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).