1211.02(b)(ii) LexisNexis® Research Database Evidence
Excerpted articles from the LexisNexis® research database are one type of credible evidence of the surname significance of a term. There is no requirement that the examining attorney make of record every story found in a LexisNexis® search. However, the examining attorney is presumed to make the best case possible. See In re Federated Dep't Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987); see also In re Monotype Corp. PLC, 14 USPQ2d 1070, 1071 (TTAB 1989) ("We must conclude that, because the Examining Attorney is presumed to have made the best case possible, the 46 stories not made of record [the search yielded 48 stories] do not support the position that CALISTO is a surname and, indeed, show that CALISTO has non surname meanings.") An Office action that includes any evidence obtained from a research database should include a citation to the research service and a clear record of the specific search that was conducted, indicating the libraries or files that were searched and the date of the search (e.g., LexisNexis®, News and Business, All News, Aug. 5, 2007). The electronic record or printout summarizing the search should be made a part of the record. Relevant information not included on the summary, such as the number of documents viewed, should be stated in narrative in the Office action. See TMEP §710.01(a).
See TMEP §710.01(b) regarding evidence originating in foreign publications.