101    Applicable Authority

101.01    Statute and Rules of Practice

All proceedings before the Trademark Trial and Appeal Board ("Board") are governed by the Lanham Trademark Act of 1946, as amended, ("Trademark Act"), 15 U.S.C. § 1051  et seq.; the rules of practice in trademark cases (commonly known as the Trademark Rules of Practice), which may be found in Parts 2 and 7 of Title 37 of the Code of Federal Regulations ("C.F.R."); the rules pertaining to assignments in trademark cases, which may be found in Parts 3 and 7 of 37 C.F.R.; and the rules relating to the conduct of practitioners and the representation of others before the United States Patent and Trademark Office ("USPTO") which may be found in Part 11 of 37 C.F.R. The USPTO rules governing procedure in inter partes proceedings before the Board are adapted, in large part, from the Federal Rules of Civil Procedure, with modifications due primarily to the administrative nature of Board proceedings. [ Note 1.]

A copy of Title 37 of the C.F.R. may be obtained at a nominal cost from the U.S. Government Publishing Office, U.S. Government Bookstore, https://bookstore.gpo.gov/. An electronic version of Title 37 of the C.F.R. may be found online at the Government Publishing Office resource website through: https://www.ecfr.gov/current/title-37. A USPTO-created compilation of the Trademark Act and rules can be accessed and downloaded from the USPTO website at: https://www.uspto.gov/sites/default/files/documents/tmlaw.pdf. That compilation was created for the public’s convenience and is not meant to serve as an official legal source. Those using that compilation for legal research should verify their results against the most current official printed editions of the C.F.R. and United States Code, published Public Laws, and the daily Federal Register, as applicable.

Information regarding proposed and final rule changes to Title 37 is also posted on the USPTO website at https://www.uspto.gov/trademark/trademark-updates-and-announcements/recent-and-upcoming-statutory-and-regulatory-changes.

NOTES:

 1.   Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988).

101.02    Federal Rules

37 C.F.R. § 2.122(a)  Applicable rules. Unless the parties otherwise stipulate, the rules of evidence for proceedings before the Trademark Trial and Appeal Board are 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. When evidence has been made of record by one party in accordance with these rules, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.

37 C.F.R. § 2.116  Federal Rules of Civil Procedure.

(a) Except as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.

Inter partes proceedings before the Board are also governed by the Federal Rules of Civil Procedure, except as otherwise provided in the Trademark Rules of Practice, and "wherever applicable and appropriate," [ Note 1.], and by the Federal Rules of Evidence. [ Note 2.]

There is no provision in the Trademark Rules of Practice concerning the applicability of the Federal Rules of Evidence to ex parte appeals before the Board. However, certain of the principles embodied in the Federal Rules of Evidence are applied by the Board, in practice, in evaluating the probative value of evidence submitted in ex parte cases. [ Note 3.] See TBMP § 1208.

NOTES:

 1.   37 C.F.R. § 2.116(a). See Multisorb Technology Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013) (Consistent with 37 C.F.R. § 2.116(a), the Board also generally follows settled federal practice when deciding cases raising procedural issues that fall within the interstices between the provisions in the Federal Rules, the C.F.R., and the Trademark Board Manual of Procedure). See also Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1326 (TTAB 2011) (citing 37 C.F.R. § 2.116(a)).

 2.   37 C.F.R. § 2.122(a). See B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015) (proceedings before the TTAB are largely governed by the Federal Rules of Civil Procedure and Evidence); Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1311 (Fed. Cir. 1989) (In applying the burden of proof provisions of Fed. R. Evid. 301, the court stated "[t]he Federal Rules of Evidence generally apply to TTAB proceedings."). See, e.g., Double Coin Holdings Ltd. v. Tru Development, 2019 USPQ2d 377409, at *3, 4 (TTAB 2019) (Fed. R. Evid. 602, 701 and 1006); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1117 (TTAB 2009) (applying Fed. R. Evid. 201); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1956 (TTAB 2008) (Fed. R. Evid. 801); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1861 (TTAB 2008) (Fed. R. Evid. 701); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1104-05 (TTAB 2007) (Fed. R. Evid. 803 and 1004); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1264-65 (TTAB 2003) (Fed. R. Evid. 612); Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405 (TTAB 1998) (Fed. R. Evid. 902); HRL Assoc. Inc. v. Weiss Assoc. Inc., 12 USPQ2d 1819, 1822 (TTAB 1989) (Fed. R. Evid. 408); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1448, n.20 (TTAB 1986) (Fed. R. Evid. 401).

 3.   See, e.g., In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1860 (Fed. Cir. 1987) (articles from general and business publications are not hearsay and are probative of descriptive usage); In re Broadway Chicken, Inc., 38 USPQ2d 1559, 1565 (TTAB 1996) (listings from telephone directories and Dun & Bradstreet databases are not inadmissible hearsay); In re American Olean Tile Co., 1 USPQ2d 1823, 1824 n.2 (TTAB 1986) (affidavit consisting of third-hand report by unidentified person is inadmissible hearsay); In re Foundry Products, Inc., 193 USPQ 565, 567 (TTAB 1976) (third-party registrations not considered when copies were not made of record).

101.03    Decisional Law

Proceedings before the Board are also governed, to a large extent, by precedential decisions in prior cases. These decisions include those of the Board itself, as well as the decisions of the Court of Appeals for the Federal Circuit ("Federal Circuit") (which determines appeals from decisions of the Board); the Court of Customs and Patent Appeals (predecessor of the Court of Appeals for the Federal Circuit); and the Director of The United States Patent and Trademark Office (formerly the Commissioner of Patents and Trademarks) ("Director"), who determines petitions seeking review of Board actions on procedural matters.

The Board relies primarily on precedent from the Court of Appeals for the Federal Circuit. The Federal Circuit is the Board’s primary reviewing court since by statute, any applicant or party to an inter partes proceeding who is dissatisfied with the Board’s decision may seek review of the decision in the Federal Circuit. Also, the Federal Circuit's cases address registration issues more specifically. [ Note 1.]

Decisions of the Board, the Director, and the Court of Appeals for the Federal Circuit appear in the United States Patents Quarterly ("USPQ"), Bloomberg Law database, [ Note 2.], and may also be found in LexisNexis Corporation’s LEXIS/NEXIS legal database, and in the Intellectual Property Library of ThomsonReuters Corporation’s WESTLAW database. Final Board decisions are also available on a public electronic database by accessing the TTAB Reading Room at https://ttab-reading-room.uspto.gov/efoia/efoia-ui/#/search/decisions  through the Board home page of the USPTO website. Docket information and full images of Board files may be viewed by accessing TTABVUE at http://ttabvue.uspto.gov/ttabvue/.

Decisions that are designated by the Board as "Citable as Precedent," "Precedent of the Board," "Precedent of the TTAB," or "for publication in full" are citable as precedent. Since January 23, 2007, the Board has permitted citation to any Board decision or interlocutory order, although a decision or order designated as not precedential is not binding upon the Board, but may be cited for whatever persuasive value it might have. [ Note 3.] In general, however, the Board discourages the citation to non-precedential opinions. [ Note 4.]

Decisions of other tribunals may be cited to the extent allowed and for the purposes permitted by the tribunal that issued the decision.

Citation to all TTAB decisions should be to the United States Patent Quarterly, if the decision appears therein; otherwise, to a USPTO public electronic database [e.g. TTABVUE], or Bloomberg Law (BL), WESTLAW, or LEXIS/NEXIS, as well as to any other official reporter, if available, such as the Federal Reporter or Federal Supplement. If a non-precedential decision does not appear in the United States Patents Quarterly or the USPTO’s public electronic databases, the citing party should append a copy of the decision to the motion or brief in which the decision is cited. [ Note 5.]

Any cited decision of the Board or another court, which appears in the USPQ, should include a citation to the USPQ, in addition to citation to an official reporter (if any), such as the Federal Reporter or Federal Supplement. [ Note 6.] See TBMP § 801.03 (inter partes briefs); TBMP § 1203.02(f)(ex parte briefs).

NOTES:

 1.   Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1506 n.2 (TTAB 2008). See also 15 U.S.C. § 1071(a); 28 U.S.C. § 1295(a)(4)(B).

 2.   Bloomberg Law ceased publishing the USPQ in print form in December 2018.

 3.   Citation of Opinions to the Trademark Trial and Appeal Board, O.G. Notice (Jan. 23, 2007). See In re tapio GmbH, 2020 USPQ2d 1138, at *8 n.34 (TTAB 2020) (Board found unpersuasive non-precedential decisions decided on different records); In re Society of Health and Physical Educators, 127 USPQ2d 1584, 1587 n.7 (TTAB 2018) ("Board decisions which are not designated as precedent are not binding on the Board, but may be cited and considered for whatever persuasive value they may hold.").

 4.   See In re tapio GmbH, 2020 USPQ2d 1138, at *10 n.30 (TTAB 2020) ("Generally, the practice of citing non-precedential opinions is not encouraged."); In re Morrison & Foerster LLP, 110 USPQ2d 1423, 1427 n.6 (TTAB 2014) ("Although parties may cite to non-precedential decisions, the Board does not encourage the practice."); In re Fiat Group Marketing & Corp. Commic’ns S.p.A., 109 USPQ2d 1593, 1596 n.6 (TTAB 2014) (non-precedential decisions are not binding on the Board, but may be cited to and considered for whatever persuasive value they may hold); In re Procter & Gamble Co., 105 USPQ2d 1119, 1120-21 (TTAB 2012) (citation to non-precedential opinions permitted but not encouraged; non-precedential decisions not binding on the Board); In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011) (parties may cite to non-precedential decisions, but they are not binding on the Board). See also Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011) (although parties may cite to non-precedential cases, the Board does not encourage the practice).

 5.   See, e.g., Citation of Opinions to the Trademark Trial and Appeal Board, O.G. Notice (Jan. 23, 2007). The final decisions of the Board are posted at https://ttab-reading-room.uspto.gov/efoia/efoia-ui/#/search/decisions  and files of Board proceedings are available at http://ttabvue.uspto.gov/ttabvue/.

 6.   See Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1830 (TTAB 2012) (include citation to the United States Patent Quarterly (USPQ) if the case appeared in that reporter); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.11 (TTAB 2012) (same); In re Carlson, 91 USPQ2d 1198, 1199 (TTAB 2009) (same).

101.04    Director’s Orders and Notices

Occasionally, the Director or another USPTO official acting under the Director’s authority, publishes in the Official Gazette an order or notice relating to a particular Office policy, practice, procedure, or other such matter of interest to the public. Some of these orders and notices affect practice and procedure before the Board. Such notices are also posted on the Office’s website at https://www.uspto.gov/trademark/trademark-updates-and-announcements/recent-postings.

101.05    Trademark Trial and Appeal Board Manual of Procedure

The Trademark Trial and Appeal Board Manual of Procedure ("TBMP") (i.e., this Manual) is a compilation of statutory, regulatory, and decisional authority relevant to Board practice and procedure. It is written as a guide for the Board, practitioners and parties before the Board. In addition to compiling applicable authority, the TBMP includes many practical suggestions on practice before the Board. Nonetheless, the TBMP "does not modify, amend, or serve as a substitute for any statutes, rules or decisional law and is not binding upon the [TTAB]." [ Note 1.]

The TBMP is revised annually to incorporate changes in applicable statutes, rules, and case law, and to reflect changes in Board practice. [ Note 2.] Practitioners and parties before the Board who consult the TBMP should keep the publication date of the current revision in mind, and conduct any research necessary to determine whether there have been any relevant changes in the law since publication.

The TBMP is not – nor is it intended to be – a comprehensive reference on all aspects of the procedural or substantive law applicable to Board proceedings. Parties are urged to conduct appropriate legal research, as needed, or obtain legal counsel. See TBMP § 114.

NOTES:

 1.   Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 511 F.3d 437, 85 USPQ2d 1385, 1393 (4th Cir. 2007) (quoting TBMP Introduction). See also El Encanto, Inc. v. Hatch Chile Co., 825 F.3d 1161, 119 USPQ2d 1139, 1143 (10th Cir. 2016) (quoting in part from TBMP Introduction). Cf. In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009) ("the TMEP is instructive, but ‘is not established law,’") (citing In re Pennington Seed, Inc., 466 F.3d 1053, 80 USPQ2d 1758, 1763 (Fed. Cir. 2006)) ("While the TMEP is not established law, but only provides instructions to examiners, it does represent the PTO’s established policy on varietal names that is entitled to our respect.").

 2.   The Board welcomes suggestions for improving the content of the TBMP. Suggestions and comments should be addressed to:

ATTN: TBMP Editor

U.S. Patent and Trademark Office

Trademark Trial and Appeal Board

P.O. Box 1451

Alexandria,VA 22313-1451

Suggestions may be submitted electronically to: TBMPComments@uspto.gov.