704.12    Judicial Notice

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.

Fed. R. Evid. 201. Judicial Notice of Adjudicative Facts.

  • (a) Scope.This rule governs judicial notice of an adjudicative fact only, not a legislative fact.
  • (b) Kinds of Facts That May Be Judicially Noticed. The court may judicially notice a fact that is not subject to reasonable dispute because it:
    • (1) is generally known within the trial court’s territorial jurisdiction; or
    • (2) can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.
  • (c) Taking Notice. The court:
    • (1) may take judicial notice on its own; or
    • (2) must take judicial notice if a party requests it and the court is supplied with the necessary information.
  • (d) Timing. The court may take judicial notice at any stage of the proceeding.
  • (e) Opportunity to Be Heard. On timely request, a party is entitled to be heard on the propriety of taking judicial notice and the nature of the fact to be noticed. If the court takes judicial notice before notifying a party, the party, on request, is still entitled to be heard.
  • (f) Instructing the Jury. In a civil case, the court must instruct the jury to accept the noticed fact as conclusive. In a criminal case, the court must instruct the jury that it may or may not accept the noticed fact as conclusive.

In appropriate instances, the Board may take judicial notice of adjudicative facts. See 37 C.F.R. § 2.122(a)  and Fed. R. Evid. 201.

704.12(a)    Kind of Fact That May be Judicially Noticed

The only kind of fact that may be judicially noticed by the Board is a fact that is "not subject to reasonable dispute in that it is either (1) generally known within the territorial jurisdiction of the trial court or (2) capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned." [ Note 1.]

For examples of decisions concerning whether particular facts are appropriate subject matter for judicial notice by the Board, see cases cited in the note below. [ Note 2.] See also TBMP § 1208.04 for additional cases.

NOTES:

 1.   Fed. R. Evid. 201(b). See Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (per Fed. R. Evid. 201(b) and 201(c), providing case captions including case names and docket numbers of trademark infringement actions "likely was sufficient" for the Board to take judicial notice that a party had filed various infringement actions, but not sufficient to take judicial notice of the contents of the complaints, that the cases related to the mark at issue in the Board proceeding, or that others were actively infringing the party’s asserted mark); Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385, 1393 n.5 (TTAB 1999). See, e.g., Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988); Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1603 (TTAB 1999); Omega SA v. Compucorp, 229 USPQ 191, 194 (TTAB 1985); United States National Bank of Oregon v. Midwest Savings and Loan Association, 194 USPQ 232, 235 (TTAB 1977).

Please Note: The Federal Circuit, in In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed. Cir. 2010), exercised its discretion to take judicial notice of a third party’s registrations. Although the court took judicial notice of a third-party registration in that case, the Board does not take judicial notice of either third-party registrations or a party’s own registration[s] insofar as the Trademark Rules of Practice specify how to make such registrations of record in an inter partes proceeding. See 37 C.F.R. § 2.122(d)  and 37 C.F.R. § 2.122(e). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69955 (October 7, 2016) (Board considered but rejected suggestion of taking judicial notice of USPTO records, explaining various reasons introduction of information contained in USPTO trademark file records is most appropriately borne by the party seeking to introduce the evidence).

 2.   Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (filing of various infringement actions when party provided case captions - yes; contents of the complaints, that the cases related to the mark at issue in the Board proceeding, or that others were actively infringing the party’s asserted mark - no: "The Board is not required to scour, not just the dockets, but the multiple pleadings referenced in those dockets to determine the substance of the litigations referenced.").

TTAB cases issued in 2000 and after: Chutter, Inc. v. Great Management Group, LLC and Chutter, Inc. v. Great Concepts, LLC, 2021 USPQ2d 1001, at *36 n.72 (TTAB 2021) (Board took judicial notice of the word "tavern" from online dictionary), appeal docketed, No. 22-1212 (Fed. Cir. 2021); Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *7 n.9 (TTAB 2019) (Board took judicial notice of census bureau data although not made of record by either party); M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd., 2019 USPQ2d 149090, at *1 n.7 (TTAB 2019) (Board took judicial notice of British spelling of word "gutka" and official United States publication (NCI Cancer Dictionary), although not made of record by either party); In re Morinaga Nyuguo Kabushiki Kaisha, 120 USPQ2d 1738, 1744 n.4 (TTAB 2016) (locations of Puyallup, Washington and Mount Rainer - yes); In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767-68 (TTAB 2016) (patent excerpt, and definitions from Wikipedia, definitions from commercial websites that do not constitute dictionary definitions, and excerpts for which the source of the materials was not identified - no); Nike, Inc. v. Palm Beach Crossfit Inc., 116 USPQ2d 1025, 1029 (TTAB 2015) (applicant’s photographs of a person from which its marks were allegedly derived - no); Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080, 1098 n.114 (TTAB 2014) (census data - yes), aff’d, 112 F. Supp. 3d 439, 115 USPQ2d 1524 (E.D. Va. 2015), vacated and remanded, Pro Football, Inc. v. Blackhorse, 709 F. App’x 183 (per curiam) (4th Cir. 2018) (mem.); UMG Recordings Inc. v. Matte, Inc., 100 USPQ2d 1868, 1874, 1879 n.12 (TTAB 2011) (dictionary definition - yes; web pages from websites - no); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 n.61 (TTAB 2011) (information from encyclopedias - yes), 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); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1075 n.17 (TTAB 2011) (dictionary definitions - yes); Enbridge Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1542 n.9 (TTAB 2009) (phrase with a possible industry specific-meaning and where the parties have not set forth and addressed a single, definable meaning - no); UMG Recordings, Inc. v. Charles O’Rourke, 92 USPQ2d 1042, 1046 (TTAB 2009) (registration issuing from pleaded application after applicant’s trial brief had been filed, although copy of application was of record - no); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1117 (TTAB 2009) (definitions from an online source which does not indicate it is the electronic version of a printed reference work but are consistent with definitions in "a more traditional reference source" - yes); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1590 n.8 (TTAB 2008) (online reference works which exist in printed format or have regular fixed editions - yes); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1723 (TTAB 2008) (items of outerwear and undergarments are related - no); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1889 (TTAB 2008) (the licensing of commercial trademarks on "collateral products" has become a part of everyday life - yes); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1110 (TTAB 2007) (third-party registrations mentioned in trial brief - no); Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1192 n.9 (TTAB 2007) (current status of registration owned by party properly made of record, when status of registration changed between time made of record and time case decided - yes; Office assignment records reflecting current ownership - yes); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1485 (TTAB 2007) (number of applications and registrations in applicant’s name - no); In re Red Bull GmbH, 78 USPQ2d 1375, 1378, 1379 n.7 (TTAB 2006) (dictionary definitions - yes; "scholarly reviews" of an essay at several websites - no); Motion Picture Association of America Inc. v. Respect Sportswear Inc., 83 USPQ2d 1555, 1558 (TTAB 2007) (results from Internet search engines and from eBay website - no); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1931 n.26 (TTAB 2006) (third-party website materials - no); B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir. 1988) (dictionary definition of term as trademark - yes, indicates mark is reasonably famous; also, encyclopedias may be consulted); Wella Corp. v. California Concept Corp., 192 USPQ 158 (TTAB 1976), rev’d on other grounds, 558 F.2d 1019, 194 USPQ 419 (CCPA 1977) (home cold permanent wave kits have for many years been sold directly to nonprofessional consumers through retail outlets - yes); Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1605 (TTAB 1999) (statements regarding race relations pleaded in the complaint - no); In re Wada, 48 USPQ2d 1689, 1689 n.2 (TTAB 1998) (there are thousands of registered marks incorporating the term NEW YORK for goods and services that do not originate there - no), aff’d, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999); University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982) (dictionary definitions - yes), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002) (online dictionary definition where resource was also available in book form - yes); In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514 n.4 (TTAB 2001) (dictionary entries and other standard reference works - yes); In re 3Com Corp., 56 USPQ2d 1060, 1061 n.3 (TTAB 2000) (dictionary definitions and technical reference works, e.g., computer dictionary - yes).

TTAB cases issued before 2000: Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385, 1393 (TTAB 1999) (dictionary definitions judicially noticed although not made of record by either party); In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999) (online dictionaries which otherwise do not exist in printed format - no); In re Astra Merck Inc., 50 USPQ2d 1216, 1219 (TTAB 1998) ("Physicians’ Desk Reference" - yes); In re U.S. Cargo Inc., 49 USPQ2d 1702, 1704 (TTAB 1998) ("U.S." means the United States, which is a geographic area with defined boundaries - yes); In re Carolina Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB 1998) (third-party registrations - no); Pinocchio’s Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227, 1229 n.6 (TTAB 1989) (Catonsville, Maryland is located between Baltimore, Maryland and Washington, DC - yes); Los Angeles Bonaventure Co. v. Bonaventure Associates, 4 USPQ2d 1882, 1884 (TTAB 1987) (whether other companies have expanded from restaurant services to hotel services under a single mark, and, if so, when - no); Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1293 (TTAB 1986) (files of applications and/or registrations, where no copies thereof are filed, and where they are not the subject of the proceeding - no); Omega SA v. Compucorp, 229 USPQ 191, 192 n.6 (TTAB 1985) (presumptions concerning the significance in trade of certain terms - no); Hertz System, Inc. v. A-Drive Corp., 222 USPQ 625, 630 n.14 (TTAB 1984) (the numeral "1" is widely used to indicate superiority - yes); Hamilton Burr Publishing Co. v. E.W. Communications, Inc., 216 USPQ 802, 804 n.5 (TTAB 1982) (probation report - no); Abbott Laboratories v. Tac Industries, Inc., 217 USPQ 819, 823 (TTAB 1981) (use of antimicrobial agents in the floor covering industry - no); Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852, 860 n.7 (TTAB 1981) (dictionary definitions - yes); Sprague Electric Co. v. Electrical Utilities Co., 209 USPQ 88, 95 n.3 (TTAB 1980) (standard reference works - yes); Cities Service Co. v. WMF of America, Inc., 199 USPQ 493, 495 (TTAB 1978) (third-party registrations and listings in trade directories, where no copies thereof are submitted - no); Plus Products v. Sterling Food Co., 188 USPQ 586, 589 (TTAB 1975) (food supplements and fortifiers are commonly used in producing bakery products - yes); Bristol-Myers Co. v. Texize Chemicals, Inc., 168 USPQ 670, 671 (TTAB 1971) (operations of opposer and applicant - no).

704.12(b)    When Taken

The Board will take judicial notice of a relevant fact not subject to reasonable dispute, as defined in Fed. R. Evid. 201(b), if a party (1) requests that the Board do so, and (2) supplies the necessary information. [ Note 1.] The request should be made during the requesting party’s testimony period, by notice of reliance accompanied by the necessary information. [ Note 2.] The Board, in its discretion, may take judicial notice of a fact not subject to reasonable dispute, as defined in Fed. R. Evid. 201(b), whether or not it is requested to do so. [ Note 3.]

NOTES:

 1.   Fed. R. Evid. 201(c). See International Dairy Foods Association v. Interprofession du Gruyère, 2020 USPQ2d 10892, at *17 n.115 (TTAB 2020) (request to take judicial notice of the definition of "gruyere" from Encyclopedia Britannica denied for failure to submit a copy of the webpage containing the entry where instead only web address provided), aff’d, ___ F. Supp. 3d ___, 2021 WL 6286234 (E.D. Va. Dec. 15, 2021), appeal docketed, No. 22-1041 (4th Cir. Jan. 11, 2022); Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (party requesting judicial notice be taken must provide the necessary information); United States National Bank of Oregon v. Midwest Savings and Loan Association, 194 USPQ 232, 235 (TTAB 1977); Litton Business Systems, Inc. v. J. G. Furniture Co., 190 USPQ 431, 433 (TTAB 1976).

 2.   See Litton Business Systems, Inc. v. J. G. Furniture Co., 190 USPQ 431, 434 (TTAB 1976). See also Wright Line Inc. v. Data Safe Services Corp., 229 USPQ 769, 770 n.5 (TTAB 1985); Sprague Electric Co. v. Electrical Utilities Co., 209 USPQ 88, 95 n.3 (TTAB 1980).

 3.   Fed. R. Evid. 201(c). See Performance Open Wheel Racing, Inc. v. United States Auto Club Inc., 2019 USPQ2d 208901, at *4 n.34 (TTAB 2019) (Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1037 n.14 (TTAB 2010) (same); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006) (Board takes judicial notice of dictionary definitions); Boswell v. Mavety Media Group Ltd,, 52 USPQ2d 1600, 1603 (TTAB 1999) (declined to take judicial notice of slang dictionary definition when submitted as part of rebuttal testimony when could have been submitted with case in chief); University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982) (Board takes judicial notice of dictionary definitions), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); United States National Bank of Oregon v. Midwest Savings and Loan Association, 194 USPQ 232, 235 (TTAB 1977); Litton Business Systems, Inc. v. J. G. Furniture Co., 190 USPQ 431, 433 (TTAB 1976).

704.12(c)    Opportunity to be Heard

A party to a proceeding before the Board is entitled, on timely request, "to be heard on the propriety of taking judicial notice and the nature of the fact to be noticed. If the court takes judicial notice before notifying a party, the party, on request, is still entitled to be heard." [ Note 1.] This does not mean, however, that when judicial notice is taken without prior notification, a party is automatically entitled to a hearing on request, even if it makes no offer to show that the taking of judicial notice was improper. [ Note 2.]

NOTES:

 1.   Fed. R. Evid. 201(e). See Litton Business Systems, Inc. v. J. G. Furniture Co., 190 USPQ 431, 433-34 (TTAB 1976).

 2.   See In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113 n.6 (Fed. Cir. 1983). See also Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (party can waive right to contest judicial notice if it does not request to be heard at the time), aff’g 204 USPQ 396, 401 n.5 (TTAB 1979) (where the Board took judicial notice of certain facts outside the record).

704.12(d)    Time of Taking Notice

Judicial notice may be taken at any stage of a Board proceeding, even on review of the Board’s decision on appeal. [ Note 1.] However, the Federal Circuit may decline to consider a request for judicial notice made at the late stage of oral argument on appeal. [ Note 2.]

NOTES:

 1.   See, e.g., Fed. R. Evid. 201(d); B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (request for judicial notice as to fame of mark made in the briefs on appeal); Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308 (Fed. Cir. 1988) (judicial notice of banking business on appeal); American Security Bank v. American Security and Trust Co., 571 F.2d 564, 197 USPQ 65, 67 n.1 (CCPA 1978) (judicial notice of absence of listing in local telephone directories); Wella Corp. v. California Concept Corp., 192 USPQ 158 (TTAB 1976), rev’d on other grounds, 558 F.2d 1019, 194 USPQ 419, 422 n.5 (CCPA 1977) (fact of common knowledge, e.g., of purchasers and channels of trade for home permanent wave kits, appropriate for judicial notice); Food Specialty Co. v. Kal Kan Foods, Inc., 487 F.2d 1389, 180 USPQ 136, 139 n.3 (CCPA 1973) (judicial notice on appeal of general sentiment towards kittens which differs from that toward other small animal pets); Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385, 1393 n.5 (TTAB 1999) (judicial notice may be taken at any time).

 2.   See Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1356 (Fed. Cir. 2000) (Court declined to consider whether to take judicial notice of fame where request for judicial notice was made for first time at oral argument on appeal).