528.05(d) Registrations
37 C.F.R. § 2.122(d)(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).
If a plaintiff’s registration is pleaded and made of record pursuant to 37 C.F.R. § 2.122(d)(1), the registration is of record for all purposes, including a summary judgment motion.
Alternatively, a plaintiff may make its pleaded registration of record, for purposes of summary judgment only, by filing a status and title copy thereof, or a current printout of information from the USPTO electronic database records showing the status and title thereof, with its brief on the summary judgment motion. [ Note 1.] A registration owned by a defendant may be made of record in the same manner for purposes of summary judgment or Accelerated Case Resolution (ACR), if consistent with the parties’ ACR stipulation. See TBMP § 528.05(a)(2). A copy printed from the USPTO’s TSDR or TESS database is sufficient for this purpose.
A party may make a third-party registration of record, for purposes of summary judgment only, by filing a copy thereof with its brief on the summary judgment motion; the copy need not be a certified copy, nor need it be a status and title copy. [ Note 2.] A copy printed from the USPTO’s TSDR or TESS database likewise is sufficient for this purpose.
For purposes of summary judgment only, a copy of a trademark search report, made of record as an exhibit to an affidavit, or as part of a discovery response, submitted in opposition to a summary judgment motion, 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. [ Note 3.]
NOTES:
1. See Bongrain International (American) Corp. v. Moquet Ltd., 230 USPQ 626, 626 n.3 (TTAB 1986). Cf. 37 C.F.R. § 2.122(d)(2).
2. See Interbank Card Association v. United States National Bank of Oregon, 197 USPQ 123, 124 n.6 (TTAB 1977) (third-party registrations may be plain copies). See also 37 C.F.R. § 2.122(e); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998) (incomplete TRAM records of third-party registrations not sufficient).
3. See, e.g., Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993) (search reports and telephone directory listings sufficient to raise genuine issue regarding strength of mark). With respect to third-party applications, see also Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1467-68 n.6 (TTAB 2003) (third-party applications which were published for opposition, submitted in response to motion for summary judgment, were considered by the Board, but failed to raise a genuine issue of material fact).