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).