710.01 Evidence Supporting Refusal or Requirement
In general, the examining attorney must always support his or her action with relevant evidence and ensure that proper citations to the evidence are made in the Office action.
All evidence that the examining attorney relies on in making a requirement or refusal must be placed in the record and copies must be sent to the applicant.
In appropriate cases, the examining attorney may also present evidence that may appear contrary to the USPTO’s position, with an appropriate explanation as to why this evidence was not considered controlling. In some cases, this may foreclose objections from an applicant and present a more complete picture if there is an appeal. Cf. In re Federated Dep't Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987) (noting that the examining attorney is not obligated to provide every story found in a LexisNexis® search though it may present a more complete picture).
710.01(a) Evidence from Research Database
If evidence is obtained from a research database, the record should include an indication of the specific search that was conducted. The record should indicate the libraries and/or files that were searched and the results. If the examining attorney does not review all of the documents located in a search, the record should indicate the number of documents that were reviewed. The search summary should be made a part of the record and will provide most of this information. Information not indicated on the search summary, such as the number of documents viewed, should be stated in narrative in the Office action. The Office action should include a citation to the research service, indicating the service, the library and the file searched, and the date of the search (e.g., "LEXIS®, News and Business, All News (Sept. 25, 2009)").
When evidence is obtained from a research database, the examining attorney does not have to make all stories of record. It is sufficient to include only a portion of the search results, as long as that portion is a representative sample of what the entire search revealed. In re Vaughan Furniture Co., 24 USPQ2d 1068, 1069 n.2 (TTAB 1992) . See also In re Federated Dep't Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987).
However, for evidence obtained from the LexisNexis® surname database, the evidence must show the total number of occurrences of a particular surname that were found in the database. This database is a regularly updated nationwide directory of mobile phone numbers and other numbers (such as VOIP numbers) and the names with which they are associated. See TMEP §1211.02(b)(i) regarding telephone directory listings, §1211.02(b)(ii) regarding LexisNexis® research databases, and §1211.01(b)(iii) regarding the U.S. Census’s surname database as evidence of the surname significance of a term.
See TMEP §710.01(b) regarding evidence originating in foreign publications.
710.01(b) Internet Evidence
Articles obtained from the Internet, websites, and blog posts are "admissible as evidence of information available to the consuming public and of the way in which a term is being used or would be understood by the relevant public." In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1157 (TTAB 2019) (citing In re Bayer AG, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007)); see also In re Geller, 751 F.3d 1355, 1360, 110 USPQ2d 1867, 1870 (Fed. Cir. 2014); In re Reed Elsevier Props. Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007). Examining attorneys are not required to establish that evidence from online sources or websites have significant web traffic. In re Wal-Mart Stores, Inc., 129 USPQ2d at 1156-57. However, the probative value of certain Internet evidence may warrant additional scrutiny and be challenged with evidence that may impact the probative value the Board accords the source. Id. at 1157 (citing In re Country Music Ass’n Inc., 100 USPQ2d 1824, 1829-30 (TTAB 2011))..
Providing only a website address or hyperlink to Internet materials is insufficient to make such materials of record. In re ADCO Indus.-Techs., L.P., 2020 USPQ2d 53786, at *2 (TTAB 2020) (citing In re Olin Corp., 124 USPQ2d 1327, 1332 n.15 (TTAB 2017)); In re Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013) . Because of the transitory nature of Internet postings, websites referenced only by address or hyperlinks may be modified or deleted at a later date without notification. See Safer v. OMS Invs. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010) . Thus, information identified only by website address or hyperlink would not be subject to verification by the applicant to corroborate or refute. See In re HSB Solomon Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB 2012).
Therefore, when making Internet evidence part of the record, the examining attorney or applicant must provide (1) an image of the webpage, (2) the date the evidence was downloaded or accessed from the Internet, and (3) the complete URL address. See In re ADCO Indus.-Techs., L.P., 2020 USPQ2d 53786, at *2 (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)); In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018); see also Safer Inc.94 USPQ2d at 1039. If either party fails to satisfy the requirements for submission of Internet evidence, and the other party objects, the Internet material will not be considered. See In re Mueller Sports Med., Inc., 126 USPQ2d at 1587. If, on the other hand, a party fails to satisfy these requirements, and the other party fails to object, the Trademark Trial and Appeal Board (Board) may consider the Internet evidence for whatever probative value it may have. See id.at 1586.
The examining attorney must object to improperly submitted Internet evidence in the first Office action following the submission of the evidence and advise the applicant how to properly make the Internet evidence of record. See In re Mueller Sports Med., Inc., 126 USPQ2d at 1587. Otherwise, the Board may consider the objection to be waived. Id.; cf. In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1594 n.40 (TTAB 2014) (objection waived where examining attorney, in a continuing refusal, failed to advise applicant that mere listing of third-party registrations was insufficient to make them of record). In addition, if the applicant appeals, the examining attorney’s appeal brief must indicate that the objection to the improperly submitted evidence is continued, or else the Board has the discretion to consider it. See In re I-Coat Co., 126 USPQ2d at 1733 (citing In re Mueller Sports Med., Inc., 126 USPQ2d at 1587).
Evidence from a "cached" or stored website may be admissible if properly made of record and there is no evidence indicating that the website is inactive. See In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1593-95 (TTAB 2018) (finding cached website evidence was not probative in view of applicant’s evidence that the website was no longer active).
A list of Internet search results generally has little probative value, because such a list does not show the context in which the term is used on the listed web pages. In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) ; see In re Bayer AG, 488 F.3d at 967, 82 USPQ2d at 1833 (deeming Google® search results that provided very little context of the use of ASPIRINA to be "of little value in assessing the consumer public perception of the ASPIRINA mark"); In re Tea & Sympathy, Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008) (finding truncated Google® search results entitled to little probative weight without additional evidence of how the searched term is used); In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006) (rejecting an applicant’s attempt to show weakness of a term in a mark through citation to a large number of Google® "hits" because the "hits" lacked sufficient context); In re King Koil Licensing Co., 79 USPQ2d 1048, 1050 (TTAB 2006) (noting that web page links "do little to show the context within which a term is used on the web page that could be accessed by the link"); In re Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB 2002) (finding the print-out of Internet search results to be of little probative value due to insufficient text to determine the nature of the information or its relevance); In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060 (TTAB 2002) (noting that "[e]vidence of actual use of a phrase by a website has far greater probative value" than a search summary). The examining attorney should attach copies of the website pages that show how the term is actually used.
Information originating on foreign websites or in foreign news publications that are accessible to the U.S. public (i.e., written in the English language or have an optional English-language version) may be relevant to discern U.S. consumer impression of a proposed mark. In re Bayer AG, 488 F.3d at 969, 82 USPQ2d 1828 at 1835; In re Well Living Lab Inc., 122 USPQ2d 1777, 1781 n.10 (TTAB 2017) . The probative value of such evidence will vary depending upon the context and the manner in which the term is used. See In re Canine Caviar Pet Foods, 126 USPQ2d at 1596.
In Bayer, NEXIS® evidence that originated in foreign publications was deemed to be of "some probative value with respect to prospective consumer perception in the United States," the Court noting "the growing availability and use of the internet as a resource for news, medical research results, and general medical information." 488 F.3d at 969, 82 USPQ2d at 1835. In Remacle, the Board held evidence from a website in Great Britain admissible, noting that:
[I]t is reasonable to assume that professionals in medicine, engineering, computers, telecommunications and many other fields are likely to utilize all available resources, regardless of country of origin or medium. Further, the Internet is a resource that is widely available to these same professionals and to the general public in the United States. Particularly in the case before us, involving sophisticated medical technology, it is reasonable to consider a relevant article from an Internet web site, in English, about medical research in another country, Great Britain in this case, because that research is likely to be of interest worldwide regardless of its country of origin.
66 USPQ2d at 1224 n.5.
In King Koil, the Board gave only "limited probative value" to the contents of websites of commercial entities outside the United States showing use of the term "breathable" in relation to mattresses and bedding, stating that:
[C]onsumers may visit foreign web sites for informational purposes, even if they are more likely to focus on internet retailers that can easily ship items or make items available for pick up in a store in a location convenient to the purchaser. That would appear especially likely in a case such as this, where the item in question, a mattress, is large and potentially more expensive to ship than a smaller item. Accordingly, while we do not discount entirely the impact of foreign web sites in this case, we find them of much more limited probative value than in the Remacle case.
79 USPQ2d at 1050; see also In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (finding that articles from non-U.S. publications have some probative value because the case concerns the perception of the relevant consumers, i.e., the general U.S. public, regarding the identity of a celebrity who lives and travels outside of the United States); In re Cell Therapeutics, Inc., 67 USPQ2d 1795, 1797–98 (TTAB 2003) (relying on NEXIS® items from foreign wire services to support a refusal and distinguishing earlier decisions that accorded such evidence little probative value given the sophisticated public and the widespread use of personal computers that increase access to such sources).
With respect to evidence taken from the online Wikipedia® encyclopedia, at www.wikipedia.org, the Board has noted that "[t]here are inherent problems regarding the reliability of Wikipedia entries because Wikipedia is a collaborative website that permits anyone to edit the entries," and has stated as follows:
[T]he Board will consider evidence taken from Wikipedia so long as the non-offering party has an opportunity to rebut that evidence by submitting other evidence that may call into question the accuracy of the particular Wikipedia information. Our consideration of Wikipedia evidence is with the recognition of the limitations inherent with Wikipedia (e.g., that anyone can edit it and submit intentionally false or erroneous information) . . .
As a collaborative online encyclopedia, Wikipedia is a secondary source of information or a compilation based on other sources. As recommended by the editors of Wikipedia, the information in a particular article should be corroborated. The better practice with respect to Wikipedia evidence is to corroborate the information with other reliable sources, including Wikipedia’s sources.
In re IP Carrier Consulting Grp., 84 USPQ2d 1028, 1032–33 (TTAB 2007); see also In re i.am.symbolic, llc, 127 USPQ2d 1627, 1633 n.6 (TTAB 2018) (stating that the Board will consider Wikipedia® excerpts submitted with a denial of a request for reconsideration because an applicant has an opportunity to rebut entry of the excerpts by requesting remand to submit rebutting evidence).
Given its inherent limitations, any information obtained from Wikipedia® should be treated as having limited probative value. If the examining attorney relies upon Wikipedia® evidence and makes it of record, then additional supportive and corroborative evidence from other sources should also be made of record, especially when issuing final actions.
The examining attorney should check applicant’s own website for information about the goods or services. See In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006) , where the Board rejected applicant’s argument that it was improper for the examining attorney to rely on evidence obtained from applicant’s website when the application was based on intent to use and no specimens were yet required. According to the Board, "[T]he fact that applicant has filed an intent-to-use application does not limit the examining attorney’s evidentiary options, nor does it shield an applicant from producing evidence that it may have in its possession." Id.; see also In re Reed Elsevier Props. Inc., 482 F.3d 1376, 1379, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007); In re Ameritox Ltd., 101 USPQ2d 1081, 1084–85 (TTAB 2011) .
Electronic-only documents are considered to be original publications, and scanned images are considered to be copies of original publications. Internet Usage Policy Notice, 64 Fed. Reg. 33056, 33063 (June 21, 1999).
See TBMP §1208.03 for further information regarding the use of material obtained through the Internet in ex parte proceedings.
710.01(c) Record Must Be Complete Prior to Appeal
The record in any application should be complete prior to appeal. 37 C.F.R. §2.142(d); TMEP §1501.02(b); see In re ADCO Indus.-Techs., L.P., 2020 USPQ2d 53786, at *2 (TTAB 2020). Accordingly, if an examining attorney or applicant attempts to introduce new evidence at the time of the appeal, the new evidence will generally be excluded from the record. TBMP §1207.01; see, e.g., In re tapio GmbH, 2020 USPQ2d 11387, at *3-4 (TTAB 2020); In re Medline Indus., Inc., 2020 USPQ2d 10237, at *2 (TTAB 2020). However, the Trademark Trial and Appeal Board may consider evidence submitted after appeal, despite its untimeliness, if the non-offering party: (1) does not object to the evidence; and (2) discusses the evidence or otherwise treats it as being of record. See TBMP §1207.03 and cases cited therein. Therefore, examining attorneys and applicants should, as appropriate: (a) object to the new evidence but not substantively discuss it; (b) object to the new evidence and, while preserving the objection, discuss why it in any event does not support the offeror’s position; or (c) consider the new evidence.
Whenever an examining attorney objects to evidence submitted by an applicant, the objection should be raised as soon as possible and continued in the examining attorney’s brief, or the Board may consider the objection to be waived. See In re City of Hous., 101 USPQ2d 1534, 1536 (TTAB (2012) (citing In re Broyhill Furniture Indus., Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001)), aff’d, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013) .
If the applicant or examining attorney wishes to introduce new evidence at the time of or during appeal, the party seeking to introduce the new evidence may request the Board to suspend the appeal and remand the case. 37 C.F.R. §2.142(d). See TBMP §1207.02 and TMEP §1504.05 regarding requests for remand.
The Board may take judicial notice of dictionary definitions, including "online dictionaries that exist in printed format or regular fixed editions," which were not made of record prior to appeal, and may do so either sua sponte or upon request of the applicant or examining attorney. Pierce-Arrow Soc’y v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *4 n.23 (TTAB 2019) (citing Univ. of Notre Dame du Lac v. J.C. Goumet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006)); See TBMP §1208.04. However, the better practice is to ensure that the relevant material is included in the record prior to appeal. When requesting that the Board take judicial notice of a dictionary definition, the examining attorney must provide sufficient information regarding the source of the definition (e.g., a copy of the title page of the dictionary). See In re Gregory, 70 USPQ2d 1792, 1793 (TTAB 2004) (declining to take judicial notice of dictionary definitions submitted with examining attorney’s appeal brief, because neither the photocopied pages nor the examining attorney’s brief specified the dictionaries from which the copies were made); TBMP §1208.04.
The Board will generally not take judicial notice of online dictionaries not available in a printed format unless the online dictionary is the equivalent of a print reference work, has regular fixed editions, or is otherwise readily available and verifiable. TBMP §1208.04; see In re Jimmy Moore LLC, 119 USPQ2d 1764, 1768 (TTAB2016) (taking judicial notice of definitions from an online dictionary that was also available in printed form, but refusing to take judicial notice of definitions from commercial websites, Wikipedia, and other unidentified online sources); In re Red Bull GmbH, 78 USPQ2d at 1378 (taking judicial notice of an Encarta Dictionary definition, because the dictionary was a widely known reference, readily available in specifically denoted editions via the Internet and CD-ROM and thus was "the electronic equivalent of a print publication," which could be easily verified; refusing to take judicial notice of a definition from www.wordsmyth.net, because the source of the definition was not identified on the submitted website excerpt or by the examining attorney and thus could not be verified); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB2002) (taking judicial notice of online dictionary that was also available in printed form); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1476 (TTAB 1999) (declining to take judicial notice of online dictionary that did not exist in printed format, because the source was unknown and the Board was unsure whether the dictionary was readily available or reliable, stating that the evidence should have been made of record prior to appeal, so applicant would have the opportunity to check the reliability of the evidence and offer rebuttal evidence).