)(2). Cf. Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d 1835, 1838 n.4 (TTAB 1989) (decided prior to the rule change which eliminated "formal" introduction of exhibits, but exhibits still not excluded).

 9.   See 37 C.F.R. § 2.123(a)(1). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (concerning the unilateral option to submit testimony by affidavit or declaration, "The new procedure retains what the Supreme Court focused on in B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, 113 USPQ2d 2045 (2015): That testimony be under oath and subject to cross examination. The ability to elect cross-examination of the witness in the new unilateral procedure maintains the fairness and weightiness of Board proceedings."); Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *4-5 (TTAB 2020) (overruling objection to redirect examination of a testimony declarant after oral cross-examination); Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1102 (TTAB 2018) ("[T]he right to seek cross examination is integral to the right to offer testimony by declaration."). Cf. TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1790, 1790 n.16 (TTAB 2018) (defendant could have introduced additional documents through the testimony of an individual who had been identified in initial disclosures as a potential witness, subject to cross-examination, but defendant chose not to do so); WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (opposer’s objection to applicant’s testimony declarations overruled where applicant provided notice to opposer via pretrial disclosures about witnesses and the subject matter of their anticipated testimony, testimony declarations were timely served, and opposer had opportunity but chose not to cross-examine the witnesses).

 10.   37 C.F.R. § 2.121(e)  and 37 C.F.R. § 2.123(e)(3). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.121(e) to add that a party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition. The amendment codifies current Office practice.").

 11.   37 C.F.R. § 2.121(e). Cf. Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *4-5 (TTAB 2020) (overruling objection to redirect examination of a testimony declarant after oral cross-examination); WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (opposer’s objection to applicant’s testimony declarations overruled where applicant provided notice to opposer via pretrial disclosures about witnesses and the subject matter of their anticipated testimony, testimony declarations were timely served, and opposer had opportunity but chose not to cross-examine the witnesses).

 12.   37 C.F.R. § 2.123(e)(4).

 13.   37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.123(b).

703.01(i)    Form of Deposition and Exhibits

37 C.F.R. § 2.123  Trial testimony in inter partes cases.

(f)(2) Certification and filing of deposition. If any of the foregoing requirements of paragraph (f)(1) of this section are waived, the certificate shall so state. The officer shall sign the certificate and affix thereto his or her seal of office, if he or she has such a seal. The party taking the deposition, or its attorney or other authorized representative, shall then promptly file the transcript and exhibits in electronic form using ESTTA. If the nature of an exhibit precludes electronic transmission via ESTTA, it shall be submitted by mail by the party taking the deposition, or its attorney or other authorized representative.

(g) Form of deposition.

• (1) The pages of each deposition must be numbered consecutively, and the name of the witness plainly and conspicuously written at the top of each page. The deposition must be in written form. The questions propounded to each witness must be consecutively numbered unless the pages have numbered lines. Each question must be followed by its answer. The deposition transcript must be submitted in full-sized format (one page per sheet), not condensed (multiple pages per sheet).
• (2) Exhibits must be numbered or lettered consecutively and each must be marked with the number and title of the case and the name of the party offering the exhibit. Entry and consideration may be refused to improperly marked exhibits.
• (3) Each deposition must contain a word index and an index of the names of the witnesses, giving the pages where the words appear in the deposition and where witness examination and cross-examination begin, and an index of the exhibits, briefly describing their nature and giving the pages at which they are introduced and offered in evidence.

37 C.F.R. § 2.125(e)  Each transcript shall comply with § 2.123(g) with respect to arrangement, indexing and form.

37 C.F.R. § 2.126  Form of submissions to the Trademark Trial and Appeal Board.

• (a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.
  • (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
  • (2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.
  
• (b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered. A paper submission, including exhibits and depositions, must meet the following requirements:
  • (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
  • (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
  • (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
  • (4) A paper submission must not be stapled or bound;
  • (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
  • (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.

  * * * *

  

Please Note: As with all submissions to the Board, all forms of testimony and exhibits thereto must be filed via ESTTA except if ESTTA is unavailable due to technical problems, or under extraordinary circumstances. [ Note 1.] Although the USPTO has not specified requirements for the form of exhibits attached to affidavit or declaration testimony, parties are encouraged to use as a guide the form requirements set out for exhibits to depositions in 37 C.F.R. § 2.123(g)(2)  and the mailing requirements for certain exhibits set out in 37 C.F.R. § 2.123(f)(2). In addition, parties are reminded that documents submitted under affidavit or declaration but not identified therein cannot be considered as exhibits. [ Note 2.]

A deposition must be submitted to the Board in written form. [ Note 3.] The Board does not accept videotape depositions. [ Note 4.]

Parties must file depositions and exhibits thereto electronically through ESTTA unless ESTTA is unavailable due to technical problems, or under extraordinary circumstances. [ Note 5.] See TBMP § 106.03, TBMP § 106.09 and TBMP § 110 for further information about ESTTA. Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible. [ Note 6.] Exhibits pertaining to a paper submission must be filed on paper and must comply with the requirements for a paper submission. [ Note 7.]

The pages of a deposition must be numbered consecutively and the name of the witness must be written plainly and conspicuously at the top of each page. Unless the pages have numbered lines, the questions asked of each witness must be numbered consecutively. Each question must be followed by its answer. Deposition transcripts must be submitted through ESTTA in an electronic format (e.g., PDF) that displays the document in full-size with one page per sheet, rather than in condensed format with multiple pages per sheet [ Note 8.], and in at least 11-point type and double-spaced. [ Note 9.]

Deposition exhibits must be numbered or lettered consecutively, and each exhibit must be marked with the number and title of the case, and the name of the party who is offering the exhibit. The Board may not consider exhibits that are not properly marked. [ Note 10.]

Deposition transcripts also must contain a word index listing the pages where the words appear in the deposition, an index of the names of the witnesses listing the pages where witness examination and cross-examination begin, and an index of exhibits with a brief description of the exhibit and the pages where they are introduced and offered in evidence. [ Note 11.]

ESTTA exhibits may be in PDF, TIFF or TXT format. PDF is preferred, and should be used, if possible. Files should be formatted in letter size (8.5" x 11"), and should be rendered at 300 dpi resolution. ESTTA will accept either color or black and white PDF documents for uploading. A best practice for electronic exhibits submitted in PDF form is to use a separator page for each exhibit and to assign a bookmark to that page with an alpha-numeric designation (such as A, B,C or 1, 2, 3) for easy navigation and location of the exhibit.

Exhibits that are large, bulky, valuable, or breakable may be photographed or otherwise reproduced so that an appropriate paper or digitized image of the exhibits can be filed with the Board in lieu of the originals. The originals should, of course, be shown to every adverse party. Exhibits consisting of video or audio recordings of commercials, demonstrations, etc., may be transferred to an appropriate electronic format such as a DVD or CD for submission to the Board. [ Note 12.] USB drives cannot be accepted. When making a submission of an exhibit on CD or DVD, parties are advised to include in the accompanying ESTTA filing, a ‘‘placeholder’’ exhibit page to indicate the CD or DVD exhibit, and to mail the CD or DVD to the Board.

CD or DVD ("physical media") submissions should not be used for exhibits that can be submitted via ESTTA as image or text files. Physical media should only be used when filing via ESTTA is not possible.

Each party is responsible for ensuring that its submissions are clear and legible, with each page displayed so it can be read from top to bottom. [ Note 13.] Problems with image quality sometimes arise when poor quality documents are scanned or when the quality of legible documents is degraded in the scanning process; these problems typically arise in documents (or parts of documents) featuring graphical material, as opposed to text. Quality can sometimes be significantly degraded when color documents are scanned in black and white or when contrast settings used in scanning are not appropriate for graphical material. If legibility of material in color or grayscale is important, the party is urged to scan the file in color or adjust the scanner’s contrast settings to achieve acceptable results prior to filing. Users can check the quality of their submission in TTABVUE after filing. TTABVUE contains the same images that the Board will use in considering the submission. If the TTABVUE image is not of acceptable quality, the user should not assume that the Board will be able to view and consider it appropriately.

Confidential portions of the deposition and confidential exhibits must be submitted in accordance with 37 C.F.R. § 2.126(c). Confidential materials must be filed through ESTTA using the "CONFIDENTIAL" option or, where appropriate, under separate paper cover. For further information concerning the submission of confidential information, see TBMP § 703.01(p) and TBMP § 703.02(l).

In the unlikely event that a party must file a testimony deposition or exhibits on paper, the party is to follow the requirements set out in 37 C.F.R. § 2.126(b), reproduced at the beginning of this subsection.

For information concerning deposition objections based on errors or irregularities in form, see TBMP § 707.03(c).

NOTES:

 1.   See 37 C.F.R. § 2.126(a)  and 37 C.F.R. § 2.126(b).

 2.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office has not set out in the final rule any specific requirements regarding the form of exhibits. The Board and the parties have experience with such submissions in connection with summary judgment motions and ACR procedures as described in the TBMP at sections 528.05(b) and 702.04, which do not specify requirements for the form of exhibits, and this has not created problems. Notably, documents submitted under an affidavit or declaration but not identified therein cannot be considered as exhibits. The parties are encouraged to be guided by the form requirements set out for exhibits to depositions in § 2.123(g)(2) and the mailing requirements for certain exhibits set out in § 2.123(f)(2).").

 3.   37 C.F.R. § 2.123(g)(1). See USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047 n.3 (TTAB 2017) ("No matter how the cross-examination is conducted, transcripts must be submitted pursuant to Trademark Rules 2.123(f)(2) and (g).").

 4.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (Board considered but rejected suggestion of allowing videotape depositions: "The Board has never accepted video testimony …. The current online filing system is not able to accept video testimony however, this possibility may be considered in subsequent rulemakings as TTAB’s online systems are enhanced."); USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047 n.3 (TTAB 2017) (Board does not accept video testimony; transcripts must be submitted).

 5.   See 37 C.F.R. § 2.126(a), 37 C.F.R. § 2.126(a)(1), and 37 C.F.R. § 2.126(b).

 6.   37 C.F.R. § 2.126(a)(1); 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 Moke America LLC v. Moke USA, LLC, 2020 USPQ2d 10400, at *1 n.6 (TTAB 2020) (the Board noted multiple blank pages of an exhibit attached to a testimony affidavit; party who introduces documents must ensure they are complete and legible), civil action filed, No. 3:20-cv-00400-MHL (E.D. Va. June 5, 2020); 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). See also Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1563 n.7 (TTAB 2011) (opposer filed exhibits separately under a notice of reliance but the proper procedure is to attach exhibits to the copy of the transcript being filed), rev’d on other grounds, slip op. No. 11-3684 (D.N.J. August 29, 2017); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 n.9 (TTAB 2011) (same).

 7.   37 C.F.R. § 2.123(g)(2). See Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1563 n.7 (TTAB 2011) (opposer filed exhibits separately under a notice of reliance but the proper procedure is to attach exhibits to the copy of the transcript being filed), rev’d on other grounds, slip op. No. 11-3684 (D.N.J. August 29, 2017); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 n.9 (TTAB 2011) (same).

 8.   37 C.F.R. § 2.123(g)(1). See, e.g., Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 129 USPQ2d 1027, 1030 n.33 (TTAB 2018) (condensed version of transcript submitted), rev’d and remanded on other grounds, 965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir.), reh’g en banc denied, 981 F.3d 1083 (2020), cert. denied, 142 S. Ct. 82 (2021).

 9.   37 C.F.R. § 2.126(a)(1).

 10.   37 C.F.R. § 2.123(g)(2). See AT&T Mobility LLC v. Thomann, 2020 USPQ2d 53785, at *12 (TTAB 2020) (due to anticipated voluminous record, parties directed to bookmark any exhibits intended to be submitted in PDF form and to identify the exhibits consecutively in the bookmarks "by an alpha-numeric designation …such as A,B,C, etc. or 1,2,3, etc."). Cf. Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382, 1384 (TTAB 2000) (these requirements are for the convenience of the Board; improperly marked exhibits considered); Pass & Seymour, Inc. v. Syrelec, 224 USPQ 845, 847 (TTAB 1984) (the Board has discretion to consider improperly marked exhibits).

 11.   37 C.F.R. § 2.123(g)(3).

 12.   See Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *3 n.4 (TTAB 2020) (a party that wishes to submit audio or video files must record the files on an appropriate medium such as CD-ROM or DVD and physically file it with the Board); Pierce-Arrow Society v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *1 n.8 (TTAB 2019) (Board considered video documentary submitted on CD-ROM); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1654-55 (TTAB 2014) (parties may not override Trademark Rule 2.126 provisions for form of submissions by agreement; however, video and audio recordings of evidence such as commercials may be submitted on CD-ROM), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016).

 13.   See 37 C.F.R. § 2.126(a)(2)  and 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 also Moke America LLC v. Moke USA, LLC, 2020 USPQ2d 10400, at *1 n.6 (TTAB 2020) (the Board noted multiple blank pages of an exhibit attached to a testimony affidavit; party who introduces documents must ensure they are complete and legible), appeal filed, No. 3:20-cv-00400-MHL (E.D. Va. June 5, 2020); 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).

703.01(j)    Signature of Deposition by Witness

37 C.F.R. § 2.123(e)(5)  When the oral deposition has been transcribed, the deposition transcript shall be carefully read over by the witness or by the officer to the witness, and shall then be signed by the witness in the presence of any officer authorized to administer oaths unless the reading and the signature be waived on the record by agreement of all parties.

The signing of an oral deposition transcript by the witness is governed by 37 C.F.R. § 2.123(e)(5). The deposition transcript does not have to be signed in the presence of the officer before whom the oral deposition was taken. It may be signed in the presence of any officer authorized to administer oaths. If the parties choose an alternative method of signing, such as by using real-time transcription software on tablets that allows the deponent to sign when the deposition concludes, but while the deponent is still under oath, they are encouraged to memorialize their agreement, on the record, at the beginning of the deposition.

Reading and signature cannot be waived by mere agreement of the witness; the agreement of every party is required. [ Note 1.]

NOTES:

 1.   See 37 C.F.R. § 2.123(e)(5). See also Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382, 1383 (TTAB 2000) (where witness did not sign his deposition, the defect was curable and party allowed time to file and serve a signed copy). Cf. Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787 (TTAB 2002) (depositions which were not signed and included no waiver were nevertheless considered where no objections were made).

703.01(k)    Certification and Filing of Trial Testimony

37 C.F.R. § 2.123(f)  Certification and filing of deposition.

• (1) The officer shall annex to the deposition his or her certificate showing:
  • (i) Due administration of the oath by the officer to the witness before the commencement of his or her deposition;
  • (ii) The name of the person by whom the deposition was taken down, and whether, if not taken down by the officer, it was taken down in his or her presence;
  • (iii) The presence or absence of the adverse party;
  • (iv) The place, day, and hour of commencing and taking the deposition;
  • (v) The fact that the officer was not disqualified as specified in Rule 28 of the Federal Rules of Civil Procedure.
  
• (2) If any of the foregoing requirements in paragraph (f)(1) are waived, the certificate shall so state. The officer shall sign the certificate and affix thereto his or her seal of office, if he has such a seal. The party taking the deposition, or its attorney or other authorized representative, shall then promptly file the transcript and exhibits in electronic form using ESTTA. If the nature of an exhibit precludes electronic transmission via ESTTA, it shall be submitted by mail by the party taking the deposition, or its attorney or other authorized representative.

37 C.F.R. § 2.125  Filing and service of testimony.

• (a) One copy of the declaration or affidavit prepared in accordance with § 2.123, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be served on each adverse party at the time the declaration or affidavit is submitted to the Trademark Trial and Appeal Board during the assigned testimony period.
• (b) One copy of the transcript of each testimony deposition taken in accordance with § 2.123, or § 2.124 together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be served on each adverse party within thirty days after completion of the taking of that testimony. If the transcript with exhibits is not served on each adverse party within thirty days or within an extension of time for the purpose, any adverse party which was not served may have remedy by way of a motion to the Trademark Trial and Appeal Board to reset such adverse party’s testimony and/or briefing periods, as may be appropriate. If the deposing party fails to serve a copy of the transcript with exhibits on an adverse party after having been ordered to do so by the Board, the Board, in its discretion, may strike the deposition, or enter judgment as by default against the deposing party, or take any such other action as may be deemed appropriate.
• * * * *
• (d) One certified transcript and exhibits shall be filed with the Trademark Trial and Appeal Board. Notice of such filing shall be served on each adverse party and a copy of each notice shall be filed with the Board.

The certification and filing of a deposition are governed by 37 C.F.R. § 2.123(f). The certified transcript, with exhibits, must be filed promptly with the Board via ESTTA. [ Note 1.] See TBMP § 106 and TBMP § 110 for more information about using ESTTA. However, if the nature of the exhibit, such as CDs or DVDs, precludes electronic transmission via ESTTA, the party (or its attorney or other authorized representative) shall mail the exhibit to the Board at its mailing address, i.e., Trademark Trial and Appeal Board, U.S. Patent and Trademark Office, P.O. Box 1451, Alexandria, Virginia 22313-1451. [ Note 2.]

The Board interprets "promptly file," in 37 C.F.R. § 2.123(f)(2)  which concerns the filing of transcripts and exhibits, as meaning filed at any time prior to the submission of the case for final decision. Therefore, the Board will accept transcripts of testimony depositions filed at any time prior to the submission of the case for final decision. [ Note 3.] The submitting party should file the testimony deposition transcript with the Board under separate cover, under a notice of filing, rather than under notice of reliance. [ Note 4.] However, notice of the filing of the certified transcript, and accompanying exhibits, with the Board must be served on each adverse party. A copy of each such notice must also be filed with the Board. [ Note 5.] In addition, one copy of the deposition transcript, together with copies, duplicates, or photographs of the exhibits thereto, must be served on each adverse party within 30 days after completion of the taking of the testimony, or within an extension of time for the purpose. [ Note 6.]

The filing of an affidavit or declaration prepared in accordance with 37 C.F.R. § 2.123  is governed by 37 C.F.R. § 2.125(a). A party who takes testimony by affidavit or declaration must serve a copy of the declaration or affidavit along with copies of exhibits on each adverse party at the same time the party submits the declaration or affidavit to the Board during the party’s assigned testimony period. [ Note 7.] The submitting party should file the testimony affidavit or declaration with the Board under separate cover, rather than under notice of reliance. [ Note 8.]

For information concerning the service of trial testimony and the remedy that an adverse party may have if it is not timely served with a copy of the affidavit, declaration or deposition and exhibits, see TBMP § 703.01(m).

For information concerning submission of evidence by notice of reliance, see TBMP § 704.

NOTES:

 1.   See 37 C.F.R. § 2.123(f)(2)  and 37 C.F.R. § 2.125(d)  (formerly 37 C.F.R. § 2.125(c)).

Please Note: Although the USPTO has not specified requirements for the form of exhibits attached to affidavit or declaration testimony, parties are encouraged to use as a guide the form requirements set out for exhibits to depositions in 37 C.F.R. § 2.123(g)(2)  and the mailing requirements for certain exhibits set out in 37 C.F.R. § 2.123(f)(2). In addition, parties are reminded that documents submitted under affidavit or declaration but not identified therein cannot be considered as exhibits. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016).

 2.   See 37 C.F.R. § 2.123(f)(2). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("If the nature of an exhibit, such as CDs or DVDs, precludes electronic transmission via ESTTA, it shall be submitted by mail.").

 3.   See NOTICE OF FINAL RULEMAKING, 63 Fed. Reg. 48081 (September 9, 1998), and comments and responses published in the notice in regard to amendment of 37 C.F.R. § 2.123(f) and 37 C.F.R. § 2.125(c) (now 37 C.F.R. § 2.125(d)). See also Grote Industries, Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1201 (TTAB 2018) (copies of oral testimony transcripts may be filed with the Board at any time before the case is submitted for final decision), judgment rev’d and vacated by consent decree, No. 1:18-cv-00599 (W.D.N.Y. June 8, 2022); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (testimony must be taken during the offering party’s testimony period, but need not be submitted during the party’s testimony period; transcript must be served within thirty days after completion of the taking of that testimony); Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390, 1392 n.6 (TTAB 1991) (the wording "promptly filed" in an earlier version of 37 C.F.R. § 2.125(d)  (formerly 37 C.F.R. § 2.125(c)) was construed as meaning filed at any time prior to final hearing).

 4.   Compare 37 C.F.R. § 2.125(b)  with 37 C.F.R. § 2.122(e). See, e.g., Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (not appropriate to submit testimony under a notice of reliance); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 n.4 (TTAB 2002) (testimony depositions are not filed by notice of reliance but instead are filed under cover of notice of filing which must also be served on each adverse party); Paramount Pictures Corp. v. Romulan Invasions, 7 USPQ2d 1897, 1898 n.2 (TTAB 1988); Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984) (notices of reliance on testimony depositions and exhibits introduced in connection with testimony depositions are unnecessary and superfluous); Entex Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116, 1117 n.1 (TTAB 1982) (notice of reliance on exhibits introduced in connection with testimony superfluous). Cf. WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037, 1037-38 n.12 (TTAB 2018) (Board denied opposer’s motion to strike testimony declarations that had been filed and served as exhibits to applicant’s notice of reliance; materials listed normally filed under notice of reliance).

 5.   See 37 C.F.R. § 2.125(d)  (formerly 37 C.F.R. § 2.125(c)). See also Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 n.4 (TTAB 2002) (testimony depositions are not filed by notice of reliance but instead are filed under cover of notice of filing which must also be served on each adverse party).

 6.   See 37 C.F.R. § 2.125(b)  (formerly 37 C.F.R. § 2.125(a)).

 7.   See 37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.125(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.125 to renumber paragraphs (a) through (e) as (b) through (f) and to add new § 2.125(a) to require that one copy of a declaration or affidavit prepared in accordance with § 2.123, with exhibits, shall be served on each adverse party at the time the declaration or affidavit is submitted to the Board during the assigned testimony period."). Cf. Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *1 n.2 (TTAB 2019) (motion to strike testimonial declarations for improper service denied because defect in service and any prejudice was remedied by additional notice of, as well as electronic links to, the testimonial declarations, and petitioner was already aware of and had the opportunity to review the declarations); WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (Board denied opposer’s motion to strike testimony declarations that had been filed and served as exhibits to applicant’s notice of reliance, as doing otherwise would elevate form over substance. "Although the better practice would have been for Applicant to file and serve separately copies of the [witnesses’] testimony declarations, instead of attaching them as exhibits to its notice of reliance, Applicant’s failure to do so is of no consequence.").

 8.   Compare 37 C.F.R. § 2.125(a)  with 37 C.F.R. § 2.122(e). See Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *2-3 (TTAB 2019) (opposer’s submission of testimonial declaration under a notice of reliance was unnecessary, and not the preferred approach, but harmless). Cf. WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (Board denied opposer’s motion to strike testimony declarations that had been filed and served as exhibits to applicant’s notice of reliance, as doing otherwise would elevate form over substance. "Although the better practice would have been for Applicant to file and serve separately copies of the [witnesses’] testimony declarations, instead of attaching them as exhibits to its notice of reliance, Applicant’s failure to do so is of no consequence.").

703.01(l)    Trial Testimony Must be Filed

37 C.F.R. §  2.123(h)  Depositions must be filed. All depositions which are taken must be duly filed in the Office. On refusal to file, the Office at its discretion will not further hear or consider the contestant with whom the refusal lies; and the Office may, at its discretion, receive and consider a copy of the withheld deposition, attested by such evidence as is procurable.

37 C.F.R. § 2.125  Filing and service of testimony.

(a) One copy of the declaration or affidavit prepared in accordance with § 2.123, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be served on each adverse party at the time the declaration or affidavit is submitted to the Trademark Trial and Appeal Board during the assigned testimony period.

All trial testimony depositions that are taken in a Board inter partes proceeding must be filed with the Board, and, when filed, automatically constitute part of the evidentiary record in the proceeding. [ Note 1.] If a party which took a testimony deposition refuses to file it, the Board, in its discretion, may refuse to further hear or consider the party’s case, or may receive and consider a copy of the withheld deposition, attested by such evidence as is procurable. [ Note 2.]

A party who takes testimony by affidavit or declaration must serve a copy of the declaration or affidavit along with copies of exhibits on each adverse party at the same time the party submits the declaration or affidavit to the Board during the party’s assigned testimony period. [ Note 3.]

For information concerning the procedure to file trial testimony, see TBMP § 703.01(k).

NOTES:

 1.   See 37 C.F.R. § 2.123(h). See also e.g., Order Sons of Italy in America v. Memphis Mafia, Inc., 52 USPQ2d 1364, 1366 n.4 (TTAB 1999); Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390, 1392 n.6 (TTAB 1991) (opposer was not prejudiced by transcript of testimony deposition filed for first time with applicant’s brief on the case because opposer should have assumed it would become part of the record); Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984). Cf. An Evening at the Trotters, Inc. v. A Nite at the Races, Inc., 214 USPQ 737, 738 n.2 (TTAB 1982) (deposition which had not been filed but was not completed and was not referred to by either party was considered terminated and omitted by stipulation).

 2.   37 C.F.R. § 2.123(h). See Motion Picture Association of America Inc. v. Respect Sportswear Inc., 83 USPQ2d 1555, 1558 (TTAB 2007) (because opposer did not argue that testimony and exhibits which applicant failed to file were adverse to applicant, and case was fully briefed and ready for decision, Board decided case without testimony or exhibits).

 3.   See 37 C.F.R. § 2.123  and 37 C.F.R. § 2.125(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.125 to renumber paragraphs (a) through (e) as (b) through (f) and to add new § 2.125(a) to require that one copy of a declaration or affidavit prepared in accordance with § 2.123, with exhibits, shall be served on each adverse party at the time the declaration or affidavit is submitted to the Board during the assigned testimony period."). Cf. Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *1 n.2 (TTAB 2019) (motion to strike testimonial declarations for improper service denied because defect in service and any prejudice was remedied by additional notice of, as well as electronic links to, the testimonial declarations, and petitioner was already aware of and had the opportunity to review the declarations); WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037 (TTAB 2018) (Board denied opposer’s motion to strike testimony declarations that had been filed and served as exhibits to applicant’s notice of reliance, as doing otherwise would elevate form over substance).

703.01(m)    Service of Trial Testimony

37 C.F.R. § 2.125  Filing and service of testimony.

• (a) One copy of the declaration or affidavit prepared in accordance with § 2.123, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be served on each adverse party at the time the declaration or affidavit is submitted to the Trademark Trial and Appeal Board during the assigned testimony period.
• (b) One copy of the transcript of each testimony deposition taken in accordance with § 2.123 or § 2.124, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be served on each adverse party within thirty days after completion of the taking of that testimony. If the transcript with exhibits is not served on each adverse party within thirty days or within an extension of time for the purpose, any adverse party which was not served may have remedy by way of a motion to the Trademark Trial and Appeal Board to reset such adverse party’s testimony and/or briefing periods, as may be appropriate. If the deposing party fails to serve a copy of the transcript with exhibits on an adverse party after having been ordered to do so by the Board, the Board, in its discretion, may strike the deposition, or enter judgment as by default against the deposing party, or take any such other action as may be deemed appropriate.

A party who takes testimony by affidavit or declaration must serve a copy of the declaration or affidavit along with copies of exhibits on each adverse party at the same time the party submits the declaration or affidavit to the Board during the party’s assigned testimony period. [ Note 1.]

One copy of the transcript of a testimony deposition, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, must be served on each adverse party within 30 days after completion of the taking of the testimony, or within an extension of time for the purpose. [ Note 2.]

The requirement that a copy of the testimony affidavit, declaration or deposition transcript, with exhibits, be served on every adverse party within the time specified in 37 C.F.R. § 2.125(a)  and 37 C.F.R. § 2.125(b) is intended to ensure that each adverse party will have the testimony before it has to offer its own evidence, or, if the testimony in question is rebuttal testimony, to ensure that each adverse party will have the testimony before it has to prepare its brief on the case. [ Note 3.] If a copy of the testimony affidavit, declaration or deposition transcript, with exhibits, is not served on each adverse party within that time, any adverse party that was not served may have remedy by way of a motion to the Board to reset its testimony and/or briefing periods, as may be appropriate, or to compel service of the testimony affidavit, declaration or deposition transcript, with exhibits. [ Note 4.]

If a party that took a deposition fails to serve a copy of the transcript, with exhibits, on an adverse party after having been ordered to do so by the Board, the Board, in its discretion, may take any of the actions mentioned in 37 C.F.R. § 2.125(b). [ Note 5.]

NOTES:

 1.   See 37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.125(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.125 to renumber paragraphs (a) through (e) as (b) through (f) and to add new § 2.125(a) to require that one copy of a declaration or affidavit prepared in accordance with § 2.123, with exhibits, shall be served on each adverse party at the time the declaration or affidavit is submitted to the Board during the assigned testimony period."). Cf. Moke America LLC v. Moke USA, LLC, 2020 USPQ2d 10400, at *7 n.30 (TTAB 2020) (advising parties not to wait until the last day of their testimony period to file a testimony affidavit or declaration to allow time to cure curable defects), appeal filed, No. 3:20-cv-00400-MHL (E.D. Va. June 5, 2020); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *1 n.2 (TTAB 2019) (motion to strike testimonial declarations for improper service is denied because defect in service and any prejudice was remedied by additional notice of, as well as electronic links to, the testimonial declarations, and petitioner was already aware of and had the opportunity to review the declarations).

 2.   37 C.F.R. § 2.125(b)  (formerly 37 C.F.R. § 2.125(a)). See Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009).

 3.   See Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *1 n.2 (TTAB 2019) (motion to strike testimonial declarations for improper service is denied because defect in service and any prejudice was remedied by additional notice of, as well as electronic links to, the testimonial declarations, and petitioner was already aware of and had the opportunity to review the declarations); Techex, Ltd. v. Dvorkovitz, 220 USPQ 81, 82 n.2 (TTAB 1983) (opposer’s objection to introduction of deposition overruled where opposer had been given time to request additional time for rebuttal in light of late-served copy of transcript but failed to do so); S. S. Kresge Co. v. J-Mart Industries, Inc., 178 USPQ 124, 125 n.3 (TTAB 1973) (applicant’s objection in its brief to opposer’s introduction of exhibits which were allegedly missing from service copy of deposition transcript was untimely).

 4.   37 C.F.R. § 2.125(b)  (formerly 37 C.F.R. § 2.125(a)); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (resetting adverse party’s testimony and/or briefing periods, or compelling service of transcript); Techex, Ltd. v. Dvorkovitz, 220 USPQ 81, 83 (TTAB 1983).

 5.   Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (striking of testimony). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending renumbered § 2.125(b) to add a cross-reference to § 2.124 and to clarify that the paragraph applies to testimony depositions, including depositions on written questions.").

703.01(n)    Correction of Errors in Trial Testimony Deposition

37 C.F.R. § 2.125(c)  The party who takes testimony is responsible for having all typographical errors in the transcript and all errors of arrangement, indexing and form of the transcript corrected, on notice to each adverse party, prior to the filing of one certified transcript with the Trademark Trial and Appeal Board. The party who takes testimony is responsible for serving on each adverse party one copy of the corrected transcript or, if reasonably feasible, corrected pages to be inserted into the transcript previously served.

A party that takes testimony is responsible for having any errors in the transcript corrected, on notice to each adverse party, prior to the filing of the certified transcript with the Board. [ Note 1.]

If the witness, upon reading the transcript, discovers that typographical or transcription errors need to be corrected, or that other corrections are necessary to make the transcript an accurate record of what the witness actually said during the taking of his or her testimony, the witness should make a list of all such corrections and forward the list to the officer before whom the deposition was taken. The officer, in turn, should correct the transcript by redoing the involved pages. Alternatively, if there are not many corrections to be made, the witness may correct the transcript by writing each correction above the original text that it corrects, and initialing the correction. Although parties sometimes attempt to correct errors in transcripts by simply inserting a list of corrections at the end of the transcript, this is not an effective method of correction. The Board does not enter corrections for litigants, and the list of corrections is likely to be overlooked and/or disregarded. While corrections may be made in a transcript, to make the transcript an accurate record of what the witness said during the taking of his or her testimony, material changes in the text are not permitted -- the transcript may not be altered to change the testimony of the witness after the fact. [ Note 2.]

If corrections are necessary, the party that took the deposition must serve on every adverse party a copy of the corrected transcript or, if reasonably feasible, corrected pages to be inserted into the transcript previously served. [ Note 3.]

If errors are discovered after the transcript has been filed with the Board, a list of corrections, signed by the witness, should be submitted to the Board (and served on every adverse party), together with a request for leave to correct the errors. Alternatively, the parties may stipulate that specified corrections may be made. If the request is granted, or if the parties so stipulate, the party that took the deposition should file a substitute, corrected transcript with the Board.

NOTES:

 1.   37 C.F.R. § 2.125(c)  (formerly 37 C.F.R. § 2.125(b)); Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390, 1392 n.6 (TTAB 1991) (objection to corrections served four days after filing and less than two weeks prior to due date for reply brief overruled since remedy lies in requesting extension of briefing period rather than having Board exclude the evidence).

 2.   See Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1325 (TTAB 1992) (any substantive changes made to testimony deposition on written questions would not be considered); Cadence Industries Corp. v. Kerr, 225 USPQ 331, 333 n.4 (TTAB 1985) (Board gave no consideration to response or corrected response when the correction, which changed the percentage of opposer’s business income derived from licensing, was substantive); and Entex Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116, 1117 n.2 (TTAB 1982) (change in testimony from "designing that type of game..." to "designing that Simon Says type of game..." was substantive in nature and not permitted). Cf. Hollywood Casino LLC v. Chateau Celeste, Inc., 116 USPQ2d 1988, 1996 (TTAB 2015) (on summary judgment, Board gave no consideration to a Fed. R. Civ. P. 30(b)(6) discovery deposition errata sheet because it resulted in substantive changes to witness’ testimony).

 3.   See 37 C.F.R. § 2.125(c)  (formerly 37 C.F.R. § 2.125(b)). See also Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390, 1392 n.6 (TTAB 1991).

703.01(o)    Objections to Testimony Affidavits, Declarations and Depositions

For information concerning objections to testimony affidavits, declarations and depositions, see TBMP § 707.03 and TBMP § 533.

703.01(p)    Confidential or Trade Secret Material

37 C.F.R. § 2.116(g)  The Trademark Trial and Appeal Board’s standard protective order is automatically imposed in all inter partes proceedings unless the parties, by stipulation approved by the Board, agree to an alternative order, or a motion by a party to use an alternative order is granted by the Board. The standard protective order is available at the Office’s web site. No material disclosed or produced by a party, presented at trial, or filed with the Board, including motions or briefs which discuss such material, shall be treated as confidential or shielded from public view unless designated as protected under the Board’s standard protective order, or under an alternative order stipulated to by the parties and approved by the Board, or under an order submitted by motion of a party granted by the Board. The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.

37 C.F.R. § 2.125(f)  Upon motion by any party, for good cause, the Trademark Trial and Appeal Board may order that any part of an affidavit or declaration or a deposition transcript or any exhibits that directly disclose any trade secret or other confidential research, development, or commercial information may be filed under seal and kept confidential under the provisions of § 2.27(e). If any party or any attorney or agent of a party fails to comply with an order made under this paragraph, the Board may impose any of the sanctions authorized by § 2.120(h).

37 C.F.R. § 2.126(c)  To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the "Confidential" selection available in ESTTA, or, where appropriate, under a separate paper cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.

Except for materials filed under seal pursuant to a protective order, the files of proceedings before the Board, including all filings by the parties and exhibits thereto are available for public viewing on the USPTO website via TTABVUE at http://ttabvue.uspto.gov/. In addition, a link to TSDR, in which reside the records of the files of subject applications and registrations, is available from TTABVUE. [ Note 1.] See TBMP § 122.02 and TBMP § 412.05. Therefore, only the particular exhibits or deposition transcript pages of the testimony affidavit, declaration or deposition that disclose confidential information should be filed under seal pursuant to a protective order. If a party over-designates material as confidential, the Board will not be bound by the party’s designation, and will treat as confidential only testimony and evidence that is truly confidential and commercially sensitive trade secrets. [ Note 2.] See TBMP § 801.03. In addition, upon motion by any party, for good cause, the Board may order that any part of an affidavit or declaration or a testimony transcript or any exhibits that directly discloses any trade secret or other confidential research, development, or commercial information may be filed under seal and kept confidential under the provisions of 37 C.F.R. § 2.27(e). Failure to comply with this order may result in imposition of any of the sanctions authorized by 37 C.F.R. § 2.120(h). [ Note 3.] See TBMP § 502.02.

In accordance with 37 C.F.R. § 2.126(c), a party who submits testimony or associated exhibits containing confidential information under seal or designated as confidential in ESTTA, must submit the testimony or associated exhibits using the "Confidential" selection in ESTTA or, where appropriate, under separate paper cover. The party must mark both the submission and its cover "confidential," and must identify the case number and parties. The party also must concurrently submit for the public record a redacted version of the testimony or associated exhibit. [ Note 4.] A rule of reasonableness dictates what information should be redacted, and only in very rare instances should an entire submission be deemed confidential. [ Note 5.] In cases where a redacted version has not been provided, the confidentiality of the information may be deemed waived. [ Note 6.] Where, in any publicly accessible filing, a party has cited, quoted from, or described, without redaction, testimony or documents that it has designated as confidential, or that its adversary has designated as confidential and the adversary has not subsequently objected, the Board may treat this as a waiver of the claim of confidentiality as to the content and subject matter of the pertinent materials. [ Note 7.] For material or testimony that has been designated confidential and which cannot be viewed on TTABVUE, the parties should include TTABVUE entry and page numbers for both the redacted and confidential versions of the submission when referencing such material in a brief. [ Note 8.] See TBMP § 801.03.

In addition, in the confidential submission, parties are strongly encouraged to enclose confidential information in brackets to better mark the specific information to be kept confidential. This facilitates a better comparison between the public and confidential versions of the submissions when the Board is preparing a final decision, and will reduce the likelihood that the Board inadvertently may include confidential matter in a final decision or an order on a motion. For further information regarding the filing of confidential matter and information regarding ESTTA, see TBMP § 110 and TBMP § 412.04.

If ESTTA is unavailable due to technical problems, or extraordinary circumstances exist, a party may file an affidavit, declaration or testimony, and associated exhibits, in paper form. A submission made in paper form must include a written explanation of such technical problems or extraordinary circumstances, or it will not be considered. [ Note 9.] Paper submissions are scanned into TTABVUE and designated "confidential." After scanning and designating as "confidential," the Board retains the confidential paper submissions for a short period of time before disposing of the confidential paper submissions in an appropriate manner. Confidential testimony and exhibits submitted in paper are disposed of shortly after the proceeding is terminated.

If a party submits confidential material using ESTTA, the filer should select "CONFIDENTIAL Opposition, Cancellation or Concurrent Use" under "File Documents in a Board Proceeding." Filings made using this option will not be made available for public viewing, although an entry will be made on the publicly-available docket sheet in TTABVUE. Electronic filing using ESTTA is preferred for submissions containing confidential material. See TBMP § 120.02 and TBMP § 412.04.

The Board’s standard protective order is automatically applicable throughout all inter partes proceedings, subject to specified exceptions, unless modified by the parties and approved by the Board. [ Note 10.] For further information on protective orders, see TBMP § 412.

For further information regarding confidential materials, see TBMP § 120.02 and TBMP § 412.

NOTES:

 1.   37 C.F.R. § 2.27(d)  ("the official records of applications and all proceedings relating thereto are available for public inspection") and 37 C.F.R. § 2.27(e)  (filing and handling of confidential matter). See, e.g., Ayoub, Inc. and Ayoub Supply, LLC v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1398 n.39 (TTAB 2016) (party allowed time to file redacted version of material marked as "confidential" but not submitted under seal because "it is the general policy of the Board that all papers in a proceeding be public"); Harjo v. Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999) (Board agreed to hold exhibits marked confidential for thirty days pending receipt of a motion for a protective order but cautioned that in the absence of such motion, the exhibits would be placed in the proceeding file), 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.   37 C.F.R. § 2.116(g)  and 37 C.F.R. § 2.126(c). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69959 (October 7, 2016) ("The purpose of the rule is to codify existing practice to treat improperly designated material that is public information as public. This is narrowly applied and only done when necessary to articulate the Board decision."). See, e.g., The Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *2 n.13 (TTAB 2020) (Board exercised discretion to "treat as not confidential that material which cannot reasonably be considered confidential" because the "Board must be able to discuss the evidence of record, … so that the parties and a reviewing court will know the basis of the Board's decisions."), appeal dismissed-in-part, aff’d-in-part, vacated-in-part, and remanded, 17 F.4th 129, 2021 USPQ2d 1069 (Fed. Cir. 2021); AT&T Mobility LLC v. Thomann, 2020 USPQ2d 53785, at *12 (TTAB 2020) (parties reminded to limit confidential designation to truly confidential or commercially sensitive materials); Optimal Chemical Inc. v. Srills LLC, 2019 USPQ2d 338409, at *2 n.13 (TTAB 2019) ("to the extent the parties have improperly designated testimony and evidence as confidential, the Board may disregard the confidential designation when appropriate"); RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1804 n.9 and 1806 n.13-15, 25 (TTAB 2018) (Board not bound by designation; specific examples of improper and over-designation) aff’d, 377 F. Supp. 3d 588 (E.D. Va. 2019), aff’d, 986 F.3d 361, 2021 USPQ2d 81 (4th Cir. 2021); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1475 (TTAB 2017) (same), aff’d, No. 3:18-cv-00443-C (N.D. Tex. Oct. 29, 2019), appeal dismissed, No. 19-11180 (5th Cir. Feb. 4, 2020); Poly-America, L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1511 n.6 (TTAB 2017) (same); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.12 (TTAB 2012) (where party designated entire testimony deposition confidential, Board allowed party time to file a redacted version); Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1635 (TTAB 2011) (in pretrial order, parties reminded to refrain from improperly designating evidence or a show cause order may issue); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1848 (TTAB 2008). See also General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1181 (TTAB 2008) (although entire deposition was marked confidential, the Board’s decision referred to selective portions that appeared to not be truly confidential).

 3.   See 37 C.F.R. § 2.125(f)  (formerly 37 C.F.R. § 2.125(e)). Cf. AT&T Mobility LLC v. Thomann, 2020 USPQ2d 53785, at *5 nn.17-19 (TTAB 2020) (party had been required to resubmit three different witness testimony or discovery depositions with only truly confidential material redacted); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1237-1238 n. 24 (TTAB 2015) (party that submitted entire discovery deposition designated as confidential was ordered to resubmit separate public and confidential copies), dismissed per stipulation sub nom Kraft Heinz Foods Co. v. Boulder Brands USA, Inc. Case No. 2:15-0681 (W.D. Pa. May 22, 2017).

 4.   37 C.F.R. § 2.126(c). See Ayoub, Inc. and Ayoub Supply, LLC v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1398 n.39 (TTAB 2016) (party allowed time to file redacted version of material marked as "confidential" but not submitted under seal); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014); Duke University v. Haggar Clothing Inc., 54 USPQ2d 1443, 1445 (TTAB 2000) (redacted copy deleting confidential matters must be filed). See also Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913 (TTAB 2015) (entry of confidential exhibits and briefs in ACR case).

 5.   General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.4 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential) (excessive markings of various information as confidential complicates record and often indicates that matter is improperly designated or not useful to case).

 6.   See, e.g., Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1633 n.6 (TTAB 2007).

 7.   Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1475 n.17 (TTAB 2017).

 8.   Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1468 n.6 (TTAB 2016).

 9.   See 37 C.F.R. § 2.126(b). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69966 (October 7, 2016) (discussing the procedure for paper filings).

 10.   37 C.F.R. § 2.116(g).

703.02    Testimony Depositions on Written Questions

703.02(a)    Depositions on Written Questions: When Available

37 C.F.R. § 2.123 

• (a)
  • (1) The testimony of witnesses in inter partes cases may be submitted in the form of an affidavit or a declaration pursuant to § 2.20 and in conformance with the Federal Rules of Evidence, filed during the proffering party’s testimony period, subject to the right of any adverse party to elect to take and bear the expense of oral cross-examination of that witness as provided under paragraph (c) of this section if such witness is within the jurisdiction of the United States, or conduct cross-examination by written questions as provided in § 2.124 if such witness is outside the jurisdiction of the United States, and the offering party must make that witness available; or taken by depositions upon oral examination as provided by this section or by depositions upon written questions as provided by § 2.124.
  • (2) Testimony taken in a foreign country shall be taken: by deposition upon written questions as provided by § 2.124, unless the Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate; or by affidavit or declaration, subject to the right of any adverse party to elect to take and bear the expense of cross-examination by written questions of that witness, If a party serves notice of the taking of a testimonial deposition upon written questions of a witness who is, or will be at the time of the deposition, present within the United States or any territory which is under the control and jurisdiction of the United States, any adverse party may, within twenty days from the date of service of the notice, file a motion with the Trademark Trial and Appeal Board, for good cause, for an order that the deposition be taken by oral examination.
  
• (b) Stipulations. If the parties so stipulate in writing, depositions may be taken before any person authorized to administer oaths, at any place, upon any notice, and in any manner, and when so taken may be used like other depositions. The parties may stipulate in writing what a particular witness would testify to if called; or any relevant facts in the case may be stipulated in writing.

Ordinarily, the testimony of a witness may be taken by affidavit, declaration or on oral examination pursuant to 37 C.F.R. § 2.123, or by deposition on written questions pursuant to 37 C.F.R. § 2.124. [ Note 1.] For information concerning testimony by affidavit, declaration or oral depositions, see TBMP § 703.01. However, testimony taken in a foreign country must be taken: by deposition on written questions, unless the Board, on motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate; or by affidavit or declaration, subject to the right of any adverse party to elect to take and bear the expense of cross-examination by written questions of that witness. [ Note 2.] See TBMP § 703.01(b).

In addition, if a party serves notice of the taking of a testimony deposition on written questions of a witness who is, or will be at the time of the deposition, present within the United States (or any territory which is under the control and jurisdiction of the United States), any adverse party may, within 20 days from the date of service of the notice, file a motion with the Board, for good cause, for an order that the deposition be taken by oral examination. [ Note 3.] See TBMP § 703.01(b). What constitutes good cause to take an oral deposition is determined on a case-by-case basis. [ Note 4.] See TBMP § 531.

NOTES:

 1.   37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.123(a)(2). See Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *4 n.21 (TTAB 2019) (noting the three manners for taking testimony, affidavit or declaration, oral deposition, or testimony on written questions), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *2 (TTAB 2019) (during its testimony period a party may take the testimony of a witness, by affidavit or declaration, or by deposition upon oral examination, or, if the witness is located in a foreign country, by deposition upon written questions).

 2.   See 37 C.F.R. § 2.123(a)(2). Cf. Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *2 (TTAB 2019) (the method of cross-examination available when direct testimony of a witness outside of the United States is offered by affidavit or declaration is written questions; there is no good cause exception to take oral cross-examination). With respect to discovery depositions, see 37 C.F.R. § 2.120(c)(1); Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998); Orion Group Inc. v. Orion Insurance Co., 12 USPQ2d 1923, 1925-26 (TTAB 1989) (good cause shown to take oral deposition of witness in England under the circumstances and since fares to England were not that much greater than fares within the United States and no translation was required).

 3.   See 37 C.F.R. § 2.123(a)(2)  (formerly 37 C.F.R. § 2.123(a)(1)); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD, 81 Fed. Reg. 69950, 69964 (October 7, 2016) ("The Office is further amending § 2.123(a)(1) to move to § 2.123(a)(2) a provision permitting a motion for deposition on oral examination of a witness in the United States whose testimonial deposition on written questions has been noticed."). See also Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 1990), corrected at 19 USPQ2d 1479 (TTAB 1990) (good cause shown to take oral deposition of expert witness during rebuttal testimony period); Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980) (good cause shown where deponents were former employees of respondent and present employees of petitioner and were being deposed for first time during rebuttal period).

 4.   See Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980).

703.02(b)    Depositions on Written Questions: Before Whom Taken

37 C.F.R § 2.124(a)  A deposition upon written questions may be taken before any person before whom depositions may be taken as provided by Rule 28 of the Federal Rules of Civil Procedure.

A deposition on written questions, like a deposition on oral examination, may be taken before the persons described in Fed. R. Civ. P. 28. [ Note 1.] For further information, see TBMP § 703.01(g).

NOTES:

 1.   See 37 C.F.R. § 2.124(a). See, e.g., Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 n.8 (TTAB 2019) (both the procedure for oral cross-examination or cross-examination on written questions require a court reporter or other officer to swear in the witness, record the answers and to create a written transcript of the examination).

703.02(c)    Depositions on Written Questions: When Taken

37 C.F.R. § 2.121  Assignment of times for taking testimony and presenting evidence.(a) The Trademark Trial and Appeal Board will issue a trial order setting a deadline for each party’s required pretrial disclosures and assigning to each party the time for taking testimony and presenting evidence ("testimony period"). No testimony shall be taken or evidence presented except during the times assigned, unless by stipulation of the parties approved by the Board, or, upon motion, by order of the Board. The deadlines for pretrial disclosures and the testimony periods may be rescheduled by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. ...

37 C.F.R. §  2.124(b)(1)  A party desiring to take a testimonial deposition upon written questions shall serve notice thereof upon each adverse party within ten days from the opening date of the testimony period of the party who serves the notice. The notice shall state the name and address of the witness. A copy of the notice, but not copies of the questions, shall be filed with the Trademark Trial and Appeal Board.

37 C.F.R. § 2.124(b)(3)  A party desiring to take cross-examination, by written questions, of a witness who has provided testimony by affidavit or declaration shall serve notice thereof upon each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board.

* * * *

37 C.F.R. § 2.124(d)(1)  … Within twenty days from the date of service of the notice of taking direct examination or service of a testimony affidavit or declaration, any adverse party may serve cross-questions upon the party who proposes to take the deposition. …

37 C.F.R. § 2.124(d)(2)  ... Upon receipt of written notice that one or more testimonial depositions are to be taken upon written questions, the Trademark Trial and Appeal Board shall suspend or reschedule other proceedings in the matter to allow for the orderly completion of the depositions upon written question.

A party may take trial testimony only during its assigned testimony period, except by stipulation of the parties approved by the Board, or, on motion, by order of the Board. [ Note 1.] See TBMP § 701. For information concerning the assignment of testimony periods, and the rescheduling, extension, and reopening thereof, see TBMP § 509 and TBMP § 701.

A party that desires to take a testimony deposition on written questions must serve notice thereof on each adverse party within 10 days from the opening date of the deposing party’s testimony period, as originally set or as reset. [ Note 2.]

A party that desires to take cross-examination, by written questions, of a witness who has provided affidavit or declaration testimony must serve notice thereof on each adverse party, and file a copy of the notice (but not a copy of the questions) with the Board, within twenty days from the date of service of the affidavit or declaration. [ Note 3.]

On receipt of written notice that one or more testimony depositions are to be taken on written questions, the Board will generally suspend or reschedule other proceedings in the case to allow for the orderly completion of the depositions on written questions. [ Note 4.]

For information concerning the time for taking a discovery deposition on written questions of a party, see TBMP § 404.03(b).

NOTES:

 1.   37 C.F.R. § 2.121(a).

 2.   37 C.F.R. § 2.124(b)(1). See Marshall Field & Co. v. Mrs. Field’s Cookies, 17 USPQ2d 1652, 1652 (TTAB 1990) (notice of testimony depositions on written questions, while served eight months after testimony period originally opened, were nonetheless timely, having been served within 10 days of "opening" of testimony period as last reset).

 3.   37 C.F.R. § 2.124(b)(3)  and 37 C.F.R. § 2.124(d)(1). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is adding new § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a witness who has provided testimony by affidavit or declaration shall serve notice on each adverse party and file a copy of the notice with the Board."), and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES: CORRECTION, 81 Fed. Reg. 89382 December 6, 2016) (further clarification necessary to "clearly incorporate the timing for cross-examination upon written questions of testimony by affidavit or declaration.").

 4.   37 C.F.R. § 2.124(d)(2). See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *3 (TTAB 2019) (proceedings suspended to allow for completion of the cross-examination on written questions of Cuban declarants); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990); Marshall Field & Co. v. Mrs. Field’s Cookies, 17 USPQ2d 1652 (TTAB 1990).

703.02(d)    Depositions on Written Questions: Place of Deposition

A testimony deposition on written questions may be taken at any reasonable place. [ Note 1.] Cf. TBMP § 703.01(d). An adverse party may attend the taking of the deposition and the party who proffered affidavit or declaration testimony may attend the cross-examination on written questions if it so desires, not for the purpose of participating (its participation will have occurred previously, through its service of cross questions, redirect questions, recross questions, and objections, if any, pursuant to 37 C.F.R. § 2.124(d)(1), but rather merely for the purpose of observing.

For information concerning the place where a discovery deposition upon written questions is taken, see TBMP § 404.03(b), TBMP § 404.03(c), and TBMP § 404.04.

NOTES:

 1.   Cf. 37 C.F.R. § 2.123(c). Cf. also 37 C.F.R. § 2.123(b)  regarding stipulations as to place, manner and notice of depositions.

703.02(e)    Depositions on Written Questions: Notice of Deposition

37 C.F.R. § 2.124 

• (b)
  • (1) A party desiring to take a testimonial deposition upon written questions shall serve notice thereof upon each adverse party within ten days from the opening date of the testimony period of the party who serves the notice. The notice shall state the name and address of the witness. A copy of the notice, but not copies of the questions, shall be filed with the Trademark Trial and Appeal Board.
  • * * * *
  • (3) A party desiring to take cross-examination, by written questions, of a witness who has provided testimony by affidavit or declaration shall serve notice thereof upon each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board.
  
• (c) Every notice given under the provisions of paragraph (b) of this section shall be accompanied by the name or descriptive title of the officer before whom the deposition is to be taken.
• (d)
  • (1) Every notice served on any adverse party under the provisions of paragraphs (b)(1) and (2) of this section, for the taking of direct examination, shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the deposition. Every notice served on any adverse party under the provisions of paragraph (b)(3) of this section, for the taking of cross-examination, shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the cross-examination. Within twenty days from the date of service of the notice of taking direct examination or service of a testimony affidavit or declaration, any adverse party may serve cross questions upon the party who proposes to take the deposition. ...
  

To take a testimony deposition on written questions, a party must serve notice thereof on each adverse party within 10 days from the opening date of its testimony period, as originally set or as reset. [ Note 1.] The notice must state the name and address of the witness, and it must be accompanied both by the name or descriptive title of the officer before whom the deposition is to be taken and the written questions to be propounded on behalf of the deposing party. [ Note 2.] A copy of the notice, but not of the questions, must be filed with the Board. [ Note 3.]

A party desiring to take cross-examination, by written questions, of an affiant or declarant must serve on each adverse party notice of the cross-examination within 20 days from date of service of the affidavit or declaration. [ Note 4.] The notice must state the name or descriptive title of the officer before whom the deposition will be taken, and must include a copy of the written questions to be propounded at cross-examination. [ Note 5.] The party must file a copy of the notice, but not the questions, with the Board. [ Note 6.]

If the parties so stipulate in writing, a deposition may be taken before any person authorized to administer oaths, at any place, on any notice, and in any manner, and when so taken, may be used like any other deposition. [ Note 7.]

For information concerning the notice of deposition in the case of a discovery deposition on written questions, see TBMP § 404.07(d).

NOTES:

 1.   37 C.F.R. § 2.124(b)(1). See Marshall Field & Co. v. Mrs. Field’s Cookies, 17 USPQ2d 1652 (TTAB 1990).

 2.   37 C.F.R. § 2.124(b)(1), 37 C.F.R. § 2.124(c), and 37 C.F.R. § 2.124(d)(1).

 3.   37 C.F.R. § 2.124(b)(1).

 4.   37 C.F.R. § 2.124(b)(3)  and 37 C.F.R. § 2.124(d)(1). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a witness who has provided testimony by affidavit or declaration shall serve notice on each adverse party and file a copy of the notice with the Board."), and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES: CORRECTION, 81 Fed. Reg. 89382 (December 6, 2016) (further clarification necessary to "clearly incorporate the timing for cross-examination upon written questions of testimony by affidavit or declaration.").

 5.   37 C.F.R. § 2.124(c)  and 37 C.F.R. § 2.124(d)(1).

 6.   37 C.F.R. § 2.124(b)(3). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a witness who has provided testimony by affidavit or declaration shall serve notice on each adverse party and file a copy of the notice with the Board.").

 7.   37 C.F.R. § 2.123(b).

703.02(f)    Depositions on Written Questions: Securing Attendance of Unwilling Witness

A party who takes testimony by affidavit or declaration must make the witness available for cross-examination under 37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.123(a)(2). See TBMP § 703.01(b).

For information concerning securing the attendance of an unwilling witness, see TBMP § 703.01(f) (for a testimony deposition) and TBMP § 404.03 (for a discovery deposition).

703.02(g)    Depositions on Written Questions: Examination of Witness

37 C.F.R. § 2.124 

• (b)
  • (1) A party desiring to take a testimonial deposition upon written questions shall serve notice thereof upon each adverse party within ten days from the opening date of the testimony period of the party who serves the notice. The notice shall state the name and address of the witness. A copy of the notice, but not copies of the questions, shall be filed with the Trademark Trial and Appeal Board.
  • * * * *
  • (3) A party desiring to take cross-examination, by written questions, of a witness who has provided testimony by affidavit or declaration shall serve notice thereof upon each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board.
  
• (c) Every notice given under the provisions of paragraph (b) of this section shall be accompanied by the name or descriptive title of the officer before whom the deposition is to be taken.
• (d)
  • (1) Every notice served on any adverse party under the provisions of paragraphs (b)(1) and (2) of this section, for the taking of direct examination, shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the deposition. Every notice served on any adverse party under the provisions of paragraph (b)(3) of this section, for the taking of cross-examination, shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the cross-examination. Within twenty days from the date of service of the notice of taking direct examination or service of a testimony affidavit or declaration, any adverse party may serve cross questions upon the party who proposes to take the deposition. Any party who serves cross questions, whether in response to direct examination questions or under paragraph (b)(3) of this section, shall also serve every other adverse party. Within ten days from the date of service of the cross questions, the party who proposes to take the deposition, or who earlier offered testimony of the witness by affidavit or declaration, may serve redirect questions on every adverse party. Within ten days from the date of service of the redirect questions, any party who served cross questions may serve recross questions upon the party who proposes to take the deposition or who earlier offered testimony of the witness by affidavit or declaration; any party who serves recross questions shall also serve every other adverse party. Written objections to questions may be served on a party propounding questions; any party who objects shall serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within ten days of the date of service of the objections; substitute questions shall be served on every other adverse party.
  • (2) Upon motion for good cause by any party, or upon its own initiative, the Trademark Trial and Appeal Board may extend any of the time periods provided by paragraph (d)(1) of this section. Upon receipt of written notice that one or more testimonial depositions are to be taken upon written questions, the Trademark Trial and Appeal Board shall suspend or reschedule other proceedings in the matter to allow for the orderly completion of the depositions upon written questions.
  • (3) Service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).
  
• (e) Service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).

A party which desires to take a testimony deposition on written questions must, within 10 days from the opening date of its testimony period, as originally set or as reset, serve notice thereof on each adverse party. [ Note 1.] See TBMP § 703.02(e).

The notice must be accompanied by the written questions to be propounded on behalf of the deposing party. [ Note 2.] A copy of the notice, but not of the questions, must be filed with the Board. [ Note 3.]

Within 20 days from the date of service of the notice of taking direct examination on written questions, any adverse party may serve cross questions on the deposing party. Likewise, a party desiring to take cross-examination, by written questions, of an affiant or declarant must serve on each adverse party notice of the cross-examination within 20 days from the date of service of the testimony affidavit or declaration. [ Note 4.] The notice of cross-examination by written questions must state the name or descriptive title of the officer before whom the deposition will be taken, and must include a copy of the written questions to be propounded at cross-examination. [ Note 5.] The party must file a copy of the notice, but not the questions, with the Board. [ Note 6.]

Any party who serves cross questions, whether in response to direct examination questions, or on cross-examination of a witness who has provided affidavit or declaration testimony, must also serve copies of them on every other adverse party. Within 10 days from the date of service of the cross questions, the deposing party, or the party who had offered affidavit or declaration testimony, may serve redirect questions on every adverse party. Within 10 days from the date of service of the redirect questions, any party that served cross questions may serve recross questions on the deposing party or the party who earlier provided affidavit or declaration testimony. A party that serves recross questions on the deposing party must also serve copies thereof on every other adverse party. [ Note 7.]

Written objections to questions may be served on the party that propounded the questions. A party that serves objections on a propounding party must also serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within 10 days from the date of service of the objections. The substitute questions must also be served on every other adverse party. [ Note 8.]

On motion for good cause filed by any party, or on its own initiative, the Board may extend any of the time periods specified in 37 C.F.R. § 2.124(d)(1), that is, the time periods for serving cross questions, redirect questions, recross questions, objections, and substitute questions. Further, on receipt of written notice that one or more testimony depositions are to be taken on written questions, the Board will suspend or reschedule other proceedings in the matter to allow for the orderly completion of the depositions on written questions. [ Note 9.] See TBMP § 703.02(c).

Within 10 days after the last date when questions, objections, or substitute questions may be served, the deposing party must mail a copy of the notice and copies of all the questions to the officer designated in the notice. A copy of the notice and of all the questions mailed to the officer must also be served on every adverse party. The officer designated in the notice shall read the examination questions to the witness, shall take the testimony of the witness in response to the questions, and shall record each answer immediately after the corresponding question. [ Note 10.]

Service of written questions, responses, and cross-examination questions must be by email unless the parties stipulate to another method, or under certain other limited circumstances. [ Note 11.] For information concerning alternative methods of service under those limited circumstances, see 37 C.F.R. § 2.119(b)  and TBMP § 113.04.

An adverse party may attend the taking of the deposition and the party who proffered affidavit or declaration testimony may attend the cross-examination on written questions if it so desires, not for the purpose of participating (its participation will have occurred previously, through its service of cross questions, redirect questions, recross questions, and objections, if any, pursuant to 37 C.F.R. § 2.124(d)(1) ), but rather merely for the purpose of observing. Any attempt to engage the witness during the deposition or cross-examination may constitute sanctionable conduct.

If the parties so stipulate in writing, a deposition may be taken before any person authorized to administer oaths, at any place, on any notice, and in any manner. When so taken, the deposition may be used like any other deposition. [ Note 12.]

NOTES:

 1.   37 C.F.R. § 2.124(b)(1).

 2.   37 C.F.R. § 2.124(d)(1).

 3.   37 C.F.R. § 2.124(b)(1).

 4.   37 C.F.R. § 2.124(b)(3)  and 37 C.F.R. § 2.124(d)(1). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a witness who has provided testimony by affidavit or declaration shall serve notice on each adverse party and file a copy of the notice with the Board."), and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE; CORRECTION, 81 Fed. Reg. 89382 (December 6, 2016) (further clarification necessary to "clearly incorporate the timing for cross-examination upon written questions of testimony by affidavit or declaration.").

 5.   37 C.F.R. § 2.124(c)  and 37 C.F.R. § 2.124(d)(1).

 6.   37 C.F.R. § 2.124(b)(3). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a witness who has provided testimony by affidavit or declaration shall serve notice on each adverse party and file a copy of the notice with the Board.").

 7.   37 C.F.R. § 2.124(d)(1). See Fischer GmbH. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE; CORRECTION, 81 Fed. Reg. 89382 (December 6, 2016) (further clarification necessary to "clearly incorporate the timing for cross-examination upon written questions of testimony by affidavit or declaration.").

 8.   37 C.F.R. § 2.124(d)(1). See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990).

 9.   37 C.F.R. § 2.124(d)(2). See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *3 (TTAB 2019) (parties’ joint request to extend deadlines to serve notice of cross-examination on written questions, as well as redirect questions granted; proceedings suspended to allow for completion of the cross-examination on written questions of declarants).

 10.   37 C.F.R. § 2.124(e). See Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 n.8 (TTAB 2019) ("the court reporter or other officer designated in the notice of examination will read the cross-examination questions to the witness and record the answers for later creation of a written transcript"); Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1030 (TTAB 2017) (deposing official should state the number of each question before asking it).

 11.   See 37 C.F.R. § 2.119(b)  and 37 C.F.R. § 2.124(d)(3). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is adding new § 2.124(d)(3) to provide that service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).").

 12.   See 37 C.F.R. § 2.123(b).

703.02(h)    Depositions on Written Questions: Form, Signature and Certification of Deposition

37 C.F.R. § 2.124(e)  Within ten days after the last date when questions, objections, or substitute questions may be served, the party who proposes to take the deposition shall mail a copy of the notice and copies of all the questions to the officer designated in the notice; a copy of the notice and of all the questions mailed to the officer shall be served on every adverse party. The officer designated in the notice shall take the testimony of the witness in response to the questions and shall record each answer immediately after the corresponding question. The officer shall then certify the transcript and mail the transcript and exhibits to the party who took the deposition.

The officer before whom a deposition on written questions is taken shall record each answer immediately after the corresponding question. [ Note 1.]

For further information on the form for a deposition taken in an inter partes proceeding before the Board, see 37 C.F.R. § 2.123(g)  and 37 C.F.R. § 2.126, and TBMP § 703.01(i).

For information concerning signature of a deposition taken in an inter partes proceeding before the Board, see 37 C.F.R. § 2.123(e)(5)  and TBMP § 703.01(j).

After the officer designated in the notice of deposition has taken a deposition on written questions, the officer must certify the transcript of the deposition. See 37 C.F.R. § 2.124(e). For information concerning certification of a deposition taken in an inter partes proceeding before the Board, see 37 C.F.R. § 2.123(f), and TBMP § 703.01(k).

When the transcript has been certified, the officer should mail the transcript and exhibits to the party that took the deposition. [ Note 2.]

NOTES:

 1.   See 37 C.F.R. § 2.124(e); Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 n.8 (TTAB 2019) ("the court reporter or other officer designated in the notice of examination will read the cross-examination questions to the witness and record the answers for later creation of a written transcript"); Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1030 (TTAB 2017) (deposing official should state the number of each question before asking it).

 2.   See 37 C.F.R. § 2.124(e).

703.02(i)    Depositions on Written Questions: Service, Correction and Filing of Deposition

37 C.F.R. § 2.124(f)  The party who took the deposition shall promptly serve a copy of the transcript, copies of documentary exhibits, and duplicates or photographs of physical exhibits on every adverse party. It is the responsibility of the party who takes the deposition to assure that the transcript is correct (see § 2.125(c)). If the deposition is a discovery deposition, it may be made of record as provided by § 2.120(k). If the deposition is a testimonial deposition, the original, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be filed promptly with the Trademark Trial and Appeal Board.

The party that took the deposition on written questions must promptly serve a copy of the transcript, with exhibits, on every adverse party. [ Note 1.] See TBMP § 703.01(m). The party that took the deposition must also assure that the transcript is correct. [ Note 2.] For information concerning correction of errors in a deposition taken in a Board inter partes proceeding, see TBMP § 703.01(n).

If the deposition is a testimony deposition upon written questions, the original, with exhibits, must be filed promptly with the Board. [ Note 3.] By "promptly" the Board means that the transcript, with exhibits, may be filed at any time prior to submission of the case for final decision. See TBMP § 703.01(k).

NOTES:

 1.   37 C.F.R. § 2.124(f). Cf. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office has not set out in the final rule any specific requirements regarding the form of exhibits. The Board and the parties have experience with such submissions in connection with summary judgment motions and ACR procedures as described in the TBMP at sections 528.05(b) and 702.04, which do not specify requirements for the form of exhibits, and this has not created problems. Notably, documents submitted under an affidavit or declaration but not identified therein cannot be considered as exhibits. The parties are encouraged to be guided by the form requirements set out for exhibits to depositions in § 2.123(g)(2) and the mailing requirements for certain exhibits set out in § 2.123(f)(2).").

 2.   37 C.F.R. § 2.124(f)  and 37 C.F.R. § 2.125(c)  (formerly 37 C.F.R. § 2.125(b)).

 3.   See 37 C.F.R. § 2.124(f).

703.02(j)    Testimony Depositions on Written Questions Must be Filed

37 C.F.R. § 2.123(h) Depositions must be filed. All depositions which are taken must be duly filed in the Office. On refusal to file, the Office at its discretion will not further hear or consider the contestant with whom the refusal lies; and the Office may, at its discretion, receive and consider a copy of the withheld deposition, attested by such evidence as is procurable.

While the offering of a discovery deposition in evidence is voluntary, all trial testimony depositions that are taken in a Board inter partes proceeding must be filed with the Board, and, when filed, automatically constitute part of the evidentiary record in the proceeding. [ Note 1.] See TBMP § 703.01(l).

See, with respect to making a discovery deposition of record, 37 C.F.R. § 2.120(j)  and TBMP § 704.09.

NOTES:

 1.   See 37 C.F.R. § 2.123(h); Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984) (testimony depositions and exhibits introduced in connection with depositions must be filed with the Board and are automatically of record for both parties for all relevant purposes).

703.02(k)    Depositions on Written Questions: Objections to Deposition

37 C.F.R. § 2.124 

• (d)
  • (1) ... Written objections to questions may be served on a party propounding questions; any party who objects shall serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within ten days of the date of service of the objections; substitute questions shall be served on every other adverse party.
  
• * * * *
• (g) Objections to questions and answers in depositions upon written questions may be considered at final hearing.

Written objections to questions propounded for a deposition on written questions may be served on the party that propounded the questions. Any party that serves written objections on a propounding party must also serve a copy of the objections on every other adverse party. [ Note 1.] See TBMP § 703.02(g).

Unless waived, objections to questions and answers in depositions on written questions, as in oral depositions, generally are considered by the Board at final hearing. [ Note 2.]

For further information concerning the raising of objections to oral trial testimony depositions, see TBMP § 707.03 and TBMP § 533.

For information concerning the raising of objections to discovery depositions, see TBMP § 404.08. For information concerning the raising of objections to a notice of reliance on a discovery deposition, see TBMP § 707.02 and TBMP § 532.

NOTES:

 1.   37 C.F.R. § 2.124(d)(1).

 2.   37 C.F.R. § 2.124(g). See Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1030 (TTAB 2017) (objection to depositions on written questions for failure to timely mail copy of notice and questions to designated officer deemed waived because objectionable testimony addressed on merits in brief and objections were not renewed in brief); Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623, 1628 (TTAB 2014) (objections to written cross-examination questions sustained on ground they exceed scope of direct testimony on written questions), rev’d on other grounds, 84 F. Supp. 3d 490 (E.D. Va. 2015), vacated and remanded 819 F.3d 697 (4th Cir. 2016), cert denied, 137 S. Ct. 1202 (2017), aff’d on remand, 338 F. Supp. 3d 1477 (E.D. Va. 2018), district court decision vacated and remanded, 2021 USPQ2d 126 (4th Cir. 2021) (Board decision upheld by 4th Circuit), petition for rehearing en banc filed, No. 18-2183, 18-2232 (4th Cir. March 2, 2021); Nahshin v. Product Source International LLC, 107 USPQ2d 1257, 1259 (TTAB 2013) (objections to portions of depositions on written questions deemed waived), aff’d, 112 F. Supp. 3d 383 (E.D. Va. 2015); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990) (objections to questions based on relevancy and materiality will be deferred until final hearing).

703.02(l)    Depositions on Written Questions: Confidential or Trade Secret Material

For information concerning the protection of confidential or trade secret material forming part of a testimony affidavit or declaration or oral deposition transcript or exhibits thereto, see 37 C.F.R. § 2.125(f)  and 37 C.F.R. § 2.126(c); TBMP § 703.01(p). The Board’s standard protective order is automatically applicable throughout all inter partes proceedings, subject to specified exceptions, unless modified by the parties and approved by the Board. [ Note 1.] For further information on protective orders, see TBMP § 412.

NOTES:

 1.   37 C.F.R. § 2.116(g).

703.02(m)    Depositions on Written Questions: Utility

A deposition on written questions is a cumbersome, time-consuming procedure. It requires that cross questions, redirect questions, recross questions, and objections all be framed and served before the questions on direct examination have even been answered. Moreover, it deprives an adverse party of the right to confront the witness and ask follow-up questions on cross-examination. [ Note 1.] See TBMP § 703.02(g).

Nevertheless, depositions on written questions have some utility. They may be the only means by which a deposition may be taken in a foreign country. [ Note 2.] See TBMP § 404.03(c) (discovery deposition of non-party residing in foreign country), TBMP § 703.01(b) (Form of Testimony), TBMP § 703.01(f)(3) (Unwilling Witness Residing in a Foreign Country), and TBMP § 703.02(a) (Depositions on Written Questions – When Available). Moreover, the deposition on written questions is generally less expensive than the deposition on oral examination and is usually more convenient for the witness.

NOTES:

 1.   See 37 C.F.R. § 2.124(d)(1). See also Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 1990), corrected, 19 USPQ2d 1479 (TTAB 1990); Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980); Fischer GmbH v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979); Orion Group Inc. v. Orion Insurance Co., 12 USPQ2d 1923, 1926 (TTAB 1989) (motion to take discovery deposition in foreign country orally).

 2.   See 37 C.F.R. § 2.120(c)(1), 37 C.F.R. § 2.123(a)(1)  and 37 C.F.R. § 2.123(a)(2). Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *1 (TTAB 2019) (quoting TBMP 703.02(m)). Cf. Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 511 F.3d 437, 85 USPQ2d 1385 (4th Cir. 2007), cert. denied, 128 S. Ct. 2508 (2008) (district court has the power to issue a subpoena for a trial deposition noticed under Fed. R. Civ. P. 30(b)(6), requiring a foreign corporate applicant to produce an appropriate representative in the United States for testimony on the subjects identified in the subpoena, regardless of the domicile of the representative).

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. Prior sections of this chapter discuss the introduction of testimony with accompanying exhibits. See generally TBMP § 702 and TBMP § 703. 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 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. Normally, exhibits filed under a notice of reliance consist of pleaded registrations and pleaded applications, printed publications, official records, Internet materials, an adverse party’s written disclosures and certain written discovery responses, and discovery depositions of an adverse party. [ Note 1.] 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 need not disclose the evidence it intends to submit under notice of reliance in its pretrial disclosures. [ Note 2.] 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 3.] 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 4.] 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 5.]

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.   See generally 37 C.F.R. § 2.122(d)(2), 37 C.F.R. § 2.122(e)(1), 37 C.F.R. § 2.122(e)(2), and 37 C.F.R. § 2.120(k). See also WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037-38 n.12 (TTAB 2018) (listing materials normally filed under notice of reliance).

 2.   37 C.F.R. § 2.121(e). Accord Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 n.4 (TTAB 2015).

 3.   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 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., STX Financing, LLC v. Terrazas, 2020 USPQ2d 10989, at *4 (TTAB 2020) (motions to strike exhibits to applicant’s notice of reliance for failure to indicate the general relevancy granted with leave to cure), appeal dismissed sub nom. STX Financing, LLC. v. Vidal, No. 22-1192 2022 WL 1124962 (Fed. Cir. Apr. 15, 2022); Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1163 (TTAB 2017) (granting motion to strike notices of reliance 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").

 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) ("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 STX Financing, LLC v. Terrazas, 2020 USPQ2d 10989, at *4 (TTAB 2020) (motions to strike exhibits to applicant’s notice of reliance for failure to indicate the general relevancy granted with leave to cure), appeal dismissed sub nom. STX Financing, LLC. v. Vidal, No. 22-1192 2022 WL 1124962 (Fed. Cir. Apr. 15, 2022); Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1163 (TTAB 2017) (granting motion to strike notices of reliance 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").

 5.   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

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); International Dairy Foods Association v. Interprofession du Gruyère, 2020 USPQ2d 10892, at *21 n.161 (TTAB 2020) ("[t]he ‘Letter of Protest Memorandum’ is automatically part of the record in this [opposition] proceeding as it forms a part of the prosecution file for Applicants’ application."), aff’d, ___ F. Supp. 3d ___, 2021 WL 6286234 (E.D. Va. Dec. 15, 2021), appeal docketed, No. 22-1041 (4th Cir. Jan. 11, 2022); Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., 126 USPQ2d 1526, 1530 n.10 (TTAB 2018) (printouts from the file records of the subject registration unnecessary); 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."), aff’d, No. 3:18-cv-00443-C (N.D. Tex. Oct. 29, 2019), appeal dismissed, No. 19-11180 (5th Cir. Feb. 4, 2020); 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), aff’d, 743 F. App’x 457, 128 USPQ2d 1172 (D.C. Cir. 2018); 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). Cf. WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1040 (TTAB 2018) (plaintiff’s pleaded pending application is not automatically of record).

 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."). See also Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *4, *4 n.23 (TTAB 2019) (declaration submitted in application file during prosecution not considered trial testimony since it was dated over three years prior to petitioner’s testimony period), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019).

 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 Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *4 (TTAB 2019) (statements in application file declaration were considered admissions), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019); Daniel J. Quirk Inc. v. Village Car Co., 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, 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); 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. Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *1 n.5 (TTAB 2019) (unpleaded registration submitted under notice of reliance may be considered, like third-party registrations, for whatever probative value it may have under the du Pont factors); 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"); A&H Sportswear Co. v. Yedor, 2019 USPQ2d 111513, at *5 n.4 (TTAB 2019) ("a cancelled registration is not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act"); Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1606 (TTAB 2018) (a cancelled registration is only evidence that the registration issued, and is not evidence of use of the mark at any time); 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, 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), dismissed without prejudice sub nom. Snyder’s-Lance, Inc. v. Frito-Lay North America, Inc., 414 F. Supp. 3d 822, 2019 USPQ2d 401574 (W.D.N.C. 2019), reversed and remanded on other grounds, 991 F.3d 512 (4th Cir. 2021); Time Warner Entertainment Co. 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 dispute 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.   37 C.F.R. § 2.122(e)(1). See STX Financing, LLC v. Terrazas, 2020 USPQ2d 10989, at *1 (TTAB 2020) (screenshots of third-party registrations obtained from TESS database submitted under notice of reliance constitute "official records" and not "Internet materials"; therefore, it was unnecessary to provide the access date or URL), appeal dismissed sub nom. STX Financing, LLC. v. Vidal, No. 22-1192 2022 WL 1124962 (Fed. Cir. Apr. 15, 2022); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 n.11 (TTAB 2011) (third-party registrations admissible under notice of reliance); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1110 (TTAB 2007). Cf. Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *1 n.5 (TTAB 2019) (unpleaded registration may be considered, like third-party registrations, for whatever probative value it may have under the du Pont factors); 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); STX Financing, LLC v.Terrazas, 2020 USPQ2d 10989, at *1 (TTAB 2020) (screenshots of third-party registrations obtained from TESS database submitted under notice of reliance sufficient), appeal dismissed sub nom. STX Financing, LLC. v. Vidal, No. 22-1192 2022 WL 1124962 (Fed. Cir. Apr. 15, 2022); 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); Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *1 n.5 (TTAB 2019) (unpleaded registration may be considered, like third-party registrations, for whatever probative value it may have under the du Pont factors); 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 2002) (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); Tivo Brands, LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1117 (TTAB 2018) (in dilution case, not probative of whether opposer’s use of its mark is substantially exclusive); 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), aff’d, 743 F. App’x 457, 128 USPQ2d 1172 (D.C. Cir. 2018); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1798 (TTAB 2002) (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. [ Note 3.]

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 4.] 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 5.]

NOTES:

 1.   See 37 C.F.R. § 2.122(e); 37 C.F.R. § 2.122(g). See STX Financing, LLC v. Terrazas, 2020 USPQ2d 10989, at *1-2 (TTAB 2020) (screenshots of applications obtained from TESS database sufficient; selected screenshots of Office actions from the file history of opposer’s pleaded applications admissible), appeal dismissed sub nom. STX Financing, LLC. v. Vidal, No. 22-1192 2022 WL 1124962 (Fed. Cir. Apr. 15, 2022); Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1351 n.10 (TTAB 2014) (copies of third-party applications constitute official records), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. Oct. 10, 2014); 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); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103 (TTAB 2007) (portion of the file history of petitioner's pleaded registration submitted); 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); STX Financing, LLC v. Terrazas, 2020 USPQ2d 10989, at *1-2 (TTAB 2020) (screenshots of applications obtained from the TESS database submitted constitute official records and need not be certified; selected screenshots of Office Actions from the file history of opposer’s pleaded applications admissible), appeal dismissed sub nom. STX Financing, LLC. v. Vidal, No. 22-1192 2022 WL 1124962 (Fed. Cir. Apr. 15, 2022); 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 WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1040 (TTAB 2018) (plaintiff’s pleaded pending application is not automatically of record, and may be introduced as evidence at trial by filing under notice of reliance a copy thereof showing current status and title, or through witness testimony about its status).

 4.   See Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *1 n.5 (TTAB 2019) (unpleaded application, made of record by notice of reliance, like third-party applications, are of limited probative value); 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), dismissed without prejudice sub nom. Snyder’s-Lance, Inc. v. Frito-Lay North America, Inc., 414 F. Supp. 3d 822, 2019 USPQ2d 401574 (W.D.N.C. 2019), reversed and remanded on other grounds, 991 F.3d 512 (4th Cir. 2021); 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 Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1606 (TTAB 2018) (abandoned application only probative to show it had been filed); 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).

 5.   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

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 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.). See McGowen Precision Barrels, LLC v. Proof Research, Inc., 2021 USPQ2d 559, at *33 n.120 (TTAB 2021) (under Fed. R. Evid. 801(d), statements made in an application during prosecution of a trademark registration not considered hearsay but rather an admission); Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *4, n.23 (TTAB 2019) (declaration submitted in application file during prosecution not considered trial testimony since it was dated over three years prior to petitioner’s testimony period; statements in application file declaration were considered admissions), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019).

 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); Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007) (pending applications are evidence only that they were filed on a certain date; they are not evidence of use of the marks); 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 Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *4-5 (TTAB 2019) (statements in application file declaration were considered admissions; disclaimer of "LEAF" may be considered an admission by Petitioner that the term is merely descriptive of its cigar wraps), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019); Daniel J. Quirk Inc. v. Village Car Co., 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); Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *7 (TTAB 2019) (petitioner’s statements in application file declaration found inconsistent with present position defending counterclaim and supported a contrary conclusion), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019); TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1102 n.38 (TTAB 2018) (witness testimony of earlier use date not clear and convincing but use date in application weakly corroborated by submissions in record); 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). See Poly-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), aff’d, No. 3:18-cv-00443-C (N.D. Tex. Oct. 29, 2019), appeal dismissed, No. 19-11180 (5th Cir. Feb. 4, 2020); 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., Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 71345, at *2 (TTAB 2020) (exhibits attached to brief not considered); Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880, at *2 (TTAB 2019) (inserted screenshots and hypertext link within the text of reply brief, if not previously and properly introduced into the record, not considered); Double Coin Holdings Ltd. v. Tru Development, 2019 USPQ2d 377409, at *2 n.8 (TTAB 2019) (no consideration given to appendixes attached to brief summarizing decisions of federal agencies and articles); 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 Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880 at *2 (TTAB 2019) (not necessary to submit duplicates of material that is already in record); Corporacion Habanos SA v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1092 (TTAB 2012) (same); 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. [ Note 1.] 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 2.]

NOTES:

 1.   See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (agreeing with the Board that factual statements made in a brief are not evidence introduced at trial); 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. Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005) ("Attorney argument is no substitute for evidence."); Martahus v. Video Duplication Services. Inc., 424 F.3d 417, 27 USPQ2d 1846, 1849 (Fed. Cir. 1993) ("mere attorney arguments unsubstantiated by record evidence are suspect at best"); In re Simulations Publications, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975) (where appellant argued that the magazines at issue deal with unrelated subject matter, the court held that "[s]tatements in a brief cannot take the place of evidence"); Performance Open Wheel Racing, Inc. v. United States Auto Club Inc., 2019 USPQ2d 208901, at *8 n.62 (TTAB 2019) (attorney argument unsupported by any testimony or evidence does not have any probative value).

 2.   See, e.g., Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *8 (TTAB 2019) (statements in brief regarding term "grabba" considered admissions), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019); 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).

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, 651 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.   Cf. 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); 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); 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.] While printed publications made of record by notice of reliance and without witness testimony cannot be considered for proving the truth of the matter, they may have some relevance for what they show on their face, regardless of whether the statements are true or false. [ Note 7.]

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 8.] 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 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.]

The party who submits printed publications must ensure that the evidence is legible, with each page displayed so it can be read from top to bottom, and that the evidence has been entered into the record. [ Note 11.] The submitting party must also ensure that such evidence is complete. [ Note 12.]

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), aff’d, 479 F.3d 825, 81 USPQ2d 1919 (Fed. Cir. 2007); 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., In re Omaha Nat’l 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); Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *2 (TTAB 2019) (unaccompanied by testimony, articles from printed publications may not be considered for the truth of the matters asserted but are admissible for what they show on their face); Schiedmayer Celesta GmbH v. Piano Factory Group, Inc., 2019 USPQ2d 341894, at *8 n.14 (TTAB 2019) (printed publications not admissible for the truth of the matters asserted therein), aff’d, 11 F.4th 1363, 2021 USPQ2d 913 (Fed. Cir. 2021); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1790-91 (TTAB 2018) (newspaper articles and blog post submitted with no supporting testimony or other evidence are hearsay; "residual hearsay" exception of Fed. R. Evid. 807(a) does not apply); 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 op. No. 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); 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.   Spiritline Cruises LLC v. Tour Management Services, Inc., 2020 USPQ2d 48324, at *2, *11 (TTAB 2020) ("[S]uch materials are frequently competent to show, on their face, matters relevant to trademark claims (such as public perception), regardless of whether the statements are true or false"; third-party documentary evidence corroborates pervasive use by others in the industry) (quoting Harry Winston S.A. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1428 (TTAB 2014)); Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *2 (TTAB 2019) ("sometimes what Internet printouts and printed publications show on their face is relevant to trademark cases, including likelihood of confusion cases"); Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *6-7 (TTAB 2019) (third-party references are probative evidence that the relevant public perceives the terms "grabba" and "grabba leaf" to, at a minimum, immediately convey information about an ingredient or characteristic of tobacco, or tobacco products, including cigar wraps; urban dictionary definition probative when considered in context of third-party use in record), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019); Ayoub, Inc. v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1399 n.62, 1403 (TTAB 2016) (although website printouts and printed materials could not be considered for the truth of the matter, these multiple sources did corroborate third-party use); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1427-28 (TTAB 2014) (although printed publications were not considered for the truth of the matter, "such publications can be used to demonstrate promotion of the mark by its owner, public perceptions of the mark by others, and other issues relevant to this proceeding.").

See also Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363, 2021 USPQ2d 913, at *13 (Fed. Cir. 2021) ("The Board did not err in relying on recent publications or the history of the Schiedmayer companies to draw inferences as to Schiedmayer Celesta's fame as of 2007.");

 8.   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).

 9.   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).

 10.   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).

 11.   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."), aff’d, 377 F. Supp. 3d 588 (E.D. Va. 2019), aff’d, 986 F.3d 361, 2021 USPQ2d 81 (4th Cir. 2021). 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).

 12.   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.] Providing only a web address or a hyperlink without the material attached is not sufficient to introduce it into the record. [ Note 3.] For information about Internet materials in ex parte appeals, see TBMP § 1208.03.

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) either on its face or on the notice of reliance cover sheet. [ Note 4.] 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 5.] See TBMP § 704.02 and TBMP § 704.08(a).