1207.03    Evidence Considered Due to Actions of Nonoffering Party

Evidence submitted after appeal, without a granted request to suspend and remand for additional evidence, see TBMP § 1207.02, may be considered by the Board, despite its untimeliness, if the nonoffering party (1) does not object to the new evidence, and (2) discusses the new evidence or otherwise affirmatively treats it as being of record. [ Note 1.] In such a situation, the Board may consider evidence submitted by the nonoffering party to rebut the untimely evidence. [ Note 2.]

Third-party registrations may not be made of record by merely listing them in response to an Office Action. "It is well-established that in order to make third-party registrations properly of record, ‘applicant should submit copies of the registrations themselves, or the electronic equivalent thereof’ from the USPTO’s electronic databases. ..." [ Note 3.]

If the applicant, during the prosecution of the application, provided a listing of third-party registrations, without also submitting actual copies of the registrations, and the examining attorney did not object or otherwise advise the applicant that a listing is insufficient to make such registrations of record at a point when the applicant could cure the insufficiency, the examining attorney will be deemed to have waived any objection as to the admissibility of the list. [ Note 4.] See TBMP § 1208.02 regarding third-party registrations, including discussion of evidentiary value of such listings.

NOTES:

 1.   See, e.g., In re International Watchman, Inc., 2021 USPQ2d 1171, at *29 n.49 (TTAB 2021) (Board treated applicant’s prior registration as if of record because examining attorney and applicant referred to it in briefing the appeal); In re MK Diamond Products, Inc., 2020 USPQ2d 10882, at *1 n.5 (TTAB 2020) (Board treated registration as of record because applicant submitted substantial portions of the registration’s file history as a basis for argument throughout prosecution, and the examining attorney addressed the registration in the office actions and brief, and did not object to its discussion); In re Olin Corp., 124 USPQ2d 1327, 1335 n.22 (TTAB 2017) (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 were of record); In re Sadoru Group Ltd., 105 USPQ2d 1484, 1485, 1489 n.6 (TTAB 2012) (examining attorney stated she did not object to consideration of untimely evidence accompanying applicant’s brief); In re Heeb Media LLC, 89 USPQ2d 1071, 1072 (TTAB 2008) (examining attorney pointed out untimeliness of evidence attached to applicant’s brief, but considered it and relied on it, and therefore Board treated it as of record); In re Litehouse Inc., 82 USPQ2d 1471, 1475 n.2 (TTAB 2007) (third-party registrations submitted for first time with applicant’s appeal brief considered because examining attorney did not object in her brief and instead presented arguments in rebuttal of this evidence); In re Homeland Vinyl Products Inc., 81 USPQ2d 1378, 1381 n.5 (TTAB 2006) (declarations submitted for first time with applicant’s appeal brief treated of record because examining attorney did not object and addressed the evidence on the merits); In re Rodale Inc., 80 USPQ2d 1696, 1699 n.4 (TTAB 2006) (Board considered summary of applicant’s prior registrations presented for the first time in its appeal brief because the examining attorney did not object and also presented substantive arguments regarding the registrations); In re Jump Designs LLC, 80 USPQ2d 1370, 1372 (TTAB 2006) (examining attorney, after noting that evidence submitted with applicant’s appeal brief was untimely, specifically stated in her brief that she did not object to it); In re Gibson Guitar Corp., 61 USPQ2d 1948, 1952 n.5 (TTAB 2001) ("evidence" of sales mentioned for first time in applicant’s brief and thus not timely submitted, but because in her brief examining attorney treated the information as though of record, Board did also); In re Urbano, 51 USPQ2d 1776, 1778 n.4 (TTAB 1999) (third-party registrations submitted with examining attorney’s brief considered of record because applicant did not object and discussed the evidence on its merits in reply brief); In re Pennzoil Products Co., 20 USPQ2d 1753, 1756 n.9 (TTAB 1991); In re Nuclear Research Corp., 16 USPQ2d 1316, 1317 n.2 (TTAB 1990); In re Dana Corp., 12 USPQ2d 1748, 1749 n.8 (TTAB 1989); In re Pencils Inc., 9 USPQ2d 1410, 1411 (TTAB 1988).

See also In re Wells Fargo & Co., 231 USPQ 95, 101 n.24 (TTAB 1986); In re Weather Channel, Inc., 229 USPQ 854 n.3 (TTAB 1985); In re Bercut-Vandervoort & Co., 229 USPQ 763, 766 n.6 (TTAB 1986); In re Cotter & Co., 228 USPQ 202, 204 n.2 (TTAB 1985); In re Chung, Jeanne & Kim Co., 226 USPQ 938, 946 n.6 (TTAB 1985); In re Bee Pollen From England Ltd., 219 USPQ 163, 165 n.4 (TTAB 1983); In re Development Dimensions International, Inc., 219 USPQ 161 n.2 (TTAB 1983).

 2.   See In re Development Dimensions International, Inc., 219 USPQ 161 (TTAB 1983).

 3.   In re City of Houston, 101 USPQ2d 1534, 1536 n.5 (TTAB 2012) (evidentiary submissions "should be made prior to appeal or, if after appeal, pursuant to a remand of the matter to the examining attorney for further examination. Trademark Rule 2.142(d).") (quoting In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996) (citing In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994)), aff’d, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013).

 4.   See 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). See also In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *4 n.17 (TTAB 2020) (because the examining attorney failed to object during prosecution to applicant’s improper listing of registrations, which would have allowed applicant to cure the deficiency, Board deemed the objection waived on appeal); In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) (although applicant first submitted a copy of its own registration with its appeal brief, Board viewed examining attorney as having treated registration of record because applicant referenced it in argument made in two responses during prosecution and examining attorney addressed the argument and therefore considered the registration; nor did examining attorney object to the registration as untimely filed); 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 Boyd Gaming Corp., 57 USPQ2d 1944, 1945 n.4 (TTAB 2000). Cf. In re Lorillard Licensing Co., 99 USPQ2d 1312, 1314-15 n.3 (TTAB 2011) (examining attorney was not required to advise applicant that reference to a third-party registration was insufficient to make such registration of record when reference was made for the first time in a request for reconsideration which was denied).