1306 Treatment of Evidence in Appeal from Expungement or Reexamination Proceeding
The Board generally takes a somewhat more permissive stance with respect to the admissibility and probative value of evidence in an ex parte proceeding than it does in an inter partes proceeding. [ Note 1.] That is, in an ex parte proceeding the Board tolerates some relaxation of the technical requirements for evidence and focuses instead on the spirit and essence of the rules of evidence. [ Note 2.]
For example, the affidavit or 37 C.F.R § 2.20 declaration is an established method for the introduction of evidence in an ex parte proceeding without the option of cross examination. [ Note 3.]
Similar to inter partes proceedings, in an ex parte appeal, evidence properly made of record may be cited by either the examining attorney or by the registrant for any permissible purpose. [ Note 4.]
For information as to how the Court of Appeals for the Federal Circuit, in reviewing a decision of the Board on an ex parte appeal from a refusal of registration, evaluates the sufficiency of the evidence offered by the examining attorney, see the cases cited in the note below. [ Note 5.]
NOTES:
1. See In re Embiid, 2021 USPQ2d 577, at *5 n.19 ( (TTAB 2021) (Board is "more permissive regarding the use of hearsay in ex parte appeals" but "may still consider the hearsay nature of evidence in assessing its probative value in an ex parte proceeding"); In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1597 (TTAB 2018; In re Sela Products LLC, 107 USPQ2d 1580, 1584 (TTAB 2013) ("…the Board does not, in ex parte appeals, strictly apply the Federal Rules of Evidence, as it does in inter partes proceedings.").
2. See In re Hudson News Co., 39 USPQ2d 1915, 1920 n.10, 1924 n.18 (TTAB 1996), aff’d without opinion (Fed. Cir. 1997) (Board allowed NEXIS evidence to show psychological effect of color blue, despite hearsay nature, recognizing the difficulty for examining attorney to establish such fact without relying on NEXIS evidence; Board also accepted sufficiency of evidence showing features of applicant’s trade dress were common, recognizing that USPTO’s limited resources constrain an examining attorney’s ability to acquire photographs of interiors of retail establishments); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565 (TTAB 1996); In re Murphy Door Bed Co., 223 USPQ 1030, 1032 n.9 (TTAB 1984). See also In re Berman Brothers Harlem Furniture Inc., 26 USPQ2d 1514, 1515 (TTAB 1993).
3. See, e.g., 37 C.F.R § 2.41(a)(3); In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1597 (TTAB 2018); In re Manco Inc., 24 USPQ2d 1938, 1941 n.8 (TTAB 1992); In re Bauhaus Designs Canada Ltd., 12 USPQ2d 2001, 2004 (TTAB 1989); In re Motorola, Inc., 3 USPQ2d 1142, 1143 (TTAB 1986); In re Peterson Manufacturing Co., 229 USPQ 466, 468 (TTAB 1986); In re Melville Corp., 228 USPQ 970, 972 (TTAB 1986); In re Gammon Reel, Inc., 227 USPQ 729, 731 (TTAB 1985); In re Original Red Plate Co., 223 USPQ 836, 838 (TTAB 1984).
4. See In re Guild Mortgage Co., 2020 USPQ2d 10279, at *10 n.4 (TTAB 2020) (Board clarified that in ex parte proceedings, evidence properly made of record may be cited by either the examining attorney or by the applicant for any permissible purpose).
5. In re Budge Manufacturing Co., 857 F.2d 773, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988) (Court, being mindful that the USPTO has limited facilities for acquiring evidence--it cannot, for example, be expected to conduct a survey of the marketplace or obtain consumer affidavits--concludes evidence of record is sufficient to establish a prima facie case of deceptiveness); In re Loew’s Theatres, Inc., 769 F.2d 764, 768, 226 USPQ 865, 868 (Fed. Cir. 1985) ("... practicalities of the limited resources available to the PTO are routinely taken into account in reviewing its administrative action.").
1306.01 Internet Material and Multimedia Materials
Material obtained through the Internet or from websites is acceptable as evidence in ex parte proceedings. [ Note 1.] To make Internet material properly of record, the offering party must provide the full address (URL) for the web page, and the date it was accessed or printed, either by the information displayed on the web page itself, or by providing this information in an Office action or a registrant’s response. [ Note 2.]
It is the obligation of the examining attorney and the registrant to ensure that Internet evidence made of record is complete. [ Note 3.]
The Board will consider multimedia evidence [ Note 4.], including video files submitted through TEAS during the proceeding. [ Note 5.]
Additional guidance in TBMP § 1208.03 regarding internet, social media, and multimedia materials may be applied to appeals in expungement and reexamination proceedings.
NOTES:
1. See, e.g., In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018).
2. See Safer Inc. v. OMS investments Inc., 94 USPQ2d 1031, 1039 (TTAB 2010) ("Safer"); In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018) (applying Safer to evidence submitted by examining attorneys and applicants in ex parte cases).
3. See In re Sausser Summers, PC, 2021 USPQ2d 618, at *24 n.59 (TTAB 2021) (portions of webpage evidence were "missing or cut off," and it was applicant’s responsibility to ensure the legibility of its evidence); In re tapio GmbH, 2020 USPQ2d 11387, at *3 (TTAB 2020) (exhibits purportedly uploaded with applicant’s request for reconsideration but not appearing in the TSDR record not considered by the Board).
4. See In re General Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1025 n.56 (TTAB 2017) (Board considered audio-visual materials containing television commercials in evaluating whether applicant’s proposed single-color mark had acquired distinctiveness).
5. See In re Fantasia Distribution, Inc., 120 USPQ2d 1137, 1143 n.13 (TTAB 2016) (TEAS accepts multimedia evidence, including video files under 30 MB).
1306.02 Judicial Notice
Guidance in TBMP § 1208.04 regarding judicial notice may be applied to appeals in expungement and reexamination proceedings.
1306.03 Registrant’s Own Materials
A registrant’s materials, such as its website or advertisements describing its goods or services, or specimens of use of its mark, may be considered. [ Note 1.]
NOTES:
1. See In re Vox Populi Registry Ltd., 25 F.4th 1348, 2022 USPQ2d 115, at *2-3 (Fed. Cir. 2022) (considering applicant’s specimens in assessing whether proposed mark functions as a source identifier); In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017) (as a matter of law, the Board "did not err by considering the explanatory text of the specimens in the descriptiveness inquiry"); In re James S. Fallon, 2020 USPQ2d 11249, at *9-10 (TTAB 2020) (Board considered applicant’s own website advertisement touting product features in affirming mere descriptiveness refusal); In re Emergency Alert Sols. Group, LLC, 122 USPQ2d 1088, 1091 n.16, 1092 (TTAB 2017) (Board considered applicant’s own webpage and specimen describing its services in affirming genericness refusal); In re Weiss Watch Co., 123 USPQ2d 1200, 1202 (TTAB 2017) (Board, in affirming surname refusal, considered applicant’s website stating that WEISS is the surname of Applicant's founder and head watchmaker).
1306.04 Confidential Material
Submissions filed in ex parte appeal proceedings cannot be filed under seal pursuant to a protective order unless so issued or ordered by any court or by the Board. See 37 C.F.R § 2.27(d), 37 C.F.R § 2.27(c). [ Note 1.]
In responding to an Office action in an expungement or reexamination proceeding, a registrant who wishes to submit confidential information in order to show use in commerce of the mark should redact such information and/or petition the Director under § 2.146 for permission to submit the information outside of TEAS to keep the information from becoming part of the public record. [ Note 2.]
NOTES:
1. See In re Bay State Brewing Co., 117 USPQ2d 1958, 1962 n.6 (TTAB 2016) (consent agreement, in addition to supporting registration, provides the public with notice of the basis on which the USPTO allowed registration). Compare Holmes Oil Co. v. Myers Cruizers of Mena Inc., 101 USPQ2d 1148, 1150 n.4 (TTAB 2011) (parties’ confidential consent agreement referred to in general terms). See also 37 C.F.R § 2.126(c) regarding the filing of confidential submissions.
2. Changes to Implement Provisions of the Trademark Modernization Act of 2020, 86 FR 64300, 64313 (Nov. 17, 2021) (USPTO response to Comment 12).