1208.02    Cited Registrations and Third-Party Registrations and Applications

In the context of an ex parte appeal of a Section 2(d) likelihood of confusion refusal, the file of the cited registration(s) is not automatically of record. [ Note 1.] Rather, for the prosecution file history of a cited registration(s) to be considered, it must be timely introduced as evidence. [ Note 2.]

With regard to third-party registrations, 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. However, the Board’s well-established practice is not to take judicial notice of third-party registrations when an applicant or examining attorney requests that such notice be taken during the course of an appeal. [ Note 3.] This practice also applies to registrations owned by the applicant or registrant that are not the subject of the appeal. [ Note 4.]

37 C.F.R. § 2.142(d)  provides that the record in an appeal must be complete prior to the filing of an appeal, see TBMP § 1203.02(e) and TBMP § 1207.01, and to allow the applicant or the examining attorney to, in effect, add to the record during the appeal would subvert the rule and require the Board to re-examine the application during the appeal, based on the expanded record. Thus, to make a third-party registration of record, or a registration owned by the applicant or registrant not the subject of the appeal, a copy of the registration (from either the electronic records of the Office or the paper USPTO record) showing the current status and title of the registration must be submitted. [ Note 5.] Mere listings of registrations, or copies of private company search reports, are not sufficient to make the registrations of record. [ Note 6.] However, there are limited circumstances in which the Board will consider such listings. In particular, if an applicant includes a listing of registrations in a response to an Office action, and the examining attorney does not advise the applicant that the listing is insufficient to make the registrations of record at a point when the applicant can correct the error, the examining attorney will be deemed to have waived any objection to consideration of the list itself, for whatever probative value it may have. [ Note 7.] TBMP § 1207.03. Similarly, if the examining attorney discusses the registrations in an Office action or brief, without objecting to them, the registrations will be treated as stipulated into the record. [ Note 8.] See TBMP § 1207.03 regarding evidence considered due to actions of nonoffering party. However, the Board will not consider more than the information provided by the applicant. [ Note 9.] Thus, if the applicant has provided only a list of registration numbers and/or marks, the list will have very limited probative value. [ Note 10.]

An improper listing of third-party registrations will not be considered if the list is submitted at a point where the applicant cannot correct the format of the submission and if the examining attorney does not discuss the registrations or otherwise treat them as of record. [ Note 11.]

Third-party applications, as opposed to registrations, have no probative value other than as evidence that the applications were filed. [ Note 12.] Further, the Board will not take judicial notice of status changes in third-party applications in terms of whether such applications eventually issued to registration. [ Note 13.]

Expired or cancelled third-party registrations generally are evidence only of the fact that the registrations issued. [ Note 14.] The Board may choose not to consider expired or cancelled third-party registrations. [ Note 15.]

NOTES:

 1.   In re Sela Products LLC, 107 USPQ2d 1580, 1583 (TTAB 2013) ("there is no equivalent rule for ex parte proceedings that makes the file of a cited registration of record").

 2.   In re Sela Products LLC, 107 USPQ2d 1580, 1583 (TTAB 2013) (had applicant submitted the registration file during the prosecution of the involved application the Board would have considered it).

 3.   Compare In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1688 (Fed. Cir. 2010) (where applicant’s expert identified a third-party’s trademarks in her report before the agency, the court of appeals could take judicial notice of the registrations of the identified marks) with MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69955 (Oct. 7, 2016) (no judicial notice of USPTO records; "The official record of a Board proceeding must be complete, accurate, and reliable, especially because in direct appeals to the Federal Circuit the court’s review of the Board’s decision is confined to the four corners of the administrative record. … The burden of creating a complete evidentiary record by introducing in documentary form information contained in the USPTO’s trademark file records is most appropriately borne by the party wishing to introduce such evidence rather than by the Board."). See Fed. R. Evid. 201(b)(2); Group One, Ltd. v. Hallmark Cards, 407 F.3d 1297, 1306 (Fed. Cir. 2005) (upholding district court’s taking of judicial notice of the fact of a patent’s reinstatement).

 4.   In re Olin Corp., 124 USPQ2d 1327, 1335 n.22 (TTAB 2017) (Board declined to take judicial notice of registrations owned by applicant).

 5.   In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012) (mere listing of third-party registrations in brief insufficient to make them of record); In re Jump Designs LLC, 80 USPQ2d 1370, 1372 (TTAB 2006); In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). See also In re Fiat Group Marketing & Corporate Communications S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014) (examining attorney’s objection to applicant’s submission of third-party registration with appeal brief sustained).

 6.   In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010); In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996).

 7.   See In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1594 n.40 (TTAB 2014) (objection waived where examining attorney, in continuing a refusal, failed to advise applicant that mere listing of third-party registrations was insufficient to make them of record); In re City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2012) ("[T]he examining attorney’s failure to advise applicant of the insufficiency of the list of registrations when it was proffered during examination constituted a waiver of any objection to consideration of that list. Accordingly, we will consider the ... list of registrations ... ‘for whatever limited probative value such evidence may have,’" (citing In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001)), aff’d, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); In re District of Columbia, 101 USPQ2d 1588, 1591 (TTAB 2012) (examining attorney’s objection overruled where on remand applicant submitted copies of the third-party registrations it listed in its response to the first Office action), aff’d sub nom. In re City of Houston, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1717 (TTAB 2011) (specific data provided by applicant considered because examining attorney did not advise applicant that a listing of registrations was insufficient when applicant had time to cure the defect).

See also In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) (applicant listed particulars of third-party applications/registrations in response to first Office action, and because examining attorney did not advise applicant that the listing was insufficient to make applications/registrations of record at a point where applicant could have corrected the error, the list was considered on appeal); In re Hayes, 62 USPQ2d 1443, 1445 n.3 (TTAB 2002) (Board considered third-party registrations submitted with reply brief because applicant had submitted copies of Official Gazettes showing marks published for opposition during prosecution, and examining attorney did not advise applicant that copies of the registrations were necessary to make them of record); In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001) (examining attorney’s objection, raised in appeal brief, to "mere listing" of registrations deemed waived because it was not interposed in response to applicant’s reliance on such listing in its response to initial Office action, listing considered for whatever probative value it might have, with Board noting that the listing did not indicate whether registrations were on the Principal or the Supplemental Register). Please Note: The Broyhill Furniture case does not provide authority for submission (or consideration) of the full registrations on appeal. See In re City of Houston, 101 USPQ2d 1534, 1537 n.7 (TTAB 2012), aff’d, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013).

 8.   See In re Olin Corp., 124 USPQ2d 1327, 1335 n.22 (TTAB 2017) (although the Board does not take judicial notice of registrations, because the examining attorney addressed applicant’s registrations in her brief and neither objected to the discussion of the other, Board treated both registrations as though they are of record); In re Total Quality Group Inc., 51 USPQ2d 1474, 1477 n.6 (TTAB 1999) (examining attorney did not object to listing of third-party registrations, rather he treated the registrations as if they were of record); In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998) (examining attorney did not object to and treated as of record listings from a commercial trademark search report submitted by applicant during prosecution, so Board considered material).

 9.   In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) (Board treated listing of particulars of third-party applications/registrations submitted by applicant as stipulated into record only to the extent that the specific data provided by applicant was considered); In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001) (listing of registration information considered for whatever probative value it might have, with Board noting that the listing did not indicate whether registrations issued on the Principal or the Supplemental Register).

 10.   See In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 n.6 (TTAB 2011) (Board considered TESS listings for whatever probative value they had); In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1380 (TTAB 2006).

 11.   In re HSB Solomon Associates LLC, 102 USPQ2d 1269, 1273-74 (TTAB 2012) (website references in applicant’s request for reconsideration not considered because, even if examining attorney had advised applicant of the insufficiency, there was not time to cure it); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012) (even if copies of third-party registrations had been submitted with brief, they would have been untimely and would not be considered); In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) (listing of third-party registration information submitted with request for reconsideration not considered because at the time it filed the list applicant no longer had an opportunity to add to the record of the application and correct the evidentiary insufficiency of the submission); In re Caserta, 46 USPQ2d 1088, 1090 n.4 (TTAB 1998) (list of third-party registered marks from an unidentified source submitted with request for reconsideration, and objected to by examining attorney, not considered).

 12.   In re Team Jesus LLC, 2020 USPQ2d 11489, at *3 n.29 (TTAB 2020) ("an application would be evidence only of the fact that it was filed, and therefore has no probative value");In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1159 (TTAB 2019) (cancelled registrations, abandoned applications, and pending applications are not probative support for applicant’s argument of "consumer perceptions [of the subject marks] in the marketplace"); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016) (a pending application is evidence only that the application was filed on a certain date); In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366 n.7 (TTAB 2007); In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002).

 13.   In re Binion, 93 USPQ2d 1531, 1535 n.3 (TTAB 2009).

 14.   Action Temporary Services v. Labor Force, Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (cancelled registrations are not evidence of any existing rights in a mark); In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1159 (TTAB 2019) (cancelled registrations, abandoned applications, and pending applications are not probative of "consumer perceptions [of the subject marks] in the marketplace"); In re Brown-Forman Corp., 81 USPQ2d 1284, 1286 n.3 (TTAB 2006) (expired or cancelled registrations generally are evidence only of the fact that the registrations issued).

 15.   See In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1159 (TTAB 2019) (expired or cancelled registrations generally are evidence only of the fact that the registrations issued); In re Hartz Hotel Services Inc., 102 USPQ2d 1150, 1152 n.5 (TTAB 2012) (Board did not consider four cancelled third-party registrations submitted by applicant).