1208.01    Evidence from NEXIS Database, Printed Publications, or Online Publications

The applicant or the examining attorney may submit articles or excerpts from articles taken from periodicals or NEXIS and other similar databases as evidence. [ Note 1.] Such material is evidence of how a term or mark may be perceived, rather than of the truth of the underlying information in the article. [ Note 2.] The probative value of stories from newswires varies. They may be treated as having minimal evidentiary value when it is not clear that such stories have appeared in any publication available to the consuming public. In such cases, the wire service stories are competent to show how their authors used particular terms, but they are not necessarily assumed to have influenced the attitudes of prospective customers. [ Note 3.] On the other hand, newswire stories have been considered as having an effect when there is reason to believe that the relevant consumers have been exposed to the articles. [ Note 4.] As for articles from foreign publications, the probative value of such articles is evaluated on a case-by-case basis, with consideration given to the nature of the involved goods or services and the growing availability and use of the Internet as a resource for news. [ Note 5.]

It is not necessary that all articles retrieved by a search of NEXIS or other databases be submitted and, indeed, the Board discourages such submissions where they are unnecessarily cumulative or not probative. [ Note 6.] Examining attorneys and applicants should not submit articles or excerpts that are not relevant. [ Note 7.] However, if an examining attorney submits a sample of articles, it should be representative of the articles retrieved by the search. [ Note 8.] Further, if an examining attorney submits a very limited number of articles without indicating that it is a representative sample of a certain number of articles, the Board will assume that these are the only articles that support the examining attorney’s position. [ Note 9.]

If the applicant or the examining attorney submits excerpts from articles, the nonoffering party may submit the complete article, even if such submission is made after the appeal is filed. See TBMP § 1207.01 for general rule that evidence submitted after appeal is untimely. If only a portion of an article is submitted, that portion is not thereby insulated from the context from whence it came. [ Note 10.] If the nonoffering party wishes to have the entire article considered, the better practice is to submit the article with a request for remand. However, because the party submitting the excerpt of the article had the opportunity to review the entire article, if the article is submitted with an appeal brief, the Board need not remand the application, and may instead consider the article as part of the record. However, if, after appeal, an applicant attempts to submit a full printout of articles which were revealed in an examining attorney’s search, but which were not introduced by the examining attorney, such articles are considered to be additional evidence and therefore untimely. [ Note 11.]

NOTES:

 1.   In re Shiva Corp., 48 USPQ2d 1957, 1958 (TTAB 1998).

 2.   See In re Viventia Biotech Inc., 80 USPQ2d 1376, 1379 (TTAB 2006) (use of term in articles shows authors’ belief that term is appropriate way to describe goods and that readers will understand the meaning of the term); In re Lamb-Weston Inc., 54 USPQ2d 1190, 1192 (TTAB 2000) (use of term in articles, particularly those periodicals with a general circulation, reflects a perception that the public is familiar with the term and will readily understand it); In re Hudson News Co., 39 USPQ2d 1915, 1920 n.10 (TTAB 1996) (Board allowed use of NEXIS evidence to show psychological effect of color blue, despite applicant’s hearsay objection, noting the difficulties for examining attorneys to establish this kind of fact, and although the evidence has a hearsay element, there is no bias in the evidence, which was not prepared for purposes of the case), aff’d without opinion, 114 F.3d 1207 (Fed. Cir. 1997). See also In re Adlon Brand Gmbh & Co., 120 USPQ2d 1717, 1720-21 (TTAB 2016) (use of social media postings to show public exposure to and perception of surname).

 3.   In re International Business Machines Corp., 81 USPQ2d 1677, 1683 n.10 (TTAB 2006) (newswire stories do not have the same probative value as stories appearing in newspapers and magazines); In re Classic Media Inc., 78 USPQ2d 1699, 1701 n.2 (TTAB 2006) (nothing to indicate that wire service report was distributed and thus has minimal probative value in that public’s exposure to the use of the phrase in the wire report cannot be judged); In re Opus One Inc., 60 USPQ2d 1812, 1815 n.7 (TTAB 2001) (newswire stories, presumably unpublished, and stories from foreign publications, not considered).

 4.   In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1268 (TTAB 2009) (Business Wire article considered); In re Cell Therapeutics Inc., 67 USPQ2d 1795, 1798 (TTAB 2003) (given that newswire stories are likely to reach the public via the Internet, they now have more probative value than in the past, in this case the relevant public consisted of highly sophisticated medical doctors and researchers who would have access to newswire stories).

 5.   In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007) (information originating on foreign websites or in foreign news publications that are accessible to the United States public may be relevant to discern U.S. consumer impression of a proposed mark); In re Odd Sox LLC, 2019 USPQ2d 370879, * 5-6 (TTAB 2019); In re Cell Therapeutics, Inc., 67 USPQ2d 1795, 1798 (TTAB 2003).

But see In re tapio GmbH, 2020 USPQ2d 11387, at *8 n.31 (TTAB 2020) (evidence of individuals with the surname "Tapio" residing in Finland of little probative value); In re TracFone Wireless, Inc., 2019 USPQ2d 222983, at *3 n.7 (TTAB 2019) (foreign websites, although in English, not considered because directed to local foreign consumers and no basis to conclude U.S. consumers likely to have been exposed to them); In re AOP LLC, 107 USPQ2d 1644, 1649 n.3 (TTAB 2013) (submissions from the examining attorney made in languages other than English not considered); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1265 n.9 (TTAB 2011) (website for Australian brewery not considered because no basis to conclude U.S. consumers exposed to it); In re Joint-Stock Co. "Baik", 80 USPQ2d 1305, 1307 n.3 (TTAB 2006) (article in London edition of Financial Times not evidence of goods/place association because nothing to show that London edition distributed in the United States); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1538 n.2 (TTAB 1998) (in the absence of evidence of the extent of circulation of foreign publications in the United States, they cannot serve to show the significance in this country of the designation at issue); In re Wilcher Corp., 40 USPQ2d 1929, 1931 (TTAB 1996) (in absence of evidence establishing substantial circulation of foreign publications in the United States, they are not competent to show significance of term to general U.S. public).

 6.   In re Virtual Independent Paralegals, LLC, 2019 USPQ2d 111512, at *1 (TTAB 2019) (multiple submissions of the same evidence is discouraged because it is unnecessarily cumulative); In re Homes & Land Publishing Corp., 24 USPQ2d 1717, 1718 (TTAB 1992) (it is not necessary that an examining attorney submit all stories found, especially where there are a large number of them). Cf. In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245-46 (TTAB 2010) (Board criticized applicant for submitting over 300 pages of Internet material, much of which was duplicative or irrelevant).

 7.   See In re Adlon Brand Gmbh & Co., 120 USPQ2d 1717, 1719 (TTAB 2016) (Board disregards duplicative articles); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010) ("[I]t is important that applicants and examining attorneys carefully consider the materials retrieved by their Internet searches and make a judicious submission of the results."); In re Couture, 60 USPQ2d 1317, 1318 n.2 (TTAB 1999) (many excerpts were repetitive or used the searched term for services not related to the applicant’s); In re Lamb-Weston Inc., 54 USPQ2d 1190, 1192 (TTAB 2000) (articles which bear no relationship to applicant’s goods are irrelevant). See also In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1339 n.10 (TTAB 2009) (Board approved examining attorney’s Internet search of involved mark that included limitation to goods at issue).

 8.   See In re Trans Continental Records Inc., 62 USPQ2d 1541, 1544 (TTAB 2002) (although the examining attorney described the NEXIS articles which were submitted as a "sample," Board concerned by the fact that the NEXIS search retrieved 441 articles, and the first of the ten stories submitted was number 257). See also In re Homes & Land Publishing Corp., 24 USPQ2d 1717, 1718 n.1 (TTAB 1992) (Board criticized examining attorney’s submission of only 3 articles of the 18 retrieved and characterization of them as a "sampling"; "saying that the three articles are only a sampling of the evidence is not the same as saying that they are a ‘representative sample’ thereof").

 9.   In re The Monotype Corp. PLC, 14 USPQ2d 1070, 1071 n.2 (TTAB 1989) (although NEXIS search uncovered 48 stories, examining attorney submitted only two excerpts; Board concluded that, because the examining attorney is presumed to have made the best case possible, the 46 stories not made of record did not support the examining attorney’s position, and suggested that if there had been additional stories supporting the position the examining attorney should have submitted a larger number and indicated whether or not they were representative of the rest); In re Federated Department Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987) (examining attorney submitted 3 of 18 NEXIS articles retrieved; Board assumed that the three excerpts selected were the best support of the examining attorney’s refusal to register available from that source).

 10.   In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 820 (Fed. Cir. 1986).

 11.   In re Psygnosis Ltd., 51 USPQ2d 1594, 1597-98 (TTAB 1999).