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).