704.11    Produced Documents and Privilege Logs

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.

37 C.F.R. § 2.120(k)(3)(ii)  A party that has obtained documents from another party through disclosure or under Rule 34 of the Federal Rules of Civil Procedure may not make the documents of record by notice of reliance alone, except to the extent that they are admissible by notice of reliance under the provisions of § 2.122(e) or the party has obtained an admission or stipulation from the producing party that authenticates the documents.

Documents provided as all or part of an answer to an interrogatory under Fed. R. Civ. P. 33 may be made of record, as an interrogatory answer, by notice of reliance filed in accordance with 37 C.F.R. § 2.120(k)(3)(i)  and 37 C.F.R. § 2.120(k)(5). [ Note 1.] See TBMP § 704.10.

However, a party that has obtained documents from another party through disclosure or under Fed. R. Civ. P. 34 may not make the produced documents of record by notice of reliance alone, except to the extent that they are admissible by notice of reliance under 37 C.F.R. § 2.122(e)  (as official records; or as 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 under an issue in the proceeding; or Internet documents); or unless the documents have been authenticated by an admission or stipulation from the producing party. [ Note 2.] See TBMP § 704.07 and TBMP § 704.08.

Listed below are a number of methods by which documents obtained through disclosure or produced in response to a request for production of documents may be made of record:

  • (1) A party that has obtained documents through disclosure or under Fed. R. Civ. P. 34 may serve on its adversary requests for admission of the authenticity of the documents, and then, during its testimony period, file a notice of reliance, under 37 C.F.R. § 2.120(k)(3)(i), on the requests for admission, the exhibits thereto, and its adversary’s admissions (or a statement that its adversary failed to respond to the requests for admission). [ Note 3.] However, if a party wishes to have an opportunity to serve requests for admission after obtaining documents under Fed. R. Civ. P. 34, it must serve its request for production of documents early in the discovery period, so that when it obtains the produced documents, it will have time to prepare and serve requests for admission, and the responding party will have time to prepare and serve its answers, prior to the expiration of the discovery period. [ Note 4.] For information regarding the need for early initiation of discovery, see TBMP § 403.05(a) and TBMP § 403.05(b).
  • (2) A party that has obtained documents through disclosure or under Fed. R. Civ. P. 34 may offer them as exhibits in connection with the taking of its adversary’s discovery deposition. With regard to Fed. R. Civ. P. 34 documents, however, the request for production of documents must be served early in the discovery period, so that there will still be time remaining, after the requested documents have been produced, to notice and take a discovery deposition during the discovery period. See TBMP § 403.05.
  • (3) A party that has obtained documents through disclosure or under Fed. R. Civ. P. 34 may introduce them as exhibits during the cross-examination of its adversary’s witness. [ Note 5.] This method is available only if the adversary takes testimony and the documents pertain to matters within the scope of the direct examination of the witness.
  • (4) A party that has obtained documents through disclosure or under Fed. R. Civ. P. 34 may, during its own testimony period, take the testimony of its adversary as an adverse witness and introduce the obtained documents as exhibits during direct examination. [ Note 6.]
  • (5) A party that has obtained documents through disclosure or under Fed. R. Civ. P. 34 may, during its own testimony period, make of record by notice of reliance, under 37 C.F.R. § 2.122(e), any of the documents that fall into the category of "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 under an issue in a proceeding, and official records, if the publication or official record is competent evidence and relevant to an issue" and Internet materials. [ Note 7.] See also TBMP § 704.07 and TBMP § 704.08.
  • (6) A party that wishes to obtain documents under Fed. R. Civ. P. 34 may combine its request for production of documents with a notice of taking discovery deposition, and ask that the requested documents be produced at the deposition. However, the combined request for production and notice of deposition must be served well before the date set for the deposition, because a discovery deposition must be both noticed and taken before the close of the discovery period, and because Fed. R. Civ. P. 34(b) allows a party 30 days in which to respond to a request for production of documents. See TBMP § 403.05.
  • (7) Documents obtained through disclosure or under Fed. R. Civ. P. 34 may be made of record by stipulation of the parties. [ Note 8.]
  • (8) Documents obtained through disclosure or by request for production of documents under Fed. R. Civ. P. 34, and improperly offered in evidence, may nevertheless be considered by the Board if the nonoffering party (parties) does not object thereto; and/or treats the documents as being of record; and/or in the same manner improperly offers documents which it obtained under Fed. R. Civ. P. 34. [ Note 9.]

For information on initial disclosures and on obtaining discovery by way of a request for production of documents, see TBMP § 401.02 and TBMP § 406.

If no documents exist which are responsive to a document request, a party’s response that no documents exist may be made of record. [ Note 10.]

A privilege log produced by a party during discovery cannot be introduced into evidence through a notice of reliance. [ Note 11.]

NOTES:

 1.   See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476-77 (TTAB 2014) (Board considered documents responsive to interrogatory under Fed. R. Civ. P. 33(d) submitted under notice of reliance); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103-1104 (TTAB 2007) (because respondent produced documents in responding to petitioner’s interrogatories and admitted in responses to requests for admissions that the documents it produced were true and correct copies of authentic documents, documents are admissible by way of a notice of reliance); M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073 (TTAB 1990) (notice of reliance failed to indicate that documents were being introduced under 37 C.F.R. § 2.120(j)(3)(i) by specifying and making of record a copy of the particular interrogatories to which each document was provided in lieu of an interrogatory answer); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1447-48 (TTAB 1986).

 2.   37 C.F.R. § 2.120(k)(3)(ii). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69962 (October 7, 2016) ("The Office is amending renumbered § 2.120(k)(3)(ii) to add that a party may make documents of record by notice of reliance alone if the party has obtained an admission or stipulation from the producing party that authenticates the documents. This amendment is consistent with the amendment in renumbered § 2.120(i) permitting a party to make one comprehensive request for an admission authenticating specific documents produced by an adverse party."). See, e.g., Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 71345, at *2 n.10 (TTAB 2020) (respondent authenticated document production by referring to the document production in his interrogatory responses but since petitioner did not submit the produced documents, there was nothing for the Board to review); Schiedmayer Celesta GmbH v. Piano Factory Group, Inc., 2019 USPQ2d 341894, at *1 nn. 4 & 5 (TTAB 2019) (unauthenticated documents produced in response to document requests not considered), aff’d, 11 F.4th 1363, 2021 USPQ2d 913 (Fed. Cir. 2021); Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1343 (TTAB 2017) (confidential settlement agreement produced by opposer proper subject matter for submission by applicant (under seal) under notice of reliance because in response to request for admission, opposer attested that documents produced were true and correct copies of authentic documents); Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1032 n.5 (TTAB 2016) (documents produced in response to document production requests made of record by stipulation); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1477 (TTAB 2014) (evidence submitted concurrently with concurrent use applicant’s rebuttal disclosures not considered); Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1932 n.7 (TTAB 2013) (documents produced in response to a request for production of documents may not be introduced under notice of reliance); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 at n.8 (TTAB 2012) (produced documents cannot be introduced by notice of reliance alone); Nike Inc. v. Maher, 100 USPQ2d 1018, 1020-21 n.2 (TTAB 2011) (produced documents not considered because not admissible under notice of reliance); Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1886 n.5 (TTAB 2008); M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073 (TTAB 1990); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1447 n.9 (TTAB 1986); Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 906 n.5 (TTAB 1985) (documents were neither official records nor printed publications); Jeanne-Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58, 59 n.4 (TTAB 1984) (documents were not printed publications).

 3.   37 C.F.R. § 2.120(k)(3)(i). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69962 (October 7, 2016) ("The Office is amending renumbered § 2.120(k)(3)(ii) to add that a party may make documents produced by another party of record by notice of reliance alone if the party has obtained an admission or stipulation from the producing party that authenticates the documents. This amendment is consistent with the amendment in renumbered § 2.120(i) permitting a party to make one comprehensive request for an admission authenticating specific documents produced by an adverse party."); Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1343 (TTAB 2017) (confidential settlement agreement produced by opposer proper subject matter for submission by applicant (under seal) under notice of reliance because in response to request for admission, opposer attested that documents produced were true and correct copies of authentic documents).

 4.   37 C.F.R. § 2.120(a)(3). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69951 (October 7, 2016) ("Under the amended rules, discovery must be served early enough in the discovery period that responses will be provided and all discovery will be complete by the close of discovery. This includes production of documents, which have to be produced or inspected by the close of discovery."); Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1270 (TTAB 2017) (discovery must be served early enough in the discovery period so that responses are due no later than the close of discovery).

 5.   See Harvey Hubbell, Inc. v. Red Rope Industries, Inc., 191 USPQ 119, 121 n.1 (TTAB 1976).

 6.   See Harvey Hubbell, Inc. v. Red Rope Industries, Inc., 191 USPQ 119, 121 n.1 (TTAB 1976).

 7.   37 C.F.R. § 2.122(e); 37 C.F.R. § 2.120(k)(3)(ii); Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010).

 8.   37 C.F.R. § 2.120(k)(3)(ii). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69962 (October 7, 2016) ("The Office is amending renumbered § 2.120(k)(3)(ii) to add that a party may make documents of record by notice of reliance alone if the party has obtained an admission or stipulation from the producing party that authenticates the documents. This amendment is consistent with the amendment in renumbered § 2.120(i) permitting a party to make one comprehensive request for an admission authenticating specific documents produced by an adverse party.").

 9.   See, e.g., Executive Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1179 n.9 (TTAB 2017) (responses to document requests submitted by notice alone treated as being stipulated into record where both parties submitted them in this manner and neither objected); Maids to Order of Ohio Inc. v. Maid-to-Order Inc., 78 USPQ2d 1899, 1901-02 (TTAB 2006); Jeanne-Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58, 59 n.4 (TTAB 1984) (improper subject of notice of reliance but no objection raised); Autac Inc. v. Viking Industries, Inc., 199 USPQ 367, 369 n.2 (TTAB 1978) (neither party objected to other’s offering of Fed. R. Civ. P. 34 documents by notice alone); Southwire Co. v. Kaiser Aluminum & Chemical Corp., 196 USPQ 566, 569 n.1 (TTAB 1977) (applicant did not object to documents produced and introduced by notice alone and referred to those documents in its brief); Harvey Hubbell, Inc. v. Red Rope Industries, Inc., 191 USPQ 119, 121 n.1 (TTAB 1976) (no objection to notice of reliance). Cf. Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 906 n.8 (TTAB 1985).

Cf. Association pour la Defense et la Promotion de l’Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838, 1841 (TTAB 2007) (Board did not consider at final decision evidence stricken by the Board in an earlier order as improperly filed, such evidence consisting of petitioner’s interrogatory responses and labels produced by petitioner, even though petitioner did not object to submission of this evidence by respondent).

 10.   See McGowen Precision Barrels, LLC v. Proof Research, Inc., 2021 USPQ2d 559, at *5 n.6 (TTAB 2021) (written responses to requests for production of documents introduced through a notice of reliance are admissible solely for the purpose of showing that a party has stated that there are no responsive documents); City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1674 n.10 (TTAB 2013) (same); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 n.7 (TTAB 2012) (same); Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1217 n.8 (TTAB 2011); Nike Inc. v. Maher, 100 USPQ2d 1018, 1020-21 n.2 (TTAB 2011); Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1547-48 n.5 (TTAB 2011); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883 n.5 (TTAB 2008).

See also Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1829 (TTAB 2012) (document responses consisting of objections and/or representations that the documents would be produced treated as of record).

 11.   RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1806 n.21 (TTAB 2018) (Board did not consider privilege log submitted under notice of reliance), aff’d, 377 F. Supp. 3d 588 (E.D. Va. 2019), aff’d, 986 F.3d 361, 2021 USPQ2d 81 (4th Cir. 2021).