317    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).
  • * * * *

A plaintiff or defendant may attach exhibits to its pleading. However, with two exceptions, exhibits attached to a pleading are not evidence on behalf of the party to whose pleading they are attached unless they are thereafter, during the time for taking testimony, properly identified and introduced in evidence as exhibits. [ Note 1.]

The first exception to the foregoing rule is a current status and title copy, or photocopy thereof, prepared by the USPTO, of a plaintiff’s pleaded registration. [ Note 2.] When a plaintiff submits an original or photocopy of a status and title copy of its pleaded registration, prepared and issued by the Office, 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) and TBMP § 704.05(a).

The second exception is a current copy of information from the electronic database records of the USPTO showing the current status and title of the registration. When a plaintiff submits a 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 4.] See TBMP § 704.03(b)(1)(A). The copy may be taken from (a) the TSDR (Trademark Status and Document Retrieval) electronic database of the Office by selecting the "Status" tab and opening all the relevant fields to show current status and title (owner) of the registration or, if the TSDR copy does not reflect the current owner of the registration, a copy from the Office’s Assignment database demonstrating an assignment to the current owner of the registration should be included with the TSDR copy; or (b) the TESS (Trademark Electronic Search System) electronic database of the Office along with a copy of records from the Assignment database showing an assignment to the current owner of the registration. The Board does not take judicial notice of a party’s registrations. [ Note 5.]

The appropriate documentation, as described above, must accompany the pleading as an exhibit. When using ESTTA to file a complaint, a pleaded registration will not be made of record with the complaint simply by inputting the registration number when prompted by the ESTTA protocol. [ Note 6.]

For more information regarding the introduction of applications and registrations into evidence see TBMP § 704.03(b)(1)(A), TBMP § 704.03(b)(1)(B), and TBMP § 704.12.

For information regarding the automatic updating of the ownership of trademark applications and registrations in the Trademark Database, see generally TMEP § 504.

Exhibits submitted with a pleading must conform to the requirements of 37 C.F.R. § 2.126. See, generally, TBMP § 106.03.

NOTES:

 1.   37 C.F.R. § 2.122(c). See Republic Steel Co. v. M.P.H. Manufacturing Corp., 312 F.2d 940, 136 USPQ 447, 448 (CCPA 1963) (as Board had invoked Trademark Rule 2.126, appellate court did not consider exhibits attached to pleading in reviewing Board decision);Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1846 n.6 (TTAB 2004) (exhibits to pleading not evidence of record); Hard Rock Café International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1511 (TTAB 2000) (brief may not be used as a vehicle for introduction of evidence); Home Juice Co. v. Runglin Cos., 231 USPQ 897, 898 (TTAB 1986) (exhibits attached to the parties’ pleadings are not in evidence and given no consideration); Intersat Corp. v. International Telecommunications Satellite Organization, 226 USPQ 154, 155 n.3 (TTAB 1985) (exhibit attached to pleading not evidence on behalf of party to whose pleading exhibit is attached unless identified and introduced in evidence as exhibit during period for taking testimony); Syosset Laboratories, Inc. v. TI Pharmaceuticals, 216 USPQ 330, 332 (TTAB 1982) (unauthenticated exhibits attached to complaint are not evidence of allegations in that complaint and inadmissible in the form presented); Cities Service Co. v. WMF of America, Inc., 199 USPQ 493, 495 n.5 (TTAB 1978) (exhibits attached to pleading are not evidence unless introduced in the same manner as other exhibits during that party’s testimony period); A-1-A Corp. v. The Gillette Co., 199 USPQ 118, 119 n.2 (TTAB 1978) (reference in pleadings to attached exhibits does not make them of record in the case and such exhibits are not evidence on party’s behalf unless offered as evidence during party’s trial period); Permatex Co. v. California Tube Products, Inc., 175 USPQ 764, 765 n.2 (TTAB 1972) (reference in brief to labels and brochures attached to notice of opposition not considered evidence on behalf of opposer since they were not identified and made of record during opposer’s trial period in accordance with applicable rules). Cf. Research in Motion Limited v. NBOR Corp., 92 USPQ2d 1926, 1928 (TTAB 2009) (TARR printouts showing status and title of pleaded registrations may be introduced at trial under notice of reliance).

 2.   See Equine Touch Foundation Inc. v. Equinology Inc., 91 USPQ2d 1943, 1945 (TTAB 2009) ("[W]ith the exception of a plaintiff’s pleaded registrations, which may be filed along with the petition to cancel or notice of opposition, documents and other exhibits may be made of record only during the testimony period of the offering party in the following two ways: (1) they may be introduced by a witness during the course of a deposition, and (2) they may be submitted pursuant to a notice of reliance filed with the Board if they meet the requirements of Trademark Rule 2.120 or 2.122."); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 n.4 (TTAB 2008) (registrations may be made of record by attaching to notice of opposition printouts from the Office’s electronic database records showing the current status and title of its registrations under current version of 37 C.F.R. § 2.122(d)(1)).

 3.   See 37 C.F.R. § 2.122(e)  and 37 C.F.R. § 2.122(d)(1) . See Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1601 n.2 (TTAB 2014) ("Documents submitted as evidence of a registration under Trademark Rule 2.122(d) must show current title and current status of registration . . . . and must have been created reasonably contemporaneous with their filing.").

 4.   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); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 n.4 (TTAB 2008) (printouts from USPTO’s database showing current status and title of registration sufficient under current version of Trademark Rule 2.122(d)(1)).

 5.   See UMG Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1046 (TTAB 2009), (citing Corporate Fitness Programs Inc. v. Weider Health and Fitness Inc., 2 USPQ2d 1682, 1683-84, n.3 (TTAB 1987) ("The Board does not take judicial notice of registrations that reside in the Patent and Trademark Office.")); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1485 n.4 (TTAB 2007) (same).

 6.   See United Global Media Group., Inc. v. Tseng, 112 USPQ2d 1039, 1042 n.11 (TTAB 2014) (mere inputting of a registration number when prompted by ESTTA, to list any registration upon which the plaintiff relies, insufficient to make the registration(s) of record); Melwani v. Allegience Corp., 97 USPQ2d 1537, 1540 (TTAB 2010) ("The fact that completion of the ESTTA filing form results in the creation of electronic records … is for administrative ease and is insufficient to make the pleaded registrations of record."). See also Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1867 n.3 (TTAB 2016) (in finding a sufficient pleading of standing, the Board noted that the mere listing of the application number in electronic record does not make that application of record for purposes of proving standing at trial).