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  • Burden of Proof: Mindful that the PTO has limited facilities for acquiring evidence--it cannot, for example, be expected to conduct a survey of the marketplace or obtain consumer affidavits -- we conclude that the evidence of record here is sufficient to establish a prima facie case of deceptiveness.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • The Federal Circuit, our primary reviewing court, has commented on the evidentiary burden of the examining attorney and the limited ability of the examining attorney to gather evidence in support of a refusal. In In re Budge Mfg., Inc., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988), the Federal Circuit considered whether LOVEE LAMB is deceptive when used for "automobile seat covers." The Federal Circuit stated: "In ex parte prosecution, the burden is initially on the Patent and Trademark Office (PTO) to put forth sufficient evidence that the mark for which registration is sought meets the … criteria of unregistrability. Mindful that the PTO has limited facilities for acquiring evidence--it cannot, for example, be expected to conduct a survey of the marketplace or obtain consumer affidavits -- we conclude that the evidence of record here is sufficient to establish a prima facie case of deceptiveness. Id. at 1260-1261."
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • Similarly, in In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985), the Federal Circuit considered whether the use of "Durango" for tobacco was primarily geographically deceptively misdescriptive under Section 2(e)(2) [currently, Section 2(e)(3)]. The applicant argued that the USPTO failed to make a prima facie case that there was a goods/place association between tobacco and the geographic name "Durango" because the USPTO produced no evidence that the public would actually make the asserted association. The Federal Circuit disagreed that the USPTO, as part of its prima facie case, must establish an actual goods/place association, reasoning that the examining attorney "does not have means" to undertake the research, such as a marketing survey, necessary to prove that the public would actually make the goods/place association asserted. The Federal Circuit consequently required the USPTO only to establish "a reasonable predicate for its conclusion that the public would be likely to make the particular goods/place association on which it relies," and not that the public would actually make the asserted association. Id. at 868.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • Also, in In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629 (Fed. Cir. 2003), a case involving the configuration of a container cap for adhesives and bonding agents, the Federal Circuit found that to establish a prima facie case of no inherent distinctiveness (which rested on whether the public in the relevant market would view the applicant's cap as a source-identifier), the USPTO was not required to show that other caps were actually being advertised, sold or used in the relevant market, but that evidence of the existence of other design patents for container caps was sufficient. The Federal Circuit acknowledged that it was "mindful of the reality that the PTO is an agency of limited resources" and stated that "we look only for substantial evidence, or more than a scintilla of evidence, in support of the PTO's prima facie case." Id. at 1632.
  • The evidentiary record in an application must be complete prior to the filing of the notice of appeal.
    • In re Fitch IBCA, Inc., Serial No. 75/628,232, (TTAB 2002).
      • FOOTNOTE 2 "Applicant submitted evidence for the first time with its brief. The Examining Attorney's objection to consideration of that evidence because it is untimely is well taken and the evidence has not been considered. Applicant did not comply with the established rule that the evidentiary record in an application must be complete prior to the filing of the notice of appeal. See, 37 CFR 2.142(d); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)."
  • The TTAB does not accord evidentiary value or consideration to any factual assertions made by applicant in the brief which are not supported by competent evidence in the record.
    • Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004).
      • Likewise, we accord no evidentiary value or consideration to any factual assertions made by applicant in the brief which are not supported by competent evidence in the record. See TBMP 704.06(b)(2d ed. 1st rev. March 2004) and cases cited therein.
  • An admission that material was attached to the Notice of Opposition does not stand as an admission of the authenticity of the material.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • FOOTNOTE 4 "Applicant also admitted that copies of certain materials were attached to the Notice of Opposition. This does not, however, stand as an admission of the authenticity of any of these materials and thus, the materials did not, by virtue of the admission, become part of the record. See 37 C.F.R. §2.122(c) and discussion in TBMP Section 705.01."
  • Additional evidence filed after appeal normally will be given no consideration.
    • In re Classic Media, Inc., Serial No. 78278235, (TTAB 2006).
      • Additional evidence filed after appeal normally will be given no consideration. TBMP §1207.01 (2d ed. rev. 2004).
  • A party may not cite decisions which are not marked as citable precedent.
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • FOOTNOTE 7 "Applicant, in its argument, also includes reference to a noncitable decision. Applicant is advised that it may not cite to decisions that have not been marked as citable precedent. In re A La Vielle Russie Inc., 60 USPQ2d 1895, 1897 n.2 (TTAB 2001)."
  • The TTAB is unlikely to consider evidence which was not properly authenticated.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • Accordingly, this evidence has not been properly authenticated, and we have given it no consideration. See Raccioppi v. Apogee, Inc., 47 USPQ2d 1368 (TTAB 1998).
  • Documentary materials attached as exhibits to applicant's brief cannot be considered where they were not make of record during trial.
    • Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004).
      • However, opposer is correct in arguing that the documentary materials attached as exhibits to applicant's brief cannot be considered, because they were not made of record during trial. (See supra at footnote 8.) See TBMP §704.05(b)(2d ed. 1st rev. March 2004) and cases cited therein.
  • While the TTAB does not want to be inundated with cumulative information, a party must remember that the TTAB decides cases based on the evidence of record and not what the parties argue the facts are. Therefore, if an applicant has relevant information, it is incumbent on applicant to make this information of record.
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • Finally, we address the applicant's comments that it did not want to inundate the board "with printouts of hundreds of pages of registrations." Certainly, the board does not wish to be inundated with hundreds of pages of cumulative information. However, applicant loses sight of the fact that ultimately we must decide the case based on the evidence of record and not on what either the examining attorney or applicant argues the facts are. As we cautioned in In re Planalytics Inc., 70 USPQ2d 1453, 1457 (TTAB 2004) (footnote omitted): "If an applicant has relevant information, it is incumbent on applicant to make this information of record. A mere reference to a website does not make the information of record. In order to review the facts in this case, there should be evidence in the record."
  • The TTAB will not consider evidence for the first time with a reply brief; but may consider evidence submitted for the first time in the main brief.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • We disagree with applicant's reading of TBMP Section 1207.03 and cases cited therein. Nothing in that section of the Board's manual, or in any of the cases discussed therein, contemplates submission of evidence, for the first time, with a reply brief. Accordingly, we have not further considered the TARR printouts of registration records submitted by applicant with her reply brief. In contrast, we have considered the two TARR printouts submitted for the first time with applicant's main brief, as their submission falls within the circumstances covered by TBMP Section 1207.03 (2d ed., rev. 2004).
  • The TTAB may consider declarations submitted by applicant for the first time with its appeal brief where the examining attorney has not objected to this evidence as untimely and also addressed the evidence on the merits in his brief.
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • FOOTENOTE 5 "These declarations were submitted by applicant for the first time with its appeal brief. However, because the examining attorney has not objected to this evidence as untimely, and moreover has addressed the evidence on the merits in his brief, we have treated the evidence as properly of record. See In re Nuclear Research Corp., 16 USPQ2d 1316, 1317, n. 2 (TTAB 1990)."
  • Evidentiary objections should concern the admissibility of the evidence, rather than its probative value.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • Applicant's other objections to this evidence address the probative value thereof rather than its admissibility and, thus, these objections are considered as argument, as appropriate, in the analysis of the refusal, supra.
  • The TTAB may grant a motion to strike materials submitted where were not authenticated or self-authenticating.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • We grant applicant's motion to strike to the extent that we have not considered the materials submitted with opposer's notice of reliance that are not self-authenticating (and therefore are not acceptable as printed publications under Trademark Rule 2.122(e)), or that have not been authenticated by opposer's witness.
  • The TTAB does not ordinarily strike testimony taken in accordance with the applicable rules on the basis of substantive objections; rather, such objections are considered by the Board in its evaluation of the probative value of the testimony at final hearing.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • Before turning to the merits of the case, we note that respondent interposed numerous objections during the taking of petitioner's testimony depositions in this case and asks that we deem inadmissible all testimony to which it objected. The Board does not ordinarily strike testimony taken in accordance with the applicable rules on the basis of substantive objections; rather, such objections are considered by the Board in its evaluation of the probative value of the testimony at final hearing. TBMP Section 707.03(c). In this case, we have not stricken any testimony offered by petitioner. But, in reading petitioner's evidence, we have considered the trial testimony in light of respondent's objections. Where we have relied on testimony to which respondent objected, it should be apparent to the parties that we have deemed the material both admissible and probative to the extent indicated in the opinion.
  • Materials that qualify as printed publications under Trademark Rule 2.122(e), 37 C.F.R. §2.122(e), including electronic versions thereof, are considered self-authenticating.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007)
      • Materials which qualify as printed publications under Trademark Rule 2.122(e), 37 C.F.R. §2.122(e), including electronic versions thereof, are considered self-authenticating. See TBMP §704.08 (2d ed. rev. 2004). See also Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).
  • The TTAB relaxes some of the technical requirements for evidence in an ex parte proceeding.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007)
      • The Board takes a more permissive stance with respect to the admissibility and probative value of evidence in an ex parte proceeding than it does in inter partes proceedings. See TBMP §1208 (2d ed. rev. 2004). Thus, the Board tolerates some relaxation of the technical requirements for evidence in an ex parte case. Id.
  • The TTAB is not likely to take judicial notice of a definition quoted on a wesbsite but lacking a source.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • We do not, however, take judicial notice of definition no. 7, which is excerpted from www.wordsmyth.net. The source of the definition quoted at the website is not identified on the submitted website excerpt or by the examining attorney and, thus, we can not verify it or determine its reliability. See In re Total Quality Group Inc., supra.
  • Internet printouts are not self-authenticating but may be admissible as evidence in connection with a summary judgment motion, if competent and relevant, provided they are properly authenticated by an affidavit or declaration.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007)
      • Internet printouts which are not the electronic equivalents of printed publications do not fall within the parameters of Trademark Rule 2.122(e). Raccioppi v. Apogee, Inc., 47 USPQ2d 1368 (TTAB 1998). However, like other materials which are not self-authenticating, Internet materials may be admissible as evidence in connection with a summary judgment motion, if competent and relevant, provided they are properly authenticated by an affidavit or declaration pursuant to Fed. R. Civ. P. 56(e). See TBMP §528.05(e) (2d ed. rev. 2004).
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007)
      • We disagree with petitioner's position that Raccioppi does not require that a declaration or affidavit be submitted in order to authenticate Internet material. In Raccioppi, id. at 1370, the Board clearly stated that "[t]he element of self-authentication which is essential to qualification under Rule 2.122(e) cannot be presumed to be capable of being satisfied by Internet printouts." Thus, the Board considered, "… as a question of first impression, whether print-outs of articles downloaded from the Internet, which have been introduced by means of a declaration of the person who accessed this information on the Internet, constitute admissible evidence for purposes of summary judgment." The Board made it clear in Raccioppi that it was only because this material was submitted by declaration that the Internet printouts were found admissible.
  • Considering applicant's objection to the additional definitions obtained via the Internet, we find the Board's decisions in In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999) and In re Cyberfinancial.net, Inc., 65 USPQ2d 1789 (TTAB 2002), to be particularly relevant.3
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • FOOTNOTE 3 "Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998) [in connection with a motion for summary judgment, printouts of articles downloaded from the Internet may be authenticated and introduced as evidence by means of a declaration of the person who downloaded the information] is a Board decision discussing authentication in an inter partes proceeding of certain evidence obtained via the Internet."
  • Even with the relaxed evidentiary standards in an ex parte proceeding, search result summaries from search engines (i.e. Google) are of limited probative value.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007)
      • However, as shown by Fitch, supra, even with the relaxed evidentiary standards in an ex parte proceeding, search result summaries from search engines such as Google are of limited probative value. See also TBMP §1208.03 (2d ed. rev. 2004).
  • The Internet Archive, and its "Wayback Machine," and its database of revisions to web pages is not self-authenticating.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007)
      • As to applicant's argument that the Internet Archive makes the holding in Raccioppi obsolete, the database itself is not self-authenticating and there is no reason to treat its existence as authenticating the pages in its historical record. We note that even petitioner characterizes the "Wayback Machine" as showing "each date on which a website has undergone a significant change." (Emphasis added.) What may be insignificant to the archivers for the "Wayback Machine" may have significance from the standpoint of evidentiary value in a trademark proceeding. Thus, changes to a website, or in this case the excerpts taken from a website that appear in a Google search summary, may not appear in the Internet Archive. Moreover, in recent cases that have discussed or dealt with evidence from the Internet Archive, supporting declarations accompanied the evidence. See, for example, St. Luke's Cataract and Laser Institute, P.A. v. Sanderson, 70 Fed. R. Evid. Serv. 174 No. 8:06-CV-223, 2006 WL 1320242 (M.D.Fla. May 12, 2006) ("Plaintiff requests that printouts of pages from the laserspecialist.com and the lasereyelid.com websites taken from www.archive.org (hereinafter referred to as the "Internet Archive") and supporting declarations be admitted to show how the sites have appeared at various times since 2000."). See also Novak v. Tucows, Inc., No. 06-CV-1909, 2007 WL 922306 (E.D.N.Y. March 26, 2007), in which even a declaration was found to be insufficient to authenticate Internet printouts, including exhibits from the Internet Archive and its "Wayback Machine" feature, because the declarant lacked the requisite personal knowledge to establish that the documents were what he proclaimed them to be.
  • Authentication of Internet evidence applies to both parties.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007)
      • Petitioner also asserts that the standard for authentication of Internet evidence set forth in Raccioppi applies solely to the moving party. However, we see no logical support for this position. Rule 56(e) of the Federal Rules of Civil Procedure provides that if the party moving for summary judgment has supported its motion with affidavits or other submissions which if unopposed would establish its right to judgment, the nonmoving party may not rest on mere denials or conclusory assertions, but rather must proffer countering evidence, by affidavit or as otherwise provided in Fed. R. Civ. P. 56, showing that there is a genuine factual dispute for trial. See Fed. R. Civ. P. 56(e); Wright, Miller & Kane, 10B Fed. Prac. & Pro. Civ.3d §2739 (2007); and TBMP §528.01 (2d ed. rev. 2004). Rule 56 refers specifically to the pleadings, depositions, answers to interrogatories, admissions and affidavits. Because Board trial practice differs somewhat from a proceeding in a Federal Court, evidence that could be filed under a notice of reliance, see Trademark Rule 2.122, may also be submitted in support of or in opposition to a motion for summary judgment. Rule 56 clearly requires that the countering evidence submitted by the nonmoving party be by affidavit or as otherwise provided by the rule.
  • A motion to strike may be granted as to non-authenticated Internet search summaries and excerpts from on-line catalogs.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007)
      • Petitioner's Google "hit list" search summary and excerpts from on-line catalogs are neither self-authenticating nor otherwise authenticated. Accordingly, respondent's motion to strike is granted in part as to these materials.
  • Internet evidence/articles are generally admissible and may be considered for purposes of evaluating a trademark.
    • In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • On the other hand, Internet evidence is generally admissible and may be considered for purposes of evaluating a trademark. In re Bayer Aktiengesellschaft, ___ 3rd ___, ___ USPQ 2d ___ (Fed. Cir. 2007). See also TMEP §710.01(b) (4th ed. 2005)("Articles downloaded from the Internet are admissible as evidence of information available to the general public, and of the way in which a term is being used by the public. However the weight given to this evidence must be carefully evaluated because the source is often unknown").
  • Information retrieved from the Internet is probative to the extent that it is information available to the public, and of the way in which a term is used by the public, but the weight given to such evidence must be carefully evaluated because the source is often unknown. (Internet/Wikipedia)
    • In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • This raises the issue as to whether Internet sources in general, and Wikipedia in particular, is admissible evidence. There are inherent problems regarding the reliability of Wikipedia entries because Wikipedia is a collaborative website that permits anyone to edit the entries. See in re Total Quality Group, Inc., 51 UPSQ2d 1474, 1475-1476 (TTAB 1999) (information retrieved from the Internet is probative to the extent that it is information available to the public, and of the way in which a term is used by the public, but the weight given to such evidence must be carefully evaluated because the source is often unknown).
    • In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • In an analysis of the reliability of Internet sources in support of an expert opinion, the district court in the Southern District of New York determined that "the information provided there [Wikipedia] is not so inherently unreliable as to render inadmissible any opinion that references it" especially when the opposing party may "apply the tools of the adversary system to his report." Alfa Corp. v. OAO Alfa Bank, 475 F.Supp.2d 357, 362 (S.D.N.Y. 2007).
  • The 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.
    • In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • In view of the foregoing, the 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). In this case, applicant submitted the Wikipedia information for "Internet Service Provider" in its requests for reconsideration, and the examining attorney had an opportunity to rebut that evidence if she believed that the entry was incorrect. Accordingly, we have considered the Wikipedia entry.
  • 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 Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • 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 this case, there is other evidence of which we can take judicial notice to corroborate applicant's Wikipedia evidence.
  • The TTAB will consider Internet evidence attached to office actions and not objected to by a party.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • As to evidence relied on by the examining attorney in her two office actions, we note that the majority of it consists of printouts of Internet web pages, denominated as numbered attachments to each action.4 Applicant did not object to any of these attachments. In fact, in her main brief, on pages 7-9, applicant addressed the examining attorney's Internet evidence. Accordingly, we have considered all the Internet evidence put into the record by the examining attorney.5
  • The TTAB may consider web pages made of record where the URL and date were subsequently provided at the oral hearing.
    • In re White, Serial No. 78146926, (TTAB 2006).
      • Before discussing the record, we must first consider the evidentiary objections. Applicant objected to certain of the web pages made of record by the examining attorney on the ground that the "URL line" and date were not provided. We note that the examining attorney has furnished this information, and at the oral hearing, applicant's attorney withdrew the objections. Thus, we deem the web pages at issue to be properly of record.
  • The TTAB does not take judicial notice of registration records located in the Office, and such registrations may not be made of record simply by submitting a listing of them.
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • The Board does not take judicial notice of registration records located in the Office, and such registrations may not be made of record simply by submitting a listing of them. See TBMP §704.03(b)(1)(B).
    • In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400 and 77632406, (TTAB 2010).
      • Applicant has listed a large number of third-party registrations for marks that consist of the first name and the surname of the six immediate past presidents. The Trademark Examining Attorney has correctly objected to applicant's mere listing of registrations for the above referenced marks, which clearly have not been made of record.
  • To make a third-party registration of record, a party should submit a copy of the registration, either a copy of the paper USPTO record or a copy taken from the electronic records of the Office.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • To make a third-party registration of record, a copy of the registration, either a copy of the paper USPTO record, or a copy taken from the electronic records of the Office, should be submitted. In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456 n. 2 (TTAB 1998). See TBMP § 1208.02 (2d ed. rev. 2004).
  • The registrability of prior third-party marks does not control the TTAB's determination of registerability of a case currently before the TTAB.
    • Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006).
      • The coexistence (for a limited period) of the two third-party registrations submitted by respondent does not persuade us to reach a different result herein. Respondent submitted printouts of Registration No. 1,588,037 for the mark RAD RODS for "toy vehicles" and Registration No. 1,398,672 for the mark RAD RIG for a "toy vehicle" from the USPTO's electronic records. Apart from the fact that the printouts show that each registration has been canceled, it is well settled that the determination of registrability of those particular marks by the trademark examining attorneys cannot control our decision in the case now before us. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
    • In re Classic Media, Inc., Serial No. 78278235, (TTAB 2006).
      • We hasten to add that the two third-party registrations, even if considered, would not compel a different result in this case. In re Nett Designs Inc., 236 F.3d 1339, 57 USPq2d 1564, 1566 (Fed. Cir. 2001) ["Even if prior registrations had some characteristics similar to [applicant's] application, the PTO's allowance of such prior registrations does not bind the Board or this court."]; and In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001).
    • In re American Institute of Certified Public Accountants, Serial No. 75/626,097, (TTAB 2002).
      • Applicant has submitted information regarding registrations for marks for other standardized tests or examinations as well as reprints of web pages concerning these tests or examinations and entities that provide courses or materials for preparing for these examinations. We also do not find these materials particularly useful. See In re Nett Designs Inc., 236 F.3d 1399, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) ("Needless to say, this court encourages the PTO to achieve a uniform standard for assessing registrability of marks. Nonetheless, the Board… must assess each mark on the record of public perception submitted with the application.")
    • In re Grass GmbH, Serial No. 76544861, (TTAB 2006).
      • FOOTNOTE 3 "Additionally, applicant points to the numerous third-party registrations it has made of record, in which the marks include a descriptive term next to an Arabic numeral and in which the registrant was allowed to disclaim the descriptive matter and the numeral separately. The Trademark Examining Attorney responds that the Board is not bound by the mistakes or decisions made by Trademark Examining Attorneys in other cases. We agree that these third-party registrations are of little probative value in this case. See In re Medical Disposables Co., supra; see generally In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001)."
    • In re First Draft, Inc., Serial No. 76420605, (TTAB 2005).
      • We disagree with applicant's characterization that the files establish an Office practice contrary to the refusal advanced in this case, and, in any event, most of the limited number of registrations submitted by applicant are distinguishable from the present case.10 FOOTNOTE 10 "The fact that a few third-party registrations have been allowed over a long period of time hardly establishes current Office policy. There may very well be as many or more abandoned applications wherein registration was refused on similar records. The Board's responsibility is to focus on the record at hand. We do not think it a useful exercise for applicants and examining attorneys to spend inordinate resources combing through large numbers of registration or abandoned application files when application of the law to the record at hand should suffice."
  • A list of third-party registrations does not make the registrations themselves of record.
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • First, we must decide cases on the basis of the record, and as even applicant appears to admit, a list of registrations does not make the registrations of record. In re Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974).
  • A list of trademark registrations which does not show the goods/services covered by the registrations has little probative value since the TTAB cannot compare the goods/services between the applicant's mark and the registrations.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • The list does not show the goods and/or services covered by the registrations. Therefore, it has extremely limited probative value, since we cannot determine whether the marks are for goods and services similar to those of applicant and registrant. In this connection, even complete copies of third-party registrations covering goods and/or services far removed from the goods of applicant and registrant would be irrelevant to the present likelihood of confusion analysis. See Conde Nast Publications, Inc. v. American Greetings Corp., 329 F.2d 1012, 141 USPQ 249, 252 (CCPA 1964).
  • Copies of third-party applications have no evidentiary value other than showing the applications were filed and may also be used, like dictionary definitions, to show that a term has significance for goods in a particular field.
    • The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007)
      • Moreover, even copies of third-party applications have no evidentiary value other than to show that the applications were filed. Although third-party registrations may be used in the same manner as dictionary definitions, to show that a term has a significance for goods in a particular field, see Mead Johnson & Company v. Peter Eckes, 195 USPQ 187 (TTAB 1977), mere lists do not show what the particular goods are for which the marks have been registered.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • Third-party applications have no evidentiary value other than to show that they were filed. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1699 (TTAB 1992).
  • Submitting lists of third-party registrations and applications is not an acceptable way to make such registrations and applications of record.
    • The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007)
      • We note that much of applicant's evidence consists of search results that were obtained from USPTO records, and consist only of lists of third-party applications and registrations for marks that contain HOG or HAWG, including some marks that do not contain these words as separate elements, but only letter strings, e.g., ORTHOGLIDE. Submitting lists of third-party registrations and applications is not an acceptable way to make such registrations and applications of record. In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
    • In re Classic Media, Inc., Serial No. 78278235, (TTAB 2006).
      • Further, applicant merely referred to the registrations in its brief; no copies of the registrations were submitted and a mere listing is insufficient to make such evidence of record. In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n. 2 (TTAB 1998).
    • In re Classic Media, Inc., Serial No. 78278235, (TTAB 2006).
      • Accordingly, the third-party registrations were neither timely nor properly made of record, and they have not been considered in our determination of mere descriptiveness.
  • Third-party applications are evidence only of the fact that they were filed; they have no other probative value. However, the TTAB may consider third-party applications published for opposition in limited circumstances.
    • Interpayment Services Limited, and Travelex Global and Financial Services Ltd. v. Docters & Thiede, Opposition No. 119,852, (TTAB 2003).
      • FOOTNOTE 6 "Applicant has also submitted third-party applications featuring marks which were published for opposition. The Board has long held that third-party applications are evidence only of the fact that they were filed; they have no other probative value. In re Juleigh Jeans Sportswear, Inc., 24 USPQ2d 1694 (TTAB 1992). However, in determining this motion for summary judgment, we have considered the third-party applications featuring marks which were published for opposition as evidence of marks incorporating currency symbols which the USPTO has considered registrable. So considered, the third–party applications featuring marks published for opposition suffer from the same infirmities as the third-party registrations. In that they differ greatly from applicant's euro symbol in the commercial impression created, they fail to raise a genuine issue of material fact."
  • Third-party registrations do not prove that the marks are in use or that the public is familiar with them.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • In any event, with respect to third-party registrations, such evidence, even if properly of record, is of little probative value in deciding likelihood of confusion because they do not prove that the marks are in use or that the public is familiar with them. The Conde Naste Publications, Inc. v. Miss Quality, Inc., 507 F.2d 1404, 184 USPQ 422, 424-25 (CCPA 1975).
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • Third, even if third-party registrations were properly made of record, they are not evidence that the mark MVP is in use. AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) ("The existence of [third-party] registrations is not evidence of what happens in the market place or that customers are familiar with them").
  • Third-party registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, but can serve to suggest that the goods/services listed are of a kind which may emanate from a single source.
    • In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007)
      • As the examining attorney has explained, third-party registrations which individually cover a number of different items and which are based on use in commerce may serve to suggest that the listed goods are of a type that may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB 1988), aff'd in unpublished opinion 88-1444 (Fed. Cir. 11/14/1988).
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • Although these third-party registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless have probative value to the extent that they serve to suggest that the goods or services listed therein are of a kind which may emanate from a single source under a single mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
  • Third-party trademark registrations do not prove use of those marks, but the registrations are sufficient to raise a genuine issue of material fact to the extent of use by third parties of marks containing the at-issue term in combination with other matter for similar services.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • In connection with the issue of the strength of opposer's marks, we note that applicant has submitted printouts from the Trademark Electronic Search System (TESS) showing registrations of marks containing the term "DRIVE" in combination with other matter for services related to automobile financing and sales. Opposer contends that these printouts are not probative of the matter at hand. While it is true that these registrations do not prove third-party trademark use of the marks, the registrations are sufficient to raise a genuine issue of material fact to the extent of use by third parties of marks containing the term "DRIVE" in combination with other matter for similar services. See Lloyd's Food Products, Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).
  • Third-party registrations are not evidence of what happens in the marketplace or that the public is familiar with the use of the subject marks.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • In his brief, applicant refers at length to the number and nature of third-party marks incorporating the term "Quest" that have been registered in connection with similar goods and services. However, as noted by opposer, none of these registrations was correctly submitted into the record and hence cannot be considered. TBMP § 704.03(b)(1)(B) (2d ed. 2004); 37 CFR § 2.122; In re Shapely, Inc., 231 USPO 72, 75 (TTAB 1986).

        Furthermore, even if they had been properly included in the record, opposer correctly argues that inasmuch as there is no evidence that any of these third-party registrations are for marks that are actually in use, the probative value of such registrations is still very limited. It is well settled that third-party registrations are not evidence of what happens in the marketplace or that the public is familiar with the use of the subject marks. See National Aeronautics & Space Administration v. Record Chemical Co., 185 USPQ 563, 567 (TTAB 1975). Thus, they do not provide evidence that the marks have been used to such an extent that customers have become accustomed to seeing the marks and hence have learned to distinguish them based on minor differences between the marks. See Smith Brothers Manufacturing Co. v. Stone Manufacturing Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); and In re Hub Distributing, Inc., 218 USPQ 284, 285-86 (TTAB 1983). "Consequently, the third-party registrations, even if they were of record, would not cause us to conclude that opposer's mark is weak or entitled to a limited scope of protection."

  • Third-party registrations based on Section 44 or Section 66 of the trademark Act do not show the relatedness of services because the registrations are not based on use in commerce.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • With its reply brief applicant argues that the third party registrations made of record by the Examining Attorney to show the relatedness of the services should not be given any weight. To the extent that the registrations are based on Section 44 or Section 66 of the Trademark Act, applicant's objection is well-taken. Because these registrations are not based on use in commerce they have no probative value in showing the relatedness of the services, and they have not been considered. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
  • Third-party registrations which are for services different from those identified in the application and the cited registration are not probative.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • Nor do we find probative those third-party registrations which are for services that are different from those identified in the application and the cited registration.
  • Third-party registrations based on use in commerce and include the services that are identified in both applicant's application and the cited registration can be considered and given appropriate evidentiary weight.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • However, as discussed infra, several of the registrations are based on use in commerce and include the services that are identified in both applicant's application and the cited registration. Those registrations have been considered, and given appropriate evidentiary weight.
  • Third party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry.
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • Second, while "third party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry," In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006), without these registrations or some other evidence, we cannot conclude that the term "MVP" is highly suggestive as the term "Essentials" was held to be in the Knight Textile case.
  • Third-party use of a mark for non-related goods/services is of no use to establish the strength of the disputed mark.
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • Fourth, even if there were evidence that MVP is used for non-related goods or services, this would hardly establish by itself that it is weak for casino services. SBS Products Inc. v. Sterling Plastic & Rubber Products Inc., 8 USPQ2d 1147, 1149 n.6 (TTAB 1988) ("[E]ven if evidence of such third-party use were submitted, it would be of no aid to respondent herein where the third-party usage was for goods unrelated to either petitioner's skin care products or respondent's stuffing box sealant").
  • A wire service report is of little probative value where there is nothing in the record to indicate that the wire service report was distributed because the TTAB cannot determine the public's exposure to the term used in the report.
    • In re Classic Media, Inc., Serial No. 78278235, (TTAB 2006).
      • FOOTNOTE 2 "One of the printouts is taken from United Press International, a wire service. There is nothing in the record to indicate that this wire report was distributed; thus, it is entitled to only minimal probative value in that we cannot judge the public's exposure to the use of the phrase in the wire report. See In re Cell Therapeutics Inc., 67 USPQ2d 1795, 1798 (TTAB 2003)."
  • NEXIS excerpts from wire services are generally accorded limited probative value, since it cannot be assumed that they have been seen in a newspaper or periodical.
    • In re American Institute of Certified Public Accountants, Serial No. 75/626,097, (TTAB 2002).
      • In fact, some of these excerpts, including some appearing on wire services rather than in newspapers or periodicals2, appear to be news releases produced by applicant. FOOTNOTE 2 "NEXIS excerpts from wire services are generally accorded limited probative value, since it cannot be assumed that they have been seen in a newspaper or periodical. In re Patent and Trademark Services Inc., 49 USPQ2d 1537, 1538 fn 2 (TTAB 1998)."
  • While newswire stories do not have the same probative value as stories appearing in magazines and newspapers, such that said newswire stories have decidedly more probative value than they did prior to the increasing use of the Internet.
    • In re Cell Therapeutics, Inc., Serial No. 75/313,795, (TTAB 2003).
      • In short, while we are not saying that newswire stories are of the same probative value as are stories appearing in magazines and newspapers, we think that the situation has changed such that said newswire stories have decidedly more probative value than they did when this Board decided the Professional Tennis Council and Appetito Provisions cases.
  • Absent evidence of the extent of circulation, foreign publications or wire services cannot be used to show the significance in this country of the designation at issue.
    • In re Patent & Trademark Services, Inc., Serial No. 75/009,424, (TTAB 1998)
      • FOOTNOTE 2 "Some of the story excerpts included by the Examining Attorney appear to be from foreign publications or wire services. We have given these stories little consideration. In the absence of evidence of the extent of circulation, if any, of the foreign publications in the United States, they cannot serve to show the significance in this country of the designation at issue. See In re BDH Two Inc., 26 USPQ2d 1556 (TTAB 1993), and In re Men's International Professional Tennis Council, 1 USPQ2d 1917 (TTAB 1986)…"
  • Wire service stories are competent to show how their authors used particular terms, but they are of limited probative value since they are circulated primarily to newspapers and news journals and, consequently, are not assumed to have influenced the attitudes of prospective customers among the general public.
    • In re Patent & Trademark Services, Inc., Serial No. 75/009,424, (TTAB 1998)
      • FOOTNOTE 2"…Wire service stories are competent to show how their authors used particular terms, but they are of limited probative value since they are circulated primarily to newspapers and news journals and, consequently, are not assumed to have influenced the attitudes of prospective customers among the general public. See In re Men's International Professional Tennis Council, supra, and In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992)."
  • With the increase of the public obtaining news via the Internet, it is now more likely that newswire stories will reach the public.
    • In re Cell Therapeutics, Inc., Serial No. 75/313,795, (TTAB 2003).
      • Taking a broader view, we note that the Professional Tennis Council and Appetito Provisions cases were decided well over fifteen years ago. This Board would be blind if it did not recognize that during the past fifteen years, there has been a dramatic change in the way Americans receive their news.
    • In re Cell Therapeutics, Inc., Serial No. 75/313,795, (TTAB 2003).
      • Put quite simply, we believe that communications have changed dramatically during the past fifteen years such that by now it is by no means uncommon for even ordinary consumers (much less sophisticated doctors and researchers) to receive news not only via tangible newspapers and magazines, but also electronically through personal computers. Thus, it is much more likely that newswire stories will reach the public because they can be picked up and "broadcast" on the Internet.
  • Commercial trademark search reports are not credible evidence of the existence of the applications/registrations listed in the reports.
    • In re Dos Padres, Inc., Serial No. 75/075,701, (TTAB 1998)
      • FOOTNOTE 2 "Applicant submitted the approximately 45 listings from a commercial trademark search report. These types of search reports are not credible evidence of the existence of the applications and/or registrations listed in such reports. See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992). However, the Examining Attorney did not object to the evidence, and in fact, treated it as being of record. Accordingly, we have considered that material for whatever probative value it may have. See In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990)."
  • The Board may take judicial notice of dictionary definitions.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • The Board may take judicial notice of dictionary definitions. See University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982); aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
    • In re Aerospace Optics, Inc., Serial No. 76171288, (TTAB 2006).
      • FOOTNOTE 2 "Merriam-Webster's Collegiate Dictionary (10th ed. 1999). University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) (Board may take judicial notice of dictionary definitions)."
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • FOOTNOTE 3: Merriam-Webster OnLine Dictionary (from merriam-webster.com). The Board may take judicial notice of dictionary definitions, including online dictionaries, which exist in printed format. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002). See also University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). There is no indication that this version of the dictionary exists in printed format. In any event, as will be discussed later in this opinion, this evidence is not persuasive.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • As a general rule, the Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also TBMP §704.12. The Board has a long history of taking judicial notice of definitions excerpted from print dictionaries and submitted after appeal.
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • Footnote 4 "...The Board may take judicial notice of dictionary definitions. See University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • FOOTNOTE 3 "The Board may take judicial notice of dictionary definitions. See University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • The Board may take judicial notice of dictionary definitions. See University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 217 USPQ 505 (Fed. Cir. 1983).
    • In re The W.W. Henry Company, L.P., Serial No. 78401595, (TTAB 2007).
      • FOOTNOTE 3 "The Board may take judicial notice of dictionary definitions. See University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • Finally, we have taken judicial notice of certain dictionary definitions. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
    • In re The Place, Inc., Serial No. 76436826, (TTAB 2005).
      • FOOTNOTE 2 "The Board may take judicial notice of dictionary definitions. See University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); TBMP §704.12(a)(2d ed. rev. 2004)."
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • FOOTNOTE 5 "University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) (Board may take judicial notice of dictionary definitions)."
    • In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006).
      • FOOTNOTE 4 "The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
    • In re Vanilla Gorilla, L.P., Serial No. 76561135, (TTAB 2006).
      • FOOTNOTE 4 "We take judicial notice of this definition. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
    • In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006).
      • FOOTNOTE 10 "This excerpt was one of ten excerpts retrieved by the examining attorney from a search for "e server" on the Nexis database. Five of such excerpts are from newswires and four discuss applicant or applicant's predecessor in interest. Newswire stories do not have the same probative value as stories appearing in newspapers and magazines. In re Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003)."
  • The TTAB will consider dictionary definitions and publications relied upon by the examining attorney.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • We also have considered the dictionary definition of "Apache" and the Tiller Research publication on which the examining attorney relied.
  • As to the Examining Attorney's request that we take judicial notice of a dictionary definition, namely, a definition of the phrase "intellectual property," it is well settled that dictionary listings comprise matter of which we can take judicial notice. See In re John Harvey & Sons Ltd., 32 USPQ2d 1451 (TTAB 1994), and In re Analog Devices, Inc., 6 USPQ2d 1808 (TTAB 1988), affirmed in opinion not for publication, 10 USPQ2d 1879 (Fed. Cir. 1989).
      • In re Patent & Trademark Services, Inc., Serial No. 75/009,424, (TTAB 1998)
  • The Board may properly take judicial notice of entries in dictionaries and other standard reference works.
    • In re Broyhill Furniture Industries, Inc., Serial No. 75/473,959, (TTAB 2001).
      • FOOTNOTE 4 "It is settled that the Board may properly take judicial notice of entries in dictionaries and other standard reference works. See, e.g., In re Hartop & Brandes, 311 F.2d 249, 135 USPQ 419, 423 at n. 6 (CCPA 1962); Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953); and University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
  • Case Finding: The TTAB is reluctant to take judicial notice of an online dictionary definition which does not exist in printed format and not submitted until after commencement of appeal.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • In Total Quality Group, the Board stated its reluctance to take judicial notice of an online dictionary definition that the examining attorney specifically acknowledged did not exist in printed format and which was not submitted until after commencement of the appeal.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • Considering applicant's objections to the definitions obtained electronically and submitted by the examining attorney with her brief, we deny applicant's objection to definition nos. 2 - 6 (above) and take judicial notice thereof because the sources of the definitions are clearly identified even though the excerpts were downloaded from the noted Internet websites.4 As in Cyberfinancial.net, the sources of definition nos. 2, 3, 5 and 6 are readily verifiable and reliable, widely-available print publications. The source of definition no. 4 is the Encarta Dictionary and, while it may not be available as a print publication, it is a widely-known reference that is readily available in specifically denoted editions via the Internet and CD-Rom. Thus, it is the electronic equivalent of a print publication and applicant may easily verify the excerpt. For this reason, we find it is acceptable material for judicial notice even though the excerpt was submitted with the examining attorney's appeal brief.
  • Evidence of the relevant public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other publications.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • Evidence of the relevant public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other publications. See In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
  • The TTAB may give less weight to dictionary definitions published by a party than definitions in dictionaries published by a non-interested party.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • We note, however, that some of these definitions are from a dictionary published by applicant and have not been given the same weight as dictionaries published by non-interested parties, in terms of our consideration, infra, of how applicant's mark will be perceived.
  • Case Finding: The TTAB took judicial notice of definitions attached to the examining attorney's appeal brief, expressly acknowledging that one of the definitions was from an online resource and noting that the dictionary is available in book form.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • In Cyberfinancial.net, the Board took judicial notice of definitions attached to the examining attorney's appeal brief, expressly acknowledging that one of the definitions was from an online resource and noting that "as indicated in the Web page printout, the Cambridge International Dictionary of English is available in book form."
  • Dictionaries can be strong evidence of the commonly understood meaning of a term.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • Dictionaries can be strong evidence of the commonly understood meaning of a term. See Pilates Inc. v. Current Concepts Inc., 120 F.Supp.2d 286, 57 USPQ2d 1174 (S.D.N.Y. 2000) ("Dictionary definitions, while not conclusive, reflect the general public's perception of a mark's meaning."); and Murphy Door Bed Co. v. Interior Sleep Systems, Inc., 874 F.2d 95, 10 USPQ2d 1748, 1752 (2d Cir. 1989) (dictionary definitions "are influential because they reflect the general public's perception of a mark's meaning and implication"); and McCarthy, supra at §12.13 ("dictionary definitions are relevant and sometimes persuasive in determining public usage.")
  • Third-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • Third-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) ("Said third party registrations are of use only if they tend to demonstrate that a mark or a portion thereof is suggestive or descriptive of certain goods and hence is entitled to a narrow scope of protection. Used in this limited manner, ‘third party registrations are similar to dictionaries showing how language is generally used.'") (Internal citation omitted.)
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • "Such third party registrations show the sense in which the word is used in ordinary parlance and may show that a particular term has descriptive significance as applied to certain goods or services." Institut National Des Appellations D'Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (third-party registrations found to be "persuasive evidence").
  • A definition of a term may be properly made of record during prosecution of the application.
    • In re Styleclick.com Inc., Serial No. 75/459,910, (TTAB 2000).
      • FOOTNOTE 3 "This definition, retrieved from an on-line dictionary, was properly made of record during the prosecution of the application. Cf.: In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999)."
  • The TTAB may consider material that the Examining Attorney did not object to, for whatever probative value it may have.
    • In re Dos Padres, Inc., Serial No. 75/075,701, (TTAB 1998)
      • FOOTNOTE 2 "Applicant submitted the approximately 45 listings from a commercial trademark search report. These types of search reports are not credible evidence of the existence of the applications and/or registrations listed in such reports. See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992). However, the Examining Attorney did not object to the evidence, and in fact, treated it as being of record. Accordingly, we have considered that material for whatever probative value it may have. See In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990)."
  • The TTAB will consider as evidence of record that evidence which the opposing party stipulated that it would not contest its authenticity and also identified the material as "opposer's evidence of record" in its brief.
    • The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007)
      • Opposer has also made of record, by notice of reliance, status and title copies of its pleaded registrations, as set forth infra; dictionary definitions; applicant's responses to certain of opposer's interrogatories and requests for admission; and printouts from the TTAB's TTABVUE website showing an opposition brought by opposer against a third party (an official record pursuant to Trademark Rule 2.122(e)). In addition, opposer has sought to make of record, by notice of reliance, printouts of certain web pages. Such matter is normally not acceptable for a notice of reliance as such web pages do not constitute printed publications under Trademark Rule 2.122(e). See Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998). However, at the testimony deposition of Joseph Newland applicant stipulated that it would not contest the authenticity of these web pages and, in addition, applicant has treated this material as being of record, setting forth in its brief that such materials are part of "opposer's evidence of record." Therefore, we consider applicant to have stipulated to the submission of this evidence, and have treated it as of record. The record also includes evidence submitted by applicant under a notice of reliance, consisting of printed publications, trademark registrations of opposer and of third parties,3 and opposer's responses to certain of applicant's interrogatories and requests for admission. Opposer and applicant have filed trial briefs, and opposer filed a reply brief.

        FOOTNOTES "3 The trademark registrations of opposer were previously made of record by opposer, as was acknowledged by applicant in its notice of reliance. Applicant has submitted copies of the registrations that were printed from the USPTO's electronic records, and which show, in addition to the registration information on the status and title copies submitted by opposer, the design search codes for opposer's non-standard-character-format marks.

  • The parties have stipulated to the admissiblity and authenticity of the "stipulated exhibits" and the exhibits submitted by notice of reliance but not the truth of the matters asserted in such exhibits, nor the competency, relevance or materiality of such evidence. Indeed, printed publications made of record by notice of reliance are admissible and probative only for what they show on their face, not for the truth of the matters contained therein, unless a competent witness has testified to the truth of such matters.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • FOOTNOTE 8 "The parties have stipulated to the admissiblity and authenticity of the "stipulated exhibits" and the exhibits submitted by notice of reliance but not the truth of the matters asserted in such exhibits, nor the competency, relevance or materiality of such evidence. Indeed, printed publications made of record by notice of reliance are admissible and probative only for what they show on their face, not for the truth of the matters contained therein, unless a competent witness has testified to the truth of such matters. See TBMP §704.08 (2d ed. rev. 2004.)"
  • In cases where so much turns on similarities of the marks in visual appearance, survey respondents should be confronted with reproductions of the marks rather than mere descriptions.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • At first glance, we agree with applicant that it appears to be inappropriate to use a telephone survey when there is a visual component to the mark. However, even in a case involving letter marks with significant stylization, the board, although cognizant of numerous defects with the telephone survey, nonetheless did not find that the survey was "virtually meaningless." "We recognize that surveys taken by telephone can be, in appropriate circumstances, inherently reliable. However, in this case, given that the marks at issue are design marks which have a substantially similar appearance, much validity was lost when the survey was conducted by telephone. Throughout this decision, we have pointed to this du Pont factor, that is, the substantial similarity of the marks in appearance, which weighs heavily in our analysis. Given the visual similarities, we question why the survey was done by telephone, other than perhaps, of course, for the obvious reasons of cost and time. Although the questions posed to respondents indicated that Hilson and Society used "quite similar looking logo[s]", that characterization is, in our minds, not enough. Simply put, in cases such as this where so much turns on similarities of the marks in visual appearance, survey respondents should be confronted with reproductions of the marks rather than mere descriptions." Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1438 (TTAB 1993).
  • Despite misgivings, a telephone survey is not necessarily meaningless concerning trademarks involving a color.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • Regarding the objection that a telephone survey should be virtually meaningless, we ultimately agree with opposer that, despite our initial misgivings, a telephone survey involving a color, at least under the facts of this case, is not inherently unreliable. To the extent that opposer's survey is subject to criticism, it could also be criticized as erring on the side of over-inclusion, because any customer who saw any shade of the color purple as indicating a single source for coated abrasives would have responded affirmatively.
  • A study is given little weight where respondents were shown applicant's goods which contained other origin indicating matter than the mark sought to be registered.
    • In re Sunburst Products, Inc., Serial No. 74/300,843, (TTAB 1999).
      • For a variety of reasons, we have given little weight to applicant's ten-year old pilot study. Among other things, the respondents in that study were shown applicant's watch which contained allegedly origin indicating matter other than the asserted mark herein sought to be registered. This reason alone is sufficient to give little weight to the study.
  • Factual statements made in a party's brief on the case can be given no consideration unless they are supported by evidence properly introduced at trial.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Factual statements made in a party's brief on the case can be given no consideration unless they are supported by evidence properly introduced at trial. TBMP § 704.06(b) (2d ed. rev. 2004). Respondent failed to properly introduce any third-party registrations for "IZZY'S" marks. That is to say, respondent's mere reference in his brief to the registrations did not suffice to make them of record. In order to introduce the third-party registrations, respondent should have submitted copies of the registrations. TBMP § 704.07 (2d ed. rev. 2004).
  • Case Finding: Determining that the term "association" generally identifies a non-governmental organization is a fact to be established by competent evidence rather than subject to judicial notice.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • Applicant, in arguing to the contrary, requests that we take judicial notice that "the term association generally, and perhaps exclusively, is used to identify a non-governmental organization" (Reply brief at 2), and thus would not be understood by purchasers to refer to a governmental agency or entity like the U.S. Army. However, we find that such asserted "fact" is not a proper subject of judicial notice but rather is a fact which must be established with competent evidence.
  • A mere spreadsheet listing third party uses of a mark, especially one without corroborating evidence or foundation, does not suggest what effect the use of the mark had in the minds of consumers.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Insofar as the third-party uses are concerned, there is neither testimony nor other evidence corroborating these uses. The underlying foundation of the spreadsheet generated by respondent is completely unknown. In addition, of course, there is no way to know what effect, if any, these purported uses of "IZZY'S" marks may have had in the minds of consumers. Carl Karcher Enterprises Inc. v. Star Restaurants Corp., 35 USPQ2d 1125, 1131 (TTAB 1995).
  • Mere listings of marks and their registration numbers in a supplemental response are of minimal evidentiary value.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • Applicant contends, further, that other registrations owned by applicant contain the word "bull" (e.g., LORD BULL, FUNKY BULL, RED BULL, BULLIONAIRE AND BULLERO) and, like the mark herein, are merely different "plays" on the word "bull." We find this argument unpersuasive. Applicant failed to submit acceptable copies of the registrations for the noted marks; rather, the marks and registration numbers are merely listed in applicant's supplemental response of November 10, 2003. While we have considered the listed marks, this evidence is of minimal value, not only because of the form of the submission, but because these other marks owned by applicant, none of which contain the term "bullshit," are not probative of the alleged scandalousness of the particular term at issue in this case.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • Applicant also contends that the registered third party marks listed in its response of May 17, 2002, containing the term "ass" are examples of changes in "community standards" with respect to what constitutes vulgar terminology since the Tinseltown decision. Again, aside from the improper format in which these third-party registrations were submitted, the Board does not find this evidence to be probative of the alleged scandalousness, or lack thereof, of the term "bullshit." Thus, we also find this argument unpersuasive. In re Nett Designs, Inc., 236 F.2d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). For the same reasons, applicant's mention of two pending applications, now abandoned, for marks including the term "bullshit" are of no probative value.
  • Sales and advertising figures are not determinative of the success of an applicant's attempts to develop distinctiveness.
    • In re Sunburst Products, Inc., Serial No. 74/300,843, (TTAB 1999).
      • Furthermore, the claimed popularity of applicant's watches8 may well result from other features of its products which are deemed superior by the purchasing public. Moreover, applicant's sales and advertising figures are not determinative of the success of applicant's attempts to develop distinctiveness of its asserted color scheme. In re Pingel, supra (sales growth over time does not suffice to establish that purchasing public has come to view petcock configuration as a trademark for motorcycle fuel valves) and In re Semel, 189 USPQ 285 (TTAB 1975).

        FOOTNOTE 8 "We have nothing which indicates the relative size of applicant's sales to those of competitors. See Fossil Inc. v. Fossil Group, 49 USPQ2d 1452, 1457 (TTAB 1998) and General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1227 (TTAB 1992).

  • The fact that competitors sold goods in some respect to applicant's goods is not indicative that competitors copied the particular aspect which applicant claims is its mark.
    • In re Sunburst Products, Inc., Serial No. 74/300,843, (TTAB 1999).
      • Nor does the fact that competitors may have sold "look-alikes" that may resemble applicant's watches in some respects indicate their desires to copy the particular aspect of applicant's watch which applicant now claims to be its mark in this application.
  • Printed publications or broadcast news reports are hearsay if offered to prove the truth of the statements made therein; however, they are acceptable to show that the stories have been circulated to the public.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • Printed publications or broadcast news reports would be hearsay if they were offered to prove the truth of the statements made therein, and to the extent that opposer seeks to rely on them as evidence of the statements made in the articles or broadcasts, applicant's objection is well taken. However, they are acceptable to show that the stories have been circulated to the public. See Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998). Thus, we have considered these documents and the videocassettes only for that purpose.
  • Foreign language articles may have limited probative value for showing recognition of a mark by the relevant consuming publice where the TTAB cannot understand the articles, there is no indication that the articles were circulated in the U.S.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • In addition to the hearsay problem noted above, some of the materials have limited or no probative value. For example, a large number of the articles submitted by opposer are in a foreign language; not only can we not understand the articles, but there is no indication that they (or the English language articles that are from foreign publications) have been circulated in the United States, and therefore they are of no probative value in terms of showing recognition by the relevant consuming public. Hard Rock Cafe Licensing Corp. v. Elsea, supra.
  • Evidence submitted in connection with motions for summary judgment is of record only for consideration of those motions. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial periods.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • FOOTNOTE 14 "The parties should note that the evidence submitted in connection with their motions for summary judgment is of record only for consideration of those motions. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial periods. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983); and American Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB 1981)."
  • On a motion for summary judgment, or a response to a motion, self-authenticating materials may be submitted simply as an attachment or exhibit to the proffering party's brief, without the need for any separate authentication.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007)
      • On a motion for summary judgment, or a response to a motion, such materials may be submitted simply as an attachment or exhibit to the proffering party's brief, without the need for any separate authentication. See TBMP §528.05(e) (2d ed. rev. 2004).
  • The TTAB can take judicial notice of the existence of a classic novel, but not necessarily judicial notice of the contents of the novel.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • The evidence includes excerpts from the novel, Moby Dick. Although we can take judicial notice that the novel itself is a classic, we cannot take judicial notice of the contents of the novel.
  • The interpretation of an agreement must be based, not on the subjective intention of the parties, but on the objective words of their agreement.
    • Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., Opposition No. 121,784, (TTAB 2002).
      • The interpretation of an agreement must be based, not on the subjective intention of the parties, but on the objective words of their agreement. See Novamedix Ltd. v. NDM Acquisition Corp., 49 USPQ2d 161, 1616 (Fed. Cir. 1999).
  • An admission that material was attached to the Notice of Opposition does not stand as an admission of the authenticity of the material.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • FOOTNOTE 4 "Applicant also admitted that copies of certain materials were attached to the Notice of Opposition. This does not, however, stand as an admission of the authenticity of any of these materials and thus, the materials did not, by virtue of the admission, become part of the record. See 37 C.F.R. §2.122(c) and discussion in TBMP Section 705.01."
  • "Evidentiary prejudice" may occur when the defendant's ability to raise a defense has been hampered due to the passing of time.
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • FOOTNOTE 7 ""Evidentiary prejudice" may occur when the defendant's ability to raise a defense has been hampered due to the passing of time (e.g., the loss of documents, unavailability of witnesses, fading memory of witnesses, etc.)."
  • A mere promise to produce unspecified documents at some unspecified later time is an insufficient response.
    • M.C.I. Foods, Inc. v. Brady Bunte, Cancellation No. 92045959 & 92046056, (TTAB 2008)
      • We note at this point: (1) that a mere promise to produce unspecified documents at some unspecified later time is an insufficient response to a Board order compelling production; and (2) by rule, on August 31, 2007, the Board's standard protective order automatically went into effect, and it now governs this proceeding. See, Trademark Rule 2.116(g); "Miscellaneous Changes to Trademark Trial and Appeal Board Rules," 72 Fed. Reg. 42,242 (Aug. 1, 2007).
  • Federal Rule 34(b) states ways in which a requesting party can seek production, including allowing the parties to arrange for production resolve disputes about production prior to the filing of a motion to compel.
    • M.C.I. Foods, Inc. v. Brady Bunte, Cancellation No. 92045959 & 92046056, (TTAB 2008)
      • As to the former point, Federal Rule 34(b) and the comments thereto clearly contemplate various ways in which a requesting party can seek production. Thus, a responding party can arrange for production, and the parties can resolve disputes about production prior to the filing of a motion to compel.
  • After the motion to compel has been granted, production must be made in the manner requested by the inquiring party or as directed by the TTAB.
    • M.C.I. Foods, Inc. v. Brady Bunte, Cancellation No. 92045959 & 92046056, (TTAB 2008)
      • However, after the motion to compel has been granted, production must be made in the manner requested by the inquiring party, unless otherwise directed by the Board in the order granting the motion to compel.
  • Failure to timely serve discovery responses results in waiver of all objections.
    • M.C.I. Foods, Inc. v. Brady Bunte, Cancellation No. 92045959 & 92046056, (TTAB 2008)
      • Because M.C.I. did not timely serve its discovery responses, its objections on the merits have been waived. Fed. R. Civ. P. 33(b)(4); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448, 449 (TTAB 1979).
  • If a party fails to comply with an order relating to discovery, the TTAB may make any appropriate order (ncluding as provided in F.C.R.P. 37(b)(2)), except the TTAB will not hold any person in contempt or award expenses to any party.
    • M.C.I. Foods, Inc. v. Brady Bunte, Cancellation No. 92045959 & 92046056, (TTAB 2008)
      • "If a party fails to comply with an order of the [Board] relating to discovery … the Board may make any appropriate order, including any of the orders provided in Rule 37(b)(2) of the Federal Rules of Civil Procedure, except that the Board will not hold any person in contempt or award expenses to any party." Trademark Rule 2.120(g)(1).
  • Objections going to the merits of a discovery request include those which challenge the request as overly broad, unduly vague and ambiguous, burdensome and oppressive, as seeking non-discoverable information on expert witnesses, or as not calculated to lead to the discovery of admissible evidence. In contrast, claims that information sought by a discovery request is trade secret, business-sensitive or otherwise confidential, is subject to attorney-client or a like privilege, or comprises attorney work product, goes not to the merits of the request but to a characteristic or attribute of the responsive information.
    • M.C.I. Foods, Inc. v. Brady Bunte, Cancellation No. 92045959 & 92046056, (TTAB 2008)
      • The Board has previously distinguished objections on the merits of a discovery request from other types of objections: "Objections going to the merits of a discovery request include those which challenge the request as overly broad, unduly vague and ambiguous, burdensome and oppressive, as seeking non-discoverable information on expert witnesses, or as not calculated to lead to the discovery of admissible evidence. In contrast, claims that information sought by a discovery request is trade secret, business-sensitive or otherwise confidential, is subject to attorney-client or a like privilege, or comprises attorney work product, goes not to the merits of the request but to a characteristic or attribute of the responsive information." No Fear v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000).
  • One must produce a privilege log when asserting that the information requested is protected by the attorney-client privilege or attorney work product doctrine.
    • M.C.I. Foods, Inc. v. Brady Bunte, Cancellation No. 92045959 & 92046056, (TTAB 2008)
      • Specifically, M.C.I. objected to a large number of Bunte's discovery equests asserting that the information requested is protected by the attorney-client privilege or attorney work product doctrine. However, M.C.I. failed to produce the required privilege log. Fed. R. Civ. P. 26(b)(5)(A)(ii); No Fear, 54 USPQ2d at 1556 (such objections require "a particularized explanation of the privilege relied on, and a description of the documents which, without revealing the privileged information, is sufficient to allow the inquiring party to assess the applicability of the privilege").
  • Where a party requested that documents be produced in the office of his counsel, the other party's offer to merely make the requested documents available at an unspecified time and place effectively constituted an objection on the merits.
    • M.C.I. Foods, Inc. v. Brady Bunte, Cancellation No. 92045959 & 92046056, (TTAB 2008)
      • While it may have been acceptable to merely make identified documents available to Bunte when M.C.I. originally responded to Bunte's document requests, it was not acceptable for M.C.I. to offer production in this manner once the Board ordered M.C.I. to respond without objection. Indeed, Bunte requested that documents be produced in the office of his counsel, and M.C.I.'s offer to merely make the requested documents available at an unspecified time and place effectively constituted an objection on the merits, which was prohibited by the Board's orders. No Fear, 54 USPQ2d at 1554 (TTAB 2000) ("it was improper for applicant, after being ordered to provide discovery responses without objection, to have raised an objection regarding place of production.").
  • Case Finding: Because M.C.I. failed to comply with the TTAB's orders, sanctions are appropriate. Bunte requests the sanction of judgment, but under the circumstances presented here we believe that at this point this ultimate sanction would go too far.
    • M.C.I. Foods, Inc. v. Brady Bunte, Cancellation No. 92045959 & 92046056, (TTAB 2008)
      • Because M.C.I. failed to comply with the Board's orders, sanctions are appropriate. Bunte requests the sanction of judgment, but under the circumstances presented here we believe that at this point this ultimate sanction would go too far. See, Elec. Indus. Ass'n v. Potega, 50 USPQ2d 1775, 1777 (TTAB 1999).
  • By operation of Trademark Rule 2.122, the record in this case consists of the pleadings and the file of the involved application.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • By operation of Trademark Rule 2.122, 37 C.F.R. §2.122, the record in this case consists of the pleadings and the file of the involved application.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • By rule, the record includes defendant's application and registration files, plaintiff's registration file, and the pleadings. Trademark Rule 2.122(b), 37 CFR §2.122(b).
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • By operation of Trademark Rule 2.122, 37 CFR §2.122, the record includes the pleadings and the application file for applicant's mark.
    • Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc., Opposition No. 91180789 (TTAB 2008)
      • By rule, the record includes respondent's registration and application files and the pleadings. Trademark Rule 2.122(b), 37 CFR §2.122(b).
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • By rule, the record includes applicant's application files and the pleadings. Trademark Rule 2.122(b), 37 CFR §2.122(b).
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • By rule, the record includes applicant's application file and the pleadings. Trademark Rule 2.122(b), 37 CFR §2.122(b).
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • By operation of Trademark Rule 2.122, 37 CFR §2.122, the record includes the pleadings and the application file for applicant's mark.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • By rule, the evidence of record includes the file of applicant's opposed MITHRIL application. Trademark Rule 2.122(b)(1), 37 C.F.R. §2.122(b)(1).
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • By operation of Trademark Rule 2.122, 37 C.F.R. §2.122, the record in this case consists of the pleadings and the file of the involved registration. In addition, pursuant to the parties' ACR stipulation, the parties' summary judgment submissions are of record.
  • The TTAB may take judicial notice of dictionary definitions.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • FOOTNOTE 13 "The American Heritage Dictionary of the English Language, 4th ed. (2009). The Board may take judicial notice of dictionary definitions. See University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • FOOTNOTE 33 "Tony is "a male given name, form of given name Anthony." The Random House Dictionary of the English Language (Unabridged), p. 1995 (2nd ed. 1987). The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
    • In re Nielsen Business Media, Inc. Serial No. 77223725 and 77223738 (TTAB 2010)
      • FOOTNOTE 3 "The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • We grant the request to take judicial notice. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
  • "Printed publications" that are in "general circulation" may be introduced into evidence through a notice of reliance. Documents which constitute printed publications are essentially self-authenticating, eliminating the usual requirement that evidence be authenticated prior to admission.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • "Printed publications" that are in "general circulation" may be introduced into evidence through a notice of reliance. "Documents which constitute printed publications are essentially self-authenticating, eliminating the usual requirement that evidence be authenticated prior to admission." Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2020 (TTAB 2003).14
  • A "status and title copy" of an issued registration is a copy of the registration, prepared by the USPTO, which indicates the status of the registration and the last recorded owner, according to USPTO Assignment Branch records."
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • FOOTNOTE 11 "A "status and title copy" of an issued registration is a copy of the registration, prepared by the USPTO, which indicates the status of the registration and the last recorded owner, according to USPTO Assignment Branch records."
  • A motion to compel does not need to be filed prior to the close of discovery, but it must be filed prior to the opening of the first testimony period.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • FOOTNOTE 10 "Opposer's Reply Brief, pp. 1-2. A motion to compel does not need to be filed prior to the close of discovery, but it must be filed prior to the opening of the first testimony period. Trademark Rule 2.120(e)(1), 37 CFR §2.120(e)(1). Opposer did not file a motion to compel until after the opening of its testimony period, which was contested by applicant. Opposer's motion to compel was denied as untimely. Board's April 2, 2007 Order."
  • A party does not need to specify the evidence it intends to present in support of its case and does not need to identify its witnesses in advance of trial.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • FOOTNOTE 12 "As indicated supra, applicant did reference Interrogatory No. 28 as one reportedly requiring opposer to "[i]dentify the documents upon which Opposer intends to rely in connection with this opposition proceeding." However, the Board has held that a party does not need to specify the evidence it intends to present in support of its case [Polaroid Corporation v. Opto Specs, Ltd., 181 USPQ 542, 543 (TTAB 1974)] and does not need to identify its witnesses in advance of trial [American Optical Corporation v. Exomet, Inc., 181 USPQ 120, 124 (TTAB 1974]. Accordingly, there is no basis for imposing an estoppel sanction because opposer failed to respond to the referenced interrogatory. Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040, 2041 (TTAB 1989). We add that many rules governing Board inter partes cases were amended November 1, 2007 and the rules now provide for certain disclosures during discovery and certain pre-trial disclosures. The amended rules, however, apply only to cases commenced on or after November 1, 2007."
  • A party may increase the weight the TTAB will give website evidence by submitting testimony and proof of the extent to which a particular website has been viewed.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • A party may increase the weight we will give such website evidence by submitting testimony and proof of the extent to which a particular website has been viewed. Otherwise, it might not have much probative value.
  • A party responding to interrogatories by invoking Fed. R. Civ. P. 33(d) must comply with the following three specific conditions.
    • Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS", Opposition No. 91182207 and 91184467 (TTAB 2010)
      • A party responding to interrogatories by invoking Fed. R. Civ. P. 33(d) must comply with three specific conditions, as the Board explained in No Fear, Inc. v. Rule, 54 USPQ2d 1551 (TTAB 2000), and Jain v. Ramparts, Inc., 49 USPQ2d 1429 (TTAB 1998). First, a responding party "must identify documents which the responding party knows to contain the responsive information, and may not merely agree to provide access to a voluminous collection of records which may contain the responsive information." No Fear, 54 USPQ2d at 1555. Second, "a party may not rely on the option to produce business records unless it can establish that providing written responses would impose a significant burden on the party." Id. Third, "even if the responding party can meet" the above two requirements and "can identify particular documents in which the inquiring party will find its answers, the inquiring party must not be left with any greater burden than the responding party when searching through and inspecting the records." Id.
  • A party served with a request for discovery has a duty to thoroughly search its records for all information properly sought in the request, and to provide such information to the requesting party within the time allowed for responding to the request. A responding party which, due to an incomplete search of its records, provides an incomplete response to a discovery request, may not thereafter rely at trial on information from its records which was properly sought in the discovery request but was not included in the response thereto (provided that the requesting party raises the matter by objecting to the evidence in question) unless the response is supplemented in a timely fashion.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • "A party served with a request for discovery has a duty to thoroughly search its records for all information properly sought in the request, and to provide such information to the requesting party within the time allowed for responding to the request. A responding party which, due to an incomplete search of its records, provides an incomplete response to a discovery request, may not thereafter rely at trial on information from its records which was properly sought in the discovery request but was not included in the response thereto (provided that the requesting party raises the matter by objecting to the evidence in question) unless the response is supplemented in a timely fashion pursuant to Fed. R. Civ. P. 26(e).6" FOOTNOTE 6 "TBMP §408.02."
  • A party's file copies of documents filed with the TTAB are not proper matter for submission under notice of reliance.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • FOOTNOTE 2 "These papers consist of Applicant's Response to Opposer's Statement of Undisputed Material Facts and a declaration of Cabella Calloway Langsam. The papers appear to be opposer's file copies and not copies from the Board file. A party's file copies of documents filed with the Board are not proper matter for submission under notice of reliance. Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 906 n.5 (TTAB 1985). It should also be noted that even if the Board's file copies were submitted as official records under notice of reliance they would not be competent to prove the truth of the matter asserted in those documents, and would merely show that the documents had been filed. However, applicant has not objected to these documents and, in its brief, applicant also relies on the Langsam declaration. In view thereof, we have considered the documents and accorded them appropriate probative value."
  • A person's testimony regarding how third parties answered their telephones is not hearsay because the testimony is about what the party experienced.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Ms. Delegal's testimony regarding how the third parties answered their telephones is not hearsay because Ms. Delegal testified about what she experienced (i.e., she called the telephone number for a restaurant she found on the Internet and she heard the person answer the telephone). This is analogous to a witness testifying that she met a person at the office who introduced himself as Mr. Smith (i.e., the testimony is used to prove that the declarant introduced himself as Mr. Smith, not that the declarant is Mr. Smith). The testimony is not being introduced to prove the truth of the matter stated to the witness (e.g., that the restaurant is named "Anthony's," or the type of restaurant that it is, or the operating hours). Her testimony is acceptable to show that she heard the person answer the telephone as "Anthony's" and, therefore, it is not hearsay. From this testimony, we may infer that the places she called identify themselves as doing business as "Anthony's."
  • A responding party's notice of reliance must be supported by a written statement explaining why the responding party needs to rely on each of the additional interrogatory answers listed in the responding party's notice, failing which the TTAB, in its discretion, may refuse to consider the additional responses.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • In such a case, the responding party's notice of reliance must be supported by a written statement explaining why the responding party needs to rely on each of the additional interrogatory answers listed in the responding party's notice, failing which the Board, in its discretion, may refuse to consider the additional responses. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 704.10 (2d ed. Rev. 2004).
  • A stipulation as to a type of evidence does not, however, preclude petitioner's raising an unrelated objection that evidence should have been produced during discovery.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • FOOTNOTE 6 "Earlier, we stated that we view the introduction by both parties of archival web page evidence as constituting an effective stipulation allowing introduction of such evidence by notice of reliance. Such effective stipulation as to a type of evidence does not, however, preclude petitioner's raising an unrelated objection that the pages introduced by respondent should have been produced during discovery."
  • Although characterized as third-party use, applicant has also included uses by itself and the registrant; but, such evidence does not address the du Pont factor of third-party use.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • Although characterized as third-party use, applicant has also included uses by itself and the registrant. See applicant's description of pages submitted under Tab A. Such evidence does not address the du Pont factor of thirdparty use.
  • Although unsolicited articles appearing in printed publications that mention opposer's mark and the goods and/or services sold thereunder are deemed of record, they merit consideration not for the truth of any matter asserted, but rather for only what the documents show on their face.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • The same result pertains to the unsolicited articles appearing in printed publications that mention opposer's mark and the goods and/or services sold thereunder. We note applicant's corresponding hearsay objections. So as to be clear, although the printed publications are deemed of record, they merit consideration not for the truth of any matter asserted (e.g., that opposer's BLACKBERRY mark is famous), but rather for only what the documents show on their face.
  • An admission obviates the need to prove the admitted allegation of fact, but no more.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • As noted, the pending application was referenced in the notice of opposition and applicant admitted opposer's ownership of such. Such an admission, however, does not dictate that the resulting registration is automatically of record whenever it should issue. An admission obviates the need to prove the admitted allegation of fact, but no more. Thus, had a registration issued prior to trial, applicant's admission would not have excused opposer from the need to make the registration properly of record.12
  • An applicant is not entitled to invoke Fed. R. Civ. P. 33(d) where it has failed to comply with the requirement that the responding party specify the records from which the answer to the interrogatory may be ascertained in sufficient detail to permit the interrogating party to locate and identify, as readily as can the party served, the records from which the answer may be ascertained.
    • Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS", Opposition No. 91182207 and 91184467 (TTAB 2010)
      • Second, the Board finds that applicant is not entitled to invoke Fed. R. Civ. P. 33(d) because it has failed to comply with the requirement that the responding party specify the records from which the answer to the interrogatory may be ascertained in sufficient detail to permit the interrogating party to locate and identify, as readily as can the party served, the records from which the answer may be ascertained.
  • An exception applies to produced documents, for example, to the extent that they are admissible by notice of reliance under the provisions of Trademark Rule 2.122(e), such that parties may introduce printed publications, such as books and periodicals, routinely available to the general public in libraries or of general circulation among relevant members of the public, and official records.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • An exception applies to produced documents, for example, to the extent that they are admissible by notice of reliance under the provisions of Trademark Rule 2.122(e)–"Printed publications and official records," 37 C.F.R. § 2.122(e). This rule provides that the parties may introduce through a notice of reliance printed publications, such as books and periodicals, routinely available to the general public in libraries or of general circulation among relevant members of the public, and official records.
  • Annual reports are not printed publications, and are not proper subject matter for a notice of reliance.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Annual reports are not printed publications, and are not proper subject matter for a notice of reliance. See Jeanne- Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58, 59 n.4 (TTAB 1984).
  • Any relevant or significant change to the information submitted by one party is a matter for rebuttal by the opposing party.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • However, any relevant or significant change to the information submitted by one party is a matter for rebuttal by the opposing party.17 FOOTNOTE 17 "As was true before this decision, if the parties have any question about the public availability of information obtained via the Internet, the better practice would be for the parties to stipulate that documents obtained through the Internet may be introduced into evidence through a notice of reliance for the limited purpose of demonstrating what the documents show on their face."
  • Applicant is entitled to an opportunity to rebut, during its testimony period, any testimony and evidence proffered in support of the allegations in the notice of opposition. This opportunity is foreclosed if opposer withholds the evidence until its rebuttal testimony period, which is intended to be limited to denials, refutations or explanations of applicant's testimony and evidence..
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • "Applicant is entitled to an opportunity to rebut, during its testimony period, any testimony and evidence proffered in support of the allegations in the notice of opposition. This opportunity is foreclosed if opposer withholds the evidence until its rebuttal testimony period, which is intended to be limited to denials, refutations or explanations of applicant's testimony and evidence. (Emphasis added)." General Electric Company v. Graham Magnetics Incorporated, 197 USPQ 690, 692 n.5 (TTAB 1977).
  • Applicant may seek to preclude opposer from relying on information or documents which should have been produced in response to any of applicant's discovery requests, but were not.
    • Byer California v. Clothing for Modern Times Ltd., Opposition No. 91189238 (TTAB 2010)
      • "Turning first to applicant's motion to compel, opposer claimed during the teleconference that it has produced all responsive documents in its possession, and opposer cannot be compelled to produce what it does not have. Accordingly, applicant's motion to compel is hereby DENIED. However, as noted during the teleconference, applicant may seek to preclude opposer from relying on information or documents which should have been produced in response to any of applicant's discovery requests, but were not. See, Panda Travel, Inc. v. Resort Option Enterprises, Inc., __ USPQ2d ___, 2009 WL 5253036 (TTAB Dec. 29, 2009) (granting motion to strike where party provided no reason for failing to serve documents responsive to discovery requests before trial opened); Quality Candy Shoppes/Buddy Squirrel of Wisconsin Inc. v. Grande Foods, 90 USPQ2d 1389, 1392 (TTAB 2007) (same); Presto Products v. Nice-Pak Products, 9 USPQ2d 1895, 1896 n. 5 (TTAB 1988); TBMP § 527.01(e)(2d ed. rev. 2004).7 FOOTNOTE 7 ""Because applicant may seek application of the estoppel sanction, and opposer represented during the teleconference that it has produced all responsive documents in its possession, there is no need for opposer to serve revised discovery responses reflecting its lack of additional responsive documents."""
  • Applications obtained from the Office's Trademark Document Retrieval system qualify as official records and are proper subject matter for a notice of reliance.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Applicant objected to the printouts of several applications, all filed and later abandoned by applicant, attached to opposer's notice of reliance ("#5" filed December 15, 2008). The copies were obtained from the Office's Trademark Document Retrieval (TDR) system. As these copies qualify as official records, they are proper subject matter for a notice of reliance. See TBMP §704.03(b)(2) (2d ed. rev. 2004).
  • By liberalizing the practice under Trademark Rule 2.122(e), we understand that there is an opportunity for abuse.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • By liberalizing the practice under Trademark Rule 2.122(e), we understand that there is an opportunity for abuse (e.g., "needless presentation of cumulative evidence" in violation of Fed. R. Evid. 403).19
  • By requiring written responses to the interrogatories in English, the TTAB is only requiring applicant and its counsel to summarize and explain what they found and why the responses are contained in the documents.
    • Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS", Opposition No. 91182207 and 91184467 (TTAB 2010)
      • Indeed as opposers argue, presumably applicant already has thoroughly reviewed its documents in deciding which ones are responsive to particular interrogatories or portions thereof. By requiring written responses to the interrogatories in English, the Board is only requiring applicant and its counsel to summarize and explain what they found and why the responses are contained in the documents. Applicant has already done part of the work by reviewing documents and determining which are responsive, so it clearly could not be much of a burden for it to summarize what was found and why that information is relevant.
  • Case Finding: Under the circumstances, a USPS form was not an official record.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • Finally, we find that the USPS form (Item #4) is not an official record. It appears to be a form completed by the publisher/mailer of respondent's catalogues. There are no official markings or signature on this form and it is not a record "prepared by a public officer." Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580 n.5 (TTAB 1979).
  • Case Finding: Although applicant may have provided partial written answers to portions of certain interrogatories, doing so does not entitle applicant to provide the rest of the answer in an unidentified document located somewhere in an accompanying document production, particularly where, as here, the documents are in a foreign language.
    • Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS", Opposition No. 91182207 and 91184467 (TTAB 2010)
      • So as to be clear, applicant's supplemental answers that still refer to unidentified documents in Russian are unacceptable. Although applicant may have provided partial written answers to portions of certain interrogatories, doing so does not entitle applicant to provide the rest of the answer in an unidentified document located somewhere in an accompanying document production, particularly where, as here, the documents are in a foreign language. Moreover, the table wherein applicant describes the documents and sets forth their corresponding Bates numbers, while a step in the right direction, still falls far short of fulfilling applicant's duty given that the documents are in Russian.
  • Case Finding: Applicant's burden to ascertain the answers from its business records is far less than opposers' burden of surmising an answer, and that opposers' burden is dramatically increased because the documents are in Russian.
    • Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS", Opposition No. 91182207 and 91184467 (TTAB 2010)
      • The Board finds that applicant's burden to ascertain the answers from its business records is far less than opposers' burden of surmising an answer, and that opposers' burden is dramatically increased because the documents are in Russian. See Jain v. Ramparts Inc., 49 USPQ2d at 1433-34 (several factors considered and balanced in determining the respective burden, including the nature of the responding party's business records and the parties' respective costs of conducting the necessary research into those business records; "the responding party's greater familiarity with its own business records may, in appropriate cases, be the determinative factor in the analysis").
  • Case Finding: Applicant's claim that it is prejudiced by being "deprived of the opportunity" to take a discovery deposition of Mr. Manburg is belied by its failure to take the discovery deposition of Mr. Feldman, who was identified in opposer's initial disclosures. Indeed, applicant provided no explanation for why it would have deposed Mr. Manburg when it did not depose Mr. Feldman.
    • Byer California v. Clothing for Modern Times Ltd., Opposition No. 91189238 (TTAB 2010)
      • Furthermore, applicant's claim that it is prejudiced by being "deprived of the opportunity" to take a discovery deposition of Mr. Manburg is belied by its failure to take the discovery deposition of Mr. Feldman, who was identified in opposer's initial disclosures. Indeed, applicant provided no explanation for why it would have deposed Mr. Manburg when it did not depose Mr. Feldman.
  • Case Finding: As to the exhibits submitted under the notice of reliance, which comprise printed publications dated after July 23, 1999, have limited probative value in that we cannot take the statements contained in the publications as establishing the truth of the matters asserted therein. Nonetheless, they are relevant, at a minimum, to show continued consumer exposure to opposer's asserted mark.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • As to the exhibits submitted under the notice of reliance, the documents in Exhibits Nos. 3-11, which comprise printed publications dated after July 23, 1999, have limited probative value in that we cannot take the statements contained in the publications as establishing the truth of the matters asserted therein. Nonetheless, they are relevant, at a minimum, to show continued consumer exposure to opposer's asserted mark THE CAB CALLOWAY ORCHESTRA in connection with his name.
  • Case Finding: Because opposer no longer claims that it produced the 31,144 pages of documents as kept in the ordinary course of business, we find that opposer's supplemental discovery responses violate the Prior Order. Specifically, opposer was required to "organize and label [its produced documents] to correspond to the categories" in applicant's requests.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • Here, because opposer no longer claims that it produced the 31,144 pages of documents as kept in the ordinary course of business, we find that opposer's supplemental discovery responses violate the Prior Order. Specifically, opposer was required to "organize and label [its produced documents] to correspond to the categories" in applicant's requests. Fed. R. Civ. P. 34(b)(2)(E)(i).
  • Case Finding: Deposition testimony regarding conversations with the third parties introduced to prove the truth of these statements is hearsay.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • As for the remainder of Ms. Delegal's testimony regarding her conversation with the third parties (e.g., the kind of food that each restaurant serves, how long the restaurants have been open), because defendant is seeking to introduce this testimony to prove the truth of these statements, and because Ms. Delegal is not testifying about something she knows or has experienced, it is hearsay.
  • Case Finding: In its appeal brief applicant makes reference to a third-party registration that it states issued after the filing of applicant's request for reconsideration (and notice of appeal), and has submitted with its reply brief a copy of the registration, taken from the USPTO's TARR database. Trademark Rule 2.142(d) provides that the record in an application should be complete prior to the filing of an appeal. If applicant had wished to make this registration of record, it had the opportunity to file a request for remand, and it did not. Further, because the examining attorney did not discuss the registration in his brief, the examining attorney cannot be deemed to have stipulated the evidence into the record. Accordingly, this registration has not been considered. Applicant has objected to third-party registrations submitted by the examining attorney for the first time with his brief. This evidence, too, is untimely, and has not been considered. We add that even if all of the materials submitted with applicant's and the examining attorney's briefs had been properly made of record, they would not affect our decision herein.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • FOOTNOTE 4 "In its appeal brief applicant makes reference to a third-party registration that it states issued after the filing of applicant's request for reconsideration (and notice of appeal), and has submitted with its reply brief a copy of the registration, taken from the USPTO's TARR database. Trademark Rule 2.142(d) provides that the record in an application should be complete prior to the filing of an appeal. If applicant had wished to make this registration of record, it had the opportunity to file a request for remand, and it did not. Further, because the examining attorney did not discuss the registration in his brief, the examining attorney cannot be deemed to have stipulated the evidence into the record. Accordingly, this registration has not been considered. Applicant has objected to third-party registrations submitted by the examining attorney for the first time with his brief. This evidence, too, is untimely, and has not been considered. We add that even if all of the materials submitted with applicant's and the examining attorney's briefs had been properly made of record, they would not affect our decision herein."
  • Case Finding: In its notice of reliance, opposer explains that "the attached exhibits [Nos. 5-40] submitted with this Notice of Reliance are relevant to the similarity of Opposer's and Applicant's respective marks; the issues of the strength and notoriety of Opposer's Marks; the nature of, applications, as well as the channels of trade and customers, for Opposer's goods as set forth in Opposer's registrations." Under the practice identified above, opposer's notice of reliance would not be acceptable because opposer submitted the documents to prove three likelihood of confusion elements, but did not associate each document or group of documents with a specific likelihood of confusion factor. Nevertheless, because opposer's Internet evidence is not needlessly cumulative, we do not out-of-hand reject the notice of reliance.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • In its notice of reliance, opposer explains that "the attached exhibits [Nos. 5-40] submitted with this Notice of Reliance are relevant to the similarity of Opposer's and Applicant's respective marks; the issues of the strength and notoriety of Opposer's Marks; the nature of, applications, as well as the channels of trade and customers, for Opposer's goods as set forth in Opposer's registrations." Under the practice identified above, opposer's notice of reliance would not be acceptable because opposer submitted the documents to prove three likelihood of confusion elements, but did not associate each document or group of documents with a specific likelihood of confusion factor. Nevertheless, because opposer's Internet evidence is not needlessly cumulative, we do not out-of-hand reject the notice of reliance.
  • Case Finding: In this case, even a cursory review of the summaries show that they contain many irrelevant listings, or listings from which we cannot ascertain for what goods or services the term MAX may be used, or which do not appear to be involved in the insurance field. Further, they do not show that third parties actually use MAX as a mark, or how consumers might encounter any such third-party uses.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • In this case, even a cursory review of the summaries show that they contain many irrelevant listings, or listings from which we cannot ascertain for what goods or services the term MAX may be used, or which do not appear to be involved in the insurance field. Further, they do not show that third parties actually use MAX as a mark, or how consumers might encounter any such third-party uses.
  • Case Finding: It does not appear that opposer even identified by Bates number any particular letter, e-mail or other communication.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • Indeed, it does not appear that opposer even identified by Bates number any particular letter, e-mail or other communication.
  • Case Finding: Opposer has objected to the testimony of Mr. Bock concerning what tobacco growers and others told him about Cuban seed tobacco on hearsay grounds. Opposer's objection is sustained as the statements of what tobacco growers and others told Mr. Bock are hearsay. In view thereof, we have not considered this testimony in reaching our decision herein.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • Opposer has objected to the testimony of Mr. Bock concerning what tobacco growers and others told him about Cuban seed tobacco on hearsay grounds. Opposer's objection is sustained as the statements of what tobacco growers and others told Mr. Bock are hearsay. In view thereof, we have not considered this testimony in reaching our decision herein.
  • Case Finding: Opposer's argument that applicant should have informed opposer earlier, and before discovery closed, that it would not be responding to opposer's discovery requests is not well-taken as applicant informed opposer that it would not be responding to opposer's discovery requests, and clearly and specifically explained the reason, i.e. opposer's failure to serve initial disclosures.
    • Dating DNA, LLC v. Imagini Holdings, Ltd., Opposition No. 91185884 and 91191912 (TTAB 2010)
      • Opposer's argument that applicant should have informed opposer earlier, and before discovery closed, that it would not be responding to opposer's discovery requests is not well-taken. Opposer served its discovery requests by mail, and accordingly applicant was allowed 35 days to respond. Within this 35 day period, applicant informed opposer that it would not be responding to opposer's discovery requests, and clearly and specifically explained the reason, i.e. opposer's failure to serve initial disclosures. Cf. Amazon Technologies, Inc. v. Wax, __ USPQ2d ___, TTAB Opposition No. 91187118 (TTAB Nov. 4, 2009) (motion to compel granted where the party refusing to respond to discovery requests failed to specifically cite the failure to serve initial disclosures as the basis for its refusal).
  • Case Finding: That applicant did not inform opposer of its position until two days after discovery closed is not necessarily a function of applicant attempting to "game the system," but instead a function of opposer choosing to serve its discovery requests late in the discovery period.
    • Dating DNA, LLC v. Imagini Holdings, Ltd., Opposition No. 91185884 and 91191912 (TTAB 2010)
      • That applicant did not inform opposer of its position until two days after discovery closed is not necessarily a function of applicant attempting to "game the system," but instead a function of opposer choosing to serve its discovery requests late in the discovery period. See, TBMP § 403.05 (explaining importance of serving discovery requests early enough to allow for time to take follow-up discovery).
  • Case Finding: The inclusion in the amended rule of an option to prove a pleaded registration by relying on USPTO records was not necessary to effect the deletion of the previous requirement for duplicate copies and can therefore only be taken as an indication that the Office meant to liberalize the means for proving a pleaded registration. Accordingly, applicant's objection is overruled, and opposer's pleaded registrations are properly of record.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • The inclusion in the amended rule of an option to prove a pleaded registration by relying on USPTO records was not necessary to effect the deletion of the previous requirement for duplicate copies and can therefore only be taken as an indication that the Office meant to liberalize the means for proving a pleaded registration. Accordingly, applicant's objection is overruled, and opposer's pleaded registrations are properly of record.
  • Case Finding: The issue of whether these are applicant's file copies or copies retrieved from the District Court and Court of Appeals was not specifically addressed by applicant and opposer in their briefing of this case. Therefore, to the extent these briefs are from the court's files and could be considered official records, we address opposer's further objections.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • However, the issue of whether these are applicant's file copies or copies retrieved from the District Court and Court of Appeals was not specifically addressed by applicant and opposer in their briefing of this case. Therefore, to the extent these briefs are from the court's files and could be considered official records, we address opposer's further objections.
  • Case Finding: The registrations confirm the dictionary meaning submitted by applicant, namely, that "max" is defined as a slang term for "maximum."
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • In this case, the registrations confirm the dictionary meaning submitted by applicant, namely, that "max" is defined as a slang term for "maximum."
  • Case Finding: Turning next to applicant's motion to exclude, the motion is not construed as a motion in limine, which the TTAB does not hear. Rather, under the circumstances of this case, applicant's motion is more akin to a motion to quash a notice of testimonial deposition based on insufficient or unreasonable notice.
    • Byer California v. Clothing for Modern Times Ltd., Opposition No. 91189238 (TTAB 2010)
      • Turning next to applicant's motion to exclude, the motion is not construed as a motion in limine, which the Board does not hear. See, Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748, 1750 (TTAB 1995). Rather, under the circumstances of this case, applicant's motion is more akin to a motion to quash a notice of testimonial deposition based on insufficient or unreasonable notice. Cf., Sunrider Corp. v. Raats, 83 USPQ2d 1648 (TTAB 2007) (in case preceding the Board's "new rules" requiring pretrial disclosures, Board denied motion to quash because notice was reasonable).
  • Case Finding: Under such circumstances, applicant will not be heard to complain that opposer's testimony and evidence is not admissible because it was not produced during discovery, but that applicant's testimony and evidence is admissible even though it also was not produced during discovery.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Finally, we note that applicant, like opposer, did not respond to its adversary's discovery requests. In fact, applicant would not consent to extend testimony and reopen discovery to allow the parties to exchange discovery responses, and opposed opposer's motion to compel the production of discovery responses.13 Subsequently, during its testimony period, applicant introduced testimony and evidence that was purportedly requested in opposer's discovery, but not produced by applicant. Under such circumstances, applicant will not be heard to complain that opposer's testimony and evidence is not admissible because it was not produced during discovery, but that applicant's testimony and evidence is admissible even though it also was not produced during discovery. Cf. Miss America Pageant v. Petite Productions Inc., 17 USPQ2d 1067, 1069 (TTAB 1990) ("a party ordinarily will not be heard to contend that a request for discovery is proper when propounded by the party itself but improper when propounded by its adversary") and the cases cited therein.
  • Case Finding: We agree with petitioner that respondent's objections should have been raised promptly and not nearly one year after the evidentiary submissions were received. However, since petitioner did have an opportunity to respond to the objections, and indeed did do so fully, we see no prejudice to petitioner; thus we exercise our discretion and will consider respondent's objections despite any tardiness.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • We agree with petitioner that respondent's objections should have been raised promptly and not nearly one year after the evidentiary submissions were received. However, since petitioner did have an opportunity to respond to the objections, and indeed did do so fully, we see no prejudice to petitioner; thus we exercise our discretion and will consider respondent's objections despite any tardiness.
  • Case Finding: We also reject applicant's argument that the evidence attached to the Trademark Examining Attorney's denial of the request for reconsideration should be disregarded because it does not specifically pertain to the arguments and evidence proffered by applicant in its request for reconsideration. The basic issue raised by applicant in the request for reconsideration was whether confusion is likely, and the Trademark Examining Attorney's evidence attached to the denial of the request for reconsideration addressed that issue. Moreover, as noted above, the request for reconsideration specifically included applicant's arguments that the goods are dissimilar and are marketed to different classes of purchasers. The Internet evidence attached to the Trademark Examining Attorney's denial of the request for reconsideration directly addressed those arguments.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • We also reject applicant's argument that the evidence attached to the Trademark Examining Attorney's denial of the request for reconsideration should be disregarded because it does not specifically pertain to the arguments and evidence proffered by applicant in its request for reconsideration. The basic issue raised by applicant in the request for reconsideration was whether confusion is likely, and the Trademark Examining Attorney's evidence attached to the denial of the request for reconsideration addressed that issue. Moreover, as noted above, the request for reconsideration specifically included applicant's arguments that the goods are dissimilar and are marketed to different classes of purchasers. The Internet evidence attached to the Trademark Examining Attorney's denial of the request for reconsideration directly addressed those arguments.
  • Case Finding: While we agree with opposer that many of applicant's discovery requests are quite broad, opposer's identification of 31,144, or even 17,487, pages of documents in response to a particular discovery request with no index or guide to the tens of thousands of pages is improper.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • While we agree with opposer that many of applicant's discovery requests are quite broad, opposer's identification of 31,144, or even 17,487, pages of documents in response to a particular discovery request with no index or guide to the tens of thousands of pages is improper.
  • Concerning the submission of articles retrieved by a NEXIS search, it is not necessary that all articles be submitted, and the TTAB discourages submissions that are unnecessarily redundant or not probative.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • The Board has frequently stated, in connection with the submission of articles retrieved by a NEXIS search, that it is not necessary that all articles be submitted, and the Board discourages submissions that are unnecessarily redundant or not probative. See TBMP § 1208.01; In re Couture, 60 USPQ2d 1317, 1318 n.2 (TTAB 1999) (many excerpts of articles retrieved by NEXIS search were repetitive or used the searched term for services not related to the applicant's); and In re Lamb-Weston Inc., 54 USPQ2d 1190, 1192 (TTAB 2000) (articles which bear no relationship to applicant's goods are irrelevant).
  • Copies of briefs do not reflect that they were received by the District Court or Court of Appeals and, thus, may be merely applicant's file copies of the documents. As such, they are not properly introduced under a notice of reliance as official records and opposer's objection on that basis is sustained.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • We begin by noting that these briefs do not reflect that they were received by the District Court or Court of Appeals and, thus, may be merely applicant's file copies of the documents. As such, they are not properly introduced under a notice of reliance as official records and opposer's objection on that basis is sustained. See Hard Rock Cafe International (USA) Inc. v Elsea, 56 USPQ2d 1504, 1508 (TTAB 2000). See also Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1849 (Fed. Cir. 1993) (without documentation properly of record Court cannot assess inconsistent positions).
  • Copies of financial reports purportedly submitted by opposer to the U.S. Securities and Exchange Commission do not qualify as official records and, thus, are not proper subject matter for a notice of reliance.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • These documents appear to be nothing more than opposer's file copies of financial reports purportedly submitted by opposer to the U.S. Securities and Exchange Commission (SEC). These file copies do not qualify as official records and, thus, are not proper subject matter for a notice of reliance. See Hard Rock Café International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1508 (TTAB 2000).
  • Despite the general unacceptability of websites from the Wayback Machine website, it may be reviewed where both parties have relied on printouts from the site.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • Petitioner also objected to certain screen-prints that respondent obtained from the archives of the Internet Archive Wayback Machine website (www.web.archive.org). Despite the general unacceptability of this type of evidence,5 we noted earlier that both petitioner and respondent have relied upon screen-prints of Arena Roses' website (snapshots of the site on different dates) taken from this same archival site. FOOTNOTE 5 "Paris Glove of Canada Ltd., 84 USPQ2d at 1858 [the Internet Archive and its "Wayback Machine" feature are not selfauthenticating and there is no reason to treat its existence as authenticating the pages in its historical record]."
  • Discovery is not an opportunity for opposer to harass applicant with subterfuge and delay. As indicated above, the parties are required to cooperate during discovery and each party has a duty to make a good faith effort to satisfy the discovery needs of its adversary.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • Discovery is not an opportunity for opposer to harass applicant with subterfuge and delay. As indicated above, the parties are required to cooperate during discovery and each party has a duty to make a good faith effort to satisfy the discovery needs of its adversary. Under the particular circumstances of this case, there was no excuse for the production of documents after trial began. Accordingly, applicant's motion to strike is granted to the extent that we will only consider opposer's documents served prior to the opening of opposer's testimony period (i.e., Bates Nos. 1-854).
  • Discussion of the dramatic change in the way Americans receive their news.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • "This Board would be blind if it did not recognize that during the past fifteen years, there has been a dramatic change in the way Americans receive their news. In the 1980's personal computers were in their infancy as was the transmission of news stories via the Internet. Put quite simply, we believe that communications have changed dramatically during the past fifteen years such that by now it is by no means uncommon for even ordinary consumers . . . to receive news not only via tangible newspapers and magazines, but also electronically through personal computers. Thus, it is much more likely that newswire stories will reach the public because they can be picked up and "broadcast" on the Internet. In short, while we are not saying that newswire stories are of the same probative value as are stories appearing in magazines and newspapers, we think that the situation has changed such that said newswire stories have decidedly more probative value than they did when this Board decided the Professional Tennis Council and Appetito Provision cases.15" In re Cell Therapeutics Inc., 67 USPQ2d 1795, 1798 (TTAB 2003); see also Research In Motion Limited v. NBOR Corporation, 92 USPQ2d 1926, 1928 (TTAB 2009) (permitting proof of a pleaded registration by the submission of a printout of information from the electronic database records of the USPTO through a notice of reliance although not expressly authorized by Trademark Rule 2.122(d)(2) in an effort to "liberalize the means for proving a pleaded registration"); TMEP §710.01(b) (6th ed. 2009) ("Articles downloaded from the Internet are admissible as evidence of information available to the general public, and of the way in which a term is being used by the public");16 Manual of Patent Examining Procedure (MPEP) §2128 (8th ed. rev. 2008) ("A reference is proven to be a ‘printed publication' ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it'"). FOOTNOTE 15 "In re Men's Inernational Professional Tennis Council, 1 USPQ2d 1917 (TTAB 1986); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987)."
  • Discussion of the impact of internet-based evidence.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • As for the Internet evidence, although applicant submitted well over 300 pages of material, much of it is unhelpful. Many of the pages seem to be duplicative. Others are for marks or for corporate names that use "Maximum" or variations thereof, rather than MAX. See, for example, webpages for "Maximum Corporation," (url illegible); and MAXUM SPECIALTY INSURANCE GROUP, www.mxmsig.com. Many of the listings are for people (presumably insurance agents) who have the given name "Max." See listings in yellowpages.com for "Allstate Insurance Company-Max Ramsey"; "Farmers Insurance Group Max Rodriguez"; and "Allstate Insurance Company-Marcus ‘Max' Pizano." Another grouping of webpages, entitled "Max Car Insurance," appears to be a "List of Agents in Max, North Dakota." www.calculateme.com. Other webpages appear to be in fields that are different from the insurance services that are identified in the cited registration and, for that matter, in applicant's application. For example, there are webpages for Max Value Realty, www.maxvaluere.com; Max Financial Group, www.merchantcircle.com; Agri-Max Financial for funding for agribusiness owners, www.agrifinancial. com; and MaxValue.com for "courses and assistance in decision making analysis for maximizing investments." Thus, this evidence does not show that consumers are so used to seeing MAX marks for the insurance services identified in the cited registration and application that they would look to other elements in the marks to distinguish them. Similarly, webpages for "Maxima Pojistovna, a.s." (url missing) describe an insurance company that is stated to operate in the Baltic states. Although in certain circumstances we have considered websites for foreign entities, see In re International Business Machines Corp., 81 USPQ2d 1677, 1681 n.7 (TTAB 2006), there is no reason to believe that when it comes to insurance services consumers would be aware of a company that is located and operates only in Europe.6
  • Discussion of the third factor - opposer's entirely unexplained "oversight" in not timely serving initial disclosures, and its failure to seek an extension of the discovery period before it closed.
    • Dating DNA, LLC v. Imagini Holdings, Ltd., Opposition No. 91185884 and 91191912 (TTAB 2010)
      • Considering the third factor first, opposer's entirely unexplained "oversight" in not timely serving initial disclosures, and its failure to seek an extension of the discovery period before it closed, were entirely within opposer's reasonable control. Indeed, as applicant points out, after opposer received applicant's initial disclosures, "Opposer should have realized it might have a parallel obligation to send its own Initial Disclosures …." More importantly, opposer does not explain the nature of the "oversight," how it occurred or how it prevented opposer from taking action, and opposer has therefore not established that its failure to serve initial disclosures was outside of its reasonable control. HKG Industries Inc. v. Perma-Pipe Inc., 49 USPQ2d 1156, 1158 (TTAB 1998) (finding that petitioner failed to establish excusable neglect because it did not provide "critical factual information" about its attorney's death, or explain why other attorneys with petitioner's law firm could not have taken action). Perhaps most importantly, opposer's "oversight" or "clerical error" in failing to timely serve initial disclosures does not in any way excuse its failure to seek an extension of the discovery period before that period closed.3 In fact, "opposer neither contends that it was unaware of the discovery and trial deadlines nor that it was in any way prevented from taking action." Atlanta-Fulton County Zoo Inc. v. DePalma, 45 USPQ2d 1858, 1859 (TTAB 1998). Therefore, this factor weighs heavily against a finding of excusable neglect.
  • Documents obtained from the Internet may be admitted into evidence through a notice of reliance in the same manner as a printed publication in general circulation provided the documents identify the date of publication or date accessed and printed, as well as their source.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • The parties stipulated to the admissibility of documents printed from the Internet through a notice of reliance. See also Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031 (TTAB 2010) (documents obtained from the Internet may be admitted into evidence through a notice of reliance in the same manner as a printed publication in general circulation provided the documents identify the date of publication or date accessed and printed, as well as their source).
  • Documents submitted under notice of reliance are generally admissible and probative only for what they show on their face, and not as proof of the matters asserted therein.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • FOOTNOTE 14 "Documents submitted under notice of reliance pursuant to Trademark Rule 2.122(e) are generally admissible and probative only for what they show on their face, and not as proof of the matters asserted therein. Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d at 2020 n.8; Exxon Corp. v. Fill-R-Up Systems, Inc., 182 USPQ 443, 445 (TTAB 1974); TBMP §708 (2nd ed. Rev. 2004) and the cases cited therein."
  • Documents such as websites, advertising , business publications, annual reports, studies or reports prepared for or by a party or non-party, if, and only if, they can be obtained through the Internet as publicly available documents may be introduced by notice of reliance.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • By this change, the Board is expanding the types of documents that may be introduced by notice of reliance to include not only printed publications in general circulation, but also documents such as websites, advertising , business publications, annual reports, studies or reports prepared for or by a party or non-party, if, and only if, they can be obtained through the Internet as publicly available documents.
  • Due to the transitory nature of the Internet, the party proffering information obtained through the Internet runs the risk that the website owner may change the information contained therein.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Due to the transitory nature of the Internet, the party proffering information obtained through the Internet runs the risk that the website owner may change the information contained therein.
  • During discovery, respondent was not obligated to go to the Internet archive to search for documents that might be considered responsive to petitioner's document requests. However, once petitioner went to the Internet archive to obtain evidence for trial, respondent was free to do the same. Therefore, the TTAB has considered the pages respondent submitted into the record from this same website.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • However, we find that this is appropriate rebuttal evidence on respondent's part. This is true notwithstanding his earlier discovery responses to petitioner's request for documents that "he [respondent] has provided all documents which support his claims and assertions in this matter …." During discovery, respondent was not obligated to go to the Internet archive to search for documents that might be considered responsive to petitioner's document requests. However, once petitioner went to the Internet archive to obtain evidence for trial, respondent was free to do the same. Therefore, we have considered the pages respondent submitted into the record from this same website.
  • Electronic-only documents are considered to be original publications.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • FOOTNOTE 16 "Although, the U.S. Patent and Trademark Office's Internet Usage Policy that appeared in the Federal Register at 64 Fed. Reg. 33056 (June 21, 1999) was addressed to use of Internet sources in ex parte examination, the policy noted that "electronic-only documents are considered to be original publications." 64 Fed. Reg. at 33063."
  • Even if a party submits a proper notice of reliance detailing generally the relevance of the material being offered, it may nonetheless be objectionable under Fed.R.Evid. 403 on the ground that it constitutes a "needless presentation of cumulative evidence.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Finally, we emphasize two points regarding this evidence. First, even if a party submits a proper notice of reliance detailing generally the relevance of the material being offered, it may nonetheless be objectionable under Fed.R.Evid. 403 on the ground that it constitutes a "needless presentation of cumulative evidence." Second, the documents have little probative value. They are admissible only to show what has been printed, not the truth of what has been printed.
  • Even if an adverse party fails to lodge a timely objection, the TTAB may sua sponte decline to consider the proffered evidence if the notice of reliance does not specify the relevance of the materials.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Even if an adverse party fails to lodge a timely objection, the Board may sua sponte decline to consider the proffered evidence if the notice of reliance does not specify the relevance of the materials.
  • Evidence attached to a request for reconsideration submitted with a notice of appeal, and evidence attached to a denial of the request for reconsideration, is considered to have been filed prior to appeal, and is part of the application record on appeal.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Thus, evidence attached to a request for reconsideration submitted with a notice of appeal, and evidence attached to a denial of the request for reconsideration, is considered to have been filed prior to appeal, and is part of the application record on appeal. See TBMP §1207.04, and TBMP §1204.
  • Evidence which should constitute part of an opposer's case in chief, but which is made of record during the rebuttal period, is not considered when the applicant objects.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • We agree with applicant that Mr. Murphy's testimony constitutes improper rebuttal. Evidence which should constitute part of an opposer's case in chief, but which is made of record during the rebuttal period, is not considered when the applicant objects.
  • Evidentiary objections may be raised in an appendix to a brief or by way of a separate statement of objections and is a different situation from an objection that is raised during testimony, which if not reiterated iis deemed to have been waived.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • FOOTNOTE 4 "Defendant's Brief, p. 20. Defendant also contends that plaintiff waived the objection because plaintiff did not renew it in its main brief. Id. However, there is no requirement in the rules that plaintiff's objection to Ms. Delegal's testimony be made in its brief rather than by a separate paper. Harjo v. Pro- Football Inc. 45 USPQ2d 1789, 1792 (TTAB 1998); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1326 (TTAB 1992). Evidentiary objections may be raised in an appendix to a brief or by way of a separate statement of objections. TBMP §801.03 (2nd ed. rev. 2004). Plaintiff's objection and motion to strike is an acceptable separate statement of objections. This situation is different from an objection that is raised during testimony but is not reiterated, whether in a brief, a separate motion to strike or separate statement of objections. Such objections that are not reiterated are deemed to have been waived. Here, in addition to the motion to strike, as indicated above, plaintiff renewed its objection in an appendix to its reply brief as plaintiff in the opposition and cancellation and in its opposition brief as defendant in the counterclaim after defendant referenced Ms. Delegal's testimony in its main brief. Accordingly, plaintiff's hearsay objection to Ms. Delegal's testimony is not waived."
  • Except in limited circumstances, which are not present here, an exhibit to a pleading is not evidence on behalf of the party to whose pleading the exhibit is attached unless identified and introduced in evidence as an exhibit during the period for the taking of testimony.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • FOOTNOTE 1 "Applicant attached an exhibit to its answer to the amended notice of opposition. The exhibit is a TESS printout listing third-party registrations of marks that include "BLACK" for goods in Class 9. Except in limited circumstances, which are not present here, an exhibit to a pleading is not evidence on behalf of the party to whose pleading the exhibit is attached unless identified and introduced in evidence as an exhibit during the period for the taking of testimony. Trademark Rule 2.122(c); and TBMP §317 (2d ed. rev. 2004). Accordingly, this exhibit is not part of the record."
  • F.R.C.P. 34 was amended in 1980 because of a concern that litigants were deliberately mixing critical documents with masses of other documents to hide their existence or obscure their significance.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • Indeed, Fed. R. Civ. P. 34 "was amended in 1980 because of a concern that litigants were deliberately mixing critical documents with masses of other documents to hide their existence or obscure their significance." In re Sulfuric Acid Antitrust Litigation, 231 F.R.D. 351, 363 (N.D. Ill. 2005); 1980 Advisory Committee Note to Fed. R. Civ. P. 34(b).
  • F.R.C.P. 34(b) requires parties to "organize and label" documents which are not produced as kept in the ordinary course of business.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • Now, Fed. R. Civ. P. 34(b) requires parties to "organize and label" documents which are not produced as kept in the ordinary course of business. Wagner v. Dryvit Systems, Inc., 208 F.R.D. 606, 610 (D. Neb. 2001) ("Dryvit asserts that directing plaintiffs to find the discovery among volumes of irrelevant information complies with Federal Rules of Civil Procedure. To the contrary, producing large amounts of documents in no apparent order does not comply with a party's obligation under Rule 34"); Stiller v. Arnold, 167 F.R.D. 68, 71 (N.D. Ind. 1996) ("Producing 7,000 pages of documents in no apparent order does not comply with a party's obligation under Rule 34(b)"); see also, Ak-Chin Indian Community v. United States, 85 Fed. Cl. 397 (Ct. Cl. 2009). In this case, opposer's unindexed document production violated Rule 34(b).
  • Given a notice of reliance on a party's response to an interrogatory and the documents identified therein, the party should submit the entire response so what applicant proffered is not misleading.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • A notice of reliance on opposer's response to applicant's interrogatory No. 18 and the documents identified therein. Opposer asserts that applicant did not submit opposer's entire response and that it has therefore submitted the entire response which in fairness should be considered so what applicant proffered is not misleading. Trademark Rule 2.120(j)(4).
  • If a party fails to comply with an order of the TTAB relating to discovery the TTAB may make any appropriate order, including any of the orders provided in Rule 37(b)(2) of the Federal Rules of Civil Procedure.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • "If a party fails to comply with an order of the [Board] relating to discovery … the Board may make any appropriate order, including any of the orders provided in Rule 37(b)(2) of the Federal Rules of Civil Procedure …." Trademark Rule 2.120(g)(1); see also, M.C.I. Foods Inc. v. Bunte, 86 USPQ2d 1044, 1047 (TTAB 2008); HighBeam Marketing LLC v. Highbeam Research LLC, 85 USPQ2d 1902, 1904 (TTAB 2008).
  • If a party that served a request for discovery receives a response thereto which it believes to be inadequate, but fails to file a motion to test the sufficiency of the response, it may not thereafter be heard to complain about the sufficiency thereof.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Although opposer did not respond to applicant's discovery, opposer argued that its testimony and evidence is admissible because applicant did not file a motion to compel discovery, citing TBMP §523.04 ("if a party that served a request for discovery receives a response thereto which it believes to be inadequate, but fails to file a motion to test the sufficiency of the response, it may not thereafter be heard to complain about the sufficiency thereof"); TBMP §527.01(e)(2004 rev. 2004) ("A party that responds to a request for discovery by indicating that it does not have the information sought, or by stating objections thereto, may be barred by its own action from later introducing the information sought in the request as part of its evidence on the case"); and, inter alia, Chianti Ruffino Esportazione Vinicola Toscana S.p.A. v. Colli Spolenti Spoletoducale SCRL, 59 USPQ2d 1383, 1383 (TTAB 2001) ("Any deficiencies in applicant's discovery responses should have been addressed by the timely filing of a properly-supported motion to compel discovery prior to the commencement of opposer's testimony period"); Linville v. Rivard, 41 USPQ2d 1731, 1733 (TTAB 1996) (because respondent's objections "were not of a nature which would have led petitioner to believe that no such documents existed, and because petitioner failed to file a motion to compel, petitioner cannot now [during trial period] be heard to complain that the documents were not identified and produced").
  • If applicant wanted to challenge the Trademark Examining Attorney's Internet evidence or submit evidence in rebuttal, applicant's remedy was to file a proper request under Trademark Rule 2.142(d) to suspend the appeal and remand the application, with the requisite showing of good cause for the remand and the additional evidence sought to be introduced.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • In short, if applicant wanted to challenge the Trademark Examining Attorney's Internet evidence or submit evidence in rebuttal, applicant's remedy was to file a proper request under Trademark Rule 2.142(d) to suspend the appeal and remand the application, with the requisite showing of good cause for the remand and the additional evidence sought to be introduced. See TBMP §1207.02.
  • If applicant was unsatisfied with opposer's failure to respond to its discovery requests, it was required to file a motion to compel discovery, failing which applicant waived its right to object to such testimony and evidence on the ground that it was not produced during discovery.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • We agree with opposer. By failing to serve any response to applicant's discovery requests, opposer in no way led applicant to believe that there were no documents responsive to its requests. If applicant was unsatisfied with opposer's failure to respond to its discovery requests, it was required to file a motion to compel discovery, failing which applicant waived its right to object to such testimony and evidence on the ground that it was not produced during discovery. In this situation, applicant's own inaction ensured that applicant would not see opposer's evidence for the first time until trial. Under such circumstances, applicant cannot claim unfair surprise.
  • If fewer than all of the answers to a set of interrogatories are offered into evidence by the inquiring party, the responding party may introduce, under a notice of reliance, any other answers to interrogatories that should be considered so as to avoid an unfair interpretation of the responses offered for the record by the inquiring party.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • On the other hand, if fewer than all of the answers to a set of interrogatories are offered into evidence by the inquiring party (petitioner herein), the responding party (respondent herein) may introduce, under a notice of reliance, any other answers to interrogatories that should be considered so as to avoid an unfair interpretation of the responses offered for the record by the inquiring party.
  • If file copies of documents submitted to the TTAB were submitted as official records under notice of reliance they would not be competent to prove the truth of the matter asserted in those documents, and would merely show that the documents had been filed.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • FOOTNOTE 2 "These papers consist of Applicant's Response to Opposer's Statement of Undisputed Material Facts and a declaration of Cabella Calloway Langsam. The papers appear to be opposer's file copies and not copies from the Board file. A party's file copies of documents filed with the Board are not proper matter for submission under notice of reliance. Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 906 n.5 (TTAB 1985). It should also be noted that even if the Board's file copies were submitted as official records under notice of reliance they would not be competent to prove the truth of the matter asserted in those documents, and would merely show that the documents had been filed. However, applicant has not objected to these documents and, in its brief, applicant also relies on the Langsam declaration. In view thereof, we have considered the documents and accorded them appropriate probative value."
  • If Opposer's delay in serving initial disclosures was significant, and opposer did not serve its initial disclosures until after it was informed by applicant that doing so is a prerequisite to serving discovery, then this factor weighs slightly against a finding of excusable neglect.
    • Dating DNA, LLC v. Imagini Holdings, Ltd., Opposition No. 91185884 and 91191912 (TTAB 2010)
      • However, opposer's delay in serving initial disclosures was significant, and opposer did not serve its initial disclosures until after it was informed by applicant that doing so is a prerequisite to serving discovery. This factor weighs slightly against a finding of excusable neglect.
  • If the adverse party believes that the propounding party has not met the requirement to indicate generally the relevance of the material being offered, the adverse party must lodge an objection before the opening of the next testimony period following that in which the material was offered into the record, or risk a finding that any objection on this basis has been waived.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • If the adverse party believes that the propounding party has not met the requirement to "indicate generally the relevance of the material being offered," the adverse party must lodge an objection before the opening of the next testimony period following that in which the material was offered into the record, or risk a finding that any objection on this basis has been waived.
  • If the propounding party introduces the same document to support more than one element of a claim or defense, or more than one relevant fact, the propounding party should indicate the specific element or fact supported by the document in a group of documents.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Furthermore, if the propounding party introduces the same document to support more than one element of a claim or defense, or more than one relevant fact, the propounding party should indicate the specific element or fact supported by the document in a group of documents. For example, if printed materials or Internet web pages introduced through a notice of reliance are submitted to show the similarity of the products, the similarity of the channels of trade, and the strength of the mark, the propounding party should identify which of the documents or web pages support each element or fact (e.g., plaintiff's exhibits 1-10 demonstrate the similarity of the products, plaintiff's exhibits 3-5 and 11-15 demonstrate the similarity of the channels of trade, and plaintiff's exhibits 7-8, 16 and 16-30 demonstrate the strength of plaintiff's mark).
  • In applying the Trademark rules, the TTAB must recognize and adapt to changes in technology, particularly the prevalence of the Internet. Apropos to the question of whether the TTAB should allow materials retrieved from Internet web pages to be introduced by notice of reliance is the discussion justifying our decision to admit newswire stories in ex parte appeals.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • In applying the Trademark rules, we must recognize and adapt to changes in technology, particularly the prevalence of the Internet. Apropos to the question of whether the Board should allow materials retrieved from Internet web pages to be introduced by notice of reliance is the discussion justifying our decision to admit newswire stories in ex parte appeals.
  • In order to reopen the nowexpired discovery period, opposer must establish "excusable neglect."
    • Dating DNA, LLC v. Imagini Holdings, Ltd., Opposition No. 91185884 and 91191912 (TTAB 2010)
      • In order to reopen the nowexpired discovery period, opposer must establish "excusable neglect." Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Mfg. Co., 55 USPQ2d 1848, 1852 (TTAB 2000) ("Pursuant to Fed. R. Civ. P. 6(b)(2), the requisite showing for reopening an expired period is that of excusable neglect.").
  • Invoices and receipts related to newspaper advertisements may not be filed pursuant to a notice of reliance.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • FOOTNOTE 8 "We did not consider the invoices and receipts related to applicant's newspaper advertisements because these documents may not be filed pursuant to a notice of reliance. To the extent that the receipts were introduced into evidence during Mr. Torgerson's deposition, they were considered for whatever probative value they may have had."
  • Invoices of a party's vendors are clearly not "printed publications" or official records and are therefore inappropriate for submission under a notice of reliance.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • As to Items #2 and #5, invoices of respondent's vendors are clearly not "printed publications" or official records and are therefore inappropriate for submission under a notice of reliance.
  • It is important to server discovery requests early enough to allow for time to take follow-up discovery.
    • Byer California v. Clothing for Modern Times Ltd., Opposition No. 91189238 (TTAB 2010)
      • As for applicant, at least one reason why it did not learn of Mr. Manburg earlier is that applicant did not serve any discovery whatsoever until the last day of the discovery period.9 See, Dating DNA, LLC v. Imagini Holdings, Ltd., ___ USPQ2d ___, 2010 WL 985361 at * 4 (TTAB Feb. 22, 2010); TBMP § 403.05 (explaining importance of serving discovery requests early enough to allow for time to take follow-up discovery).
  • It is not necessary for the parties to introduce every document obtained from an Internet search especially when it includes duplicative and irrelevant materials.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • By liberalizing the practice under Trademark Rule 2.122(e), we understand that there is an opportunity for abuse (e.g., "needless presentation of cumulative evidence" in violation of Fed. R. Evid. 403).19 FOOTNOTE 19 "It is not necessary for the parties to introduce every document obtained from an Internet search especially when it includes duplicative and irrelevant materials. As Judge Rich commented in In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1451 (Fed. Cir. 1987): "It is indeed remarkable to see the thoroughness with which NEXIS can regurgitate a place name casually mentioned in the news." The same can be said for the ability of Internet search engines. See also Blue Man Productions Inc. v. Tarman, 75 USPQ2d 1811, 1817 - 1819 (TTAB 2005), rev'd on other grounds, Civil Action No. 05- 2037 (D.D.C. April 3, 2008)("when unacceptable material, duplicative material, and material with no real probative value is removed, the amount of evidence showing recognition of opposer's mark is far less than the eleven-page listing in opposer's notice of reliance would lead one to expect")."
  • It is not sufficient for the propounding party to broadly state that the materials are being submitted to support the claim that there is (or is not) a likelihood of confusion, or that the mark is (or is not) merely descriptive. Ordinarily, to meet the requirement to "indicate generally the relevance of the material being offered," the propounding party should associate the materials with a relevant likelihood of confusion factor or a specific fact relevant to determining a particular issue.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • For example, it is not sufficient for the propounding party to broadly state that the materials are being submitted to support the claim that there is (or is not) a likelihood of confusion, or that the mark is (or is not) merely descriptive. Likelihood of confusion or descriptiveness is often the only issue in a case and to simply state this fact is the equivalent of saying that the documents are relevant to the case. Ordinarily, to meet the requirement to "indicate generally the relevance of the material being offered," the propounding party should associate the materials with a relevant likelihood of confusion factor (e.g., the strength of the mark, the meaning or commercial impression engendered by the mark, etc.) or a specific fact relevant to determining a particular issue, such as whether a mark is merely descriptive. This will ensure that any adverse party has been fairly apprised of the evidence it must rebut and the issue for which it was introduced.
  • It is preferable that material obtained from the Internet should be identified by the full address (url) for the webpage and the date it was downloaded, either by the information printed on the webpage itself, or by providing this information in an Office action or an applicant's response.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • FOOTNOTE 6 "We also point out it is preferable that material obtained from the Internet should be identified by the full address (url) for the webpage and the date it was downloaded, either by the information printed on the webpage itself, or by providing this information in an Office action or an applicant's response. See In re International Business Machines Corp., 81 USPQ2d 1677, 1682 n.9 (TTAB 2006)."
  • It is true that respondent's interrogatory answers not properly offered in evidence under 37 C.F.R. § 2.120(j) may nevertheless be considered if the non-offering party (petitioner) does not object thereto or treats the answers as being of record.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • It is true that respondent's interrogatory answers not properly offered in evidence under 37 C.F.R. § 2.120(j) may nevertheless be considered if the non-offering party (petitioner) does not object thereto or treats the answers as being of record.
  • It was unnecessary to introduce into evidence under a notice of reliance respondent's registration file as it automatically forms part of the record of the proceeding by without any action by the parties.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • Moreover, it was unnecessary to introduce into evidence under a notice of reliance respondent's registration file as it automatically forms part of the record of the proceeding by operation of the Trademark Rules without any action by the parties. 37 C.F.R. § 2.122(b)(1).
  • It would not be surprising for a party to learn of relevant information for the first time in preparing responses to detailed discovery requests.
    • Byer California v. Clothing for Modern Times Ltd., Opposition No. 91189238 (TTAB 2010)
      • Nor would it be surprising for a party to learn of relevant information for the first time in preparing responses to detailed discovery requests.
  • Looking at all of the factors, we consider the fact that applicant's documents are in a foreign language with which applicant is more conversant, and, that applicant is more likely to know where in its records the answers are contained to be determinative.
    • Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS", Opposition No. 91182207 and 91184467 (TTAB 2010)
      • Looking at all of the factors, we consider the fact that applicant's documents are in a foreign language with which applicant is more conversant, and, that applicant is more likely to know where in its records the answers are contained to be determinative.
  • Newswire stories are not of the same probative value as are stories appearing in magazines and newspapers, but newswire stories have decidedly more probative value than they previously did
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • FOOTNOTE 4 "In re Cell Therapeutics Inc., 67 USPQ2d 1795, 1798 (TTAB 2003) (While "we are not saying that newswire stories are of the same probative value as are stories appearing in magazines and newspapers, we think that the situation has changed such that said newswire stories have decidedly more probative value than they [previously] did")."
  • Notices of reliance may be sufficient to explain the relevance of the documents.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • In its motion to strike, applicant objected to opposer's notices of reliance because they do not explain the relevance of the documents. In opposition to applicant's motion, opposer argued that the notices of reliance state that the documents are introduced to show use of opposer's marks. Trademark Rule 2.122(e) provides that the notice of reliance shall "indicate generally the relevance of the material being offered." The notices of reliance are sufficient to explain the relevance of the documents (i.e., the use of opposer's marks). Applicant's motion to strike opposer's documents because of a defect in the notices of reliance is denied.
  • Objection sustained and evidence not considered where person unable to identify the publication which had a copy of a third-party advertisement appeared or to state with certainty that he downloaded the advertisement from a website.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • Opposer has objected to Bock Testimony Exhibit 28, a copy of a third-party advertisement for "Havana Honeys" cigars, introduced during the testimony of applicant's president, William Bock. Because Mr. Bock was unable to identify the publication in which the advertisement appeared or to state with certainty that he downloaded the advertisement from a website, opposer's objection to the advertisement on the ground that the exhibit was not properly authenticated is sustained. In view thereof, we have not considered this exhibit in reaching our decision herein.
  • Objections which are essentially arguments regarding the probative value of statements and materials and that do not address admissibility may be misplaced.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • As mentioned, respondent's objections are essentially arguments regarding the probative value of the objected-to statements and materials. That is, respondent's objections do not address admissibility, but request the Board to strike the items of evidence because they have little or no value as evidence. We decline to strike the evidence and choose to evaluate all of the declarants' statements and exhibits for appropriate probative value, and to weigh the evidence in its totality. Further, we find the declarations (and attached exhibits) submitted by petitioner are admissible and in compliance with Fed. R. Civ. P. 56(e) and the Board's rules. See TBMP § 528.05 (and subsections) (2d ed. rev. 2004).
  • Official recors are admissable.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Also, exhibit Nos. 5 and 8-10 are admissible as copies of official records. Fed.R.Evid. 902(5).
  • Once a document is admitted into evidence, it may be relied on by any adverse party and considered by the TTAB for any relevant purpose.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • However, once a document is admitted into evidence, it may be relied on by any adverse party and considered by the Board for any relevant purpose. Anheuser-Busch, Inc. v. Major Mud & Chemical Co., Inc., 221 USPQ 1191, 1192 n.7 (TTAB 1984).
  • Once evidence is introduced through a notice of reliance, it is entirely proper for any party to argue the probative effect of such evidence.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • That is, once evidence is introduced through a notice of reliance, it is "entirely proper" for any party "to argue the probative effect" of such evidence. Beecham Inc. v. Helene Curtis Industries, Inc., 189 USPQ 647, 647 (TTAB 1976). See also Trademark Rule 2.120(j)(7), 37 CFR § 2.120(j)(7).
  • Ordinarily, an answer to an interrogatory may be submitted and made part of the record by only the inquiring party, i.e., a party generally may not rely on his own responses to discovery requests.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • Ordinarily, an answer to an interrogatory may be submitted and made part of the record by only the inquiring party, i.e., a party generally may not rely on his own responses to discovery requests. Trademark Rule 2.120(j)(5).4
  • Ordinarily, motions filed subsequent to an outstanding potentially dispositive motion which are not related thereto will not be considered.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • Opposer filed its motion for summary judgment before applicant filed his motion for sanctions. Ordinarily, motions filed subsequent to an outstanding potentially dispositive motion which are not related thereto will not be considered. However, it is appropriate in this case to consider the motion for sanctions and to address it first in this order because it pertains to a discovery dispute between the parties that pre-dates opposer's motion for summary judgment.
  • Printed publications, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant under an issue in a proceeding, and official records may be introduced in evidence by filing a notice of reliance on the material being offered. The notice shall specify the printed publication (including information sufficient to identify the source and the date of the publication.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Trademark Rule 2.122(e), 37 CFR §2.122(e), in pertinent part, reads as follows: "Printed publications, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant under an issue in a proceeding, and official records . . . may be introduced in evidence by filing a notice of reliance on the material being offered. The notice shall specify the printed publication (including information sufficient to identify the source and the date of the publication)."
  • Printout from a webpage may be introduced for the limited purpose of demonstrating what the documents show on their face. Further, a printout from a webpage may have more limitations on its probative value than traditional printed publications.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • This approach facilitates the introduction of matter for the limited purpose of demonstrating what the documents show on their face. We underscore that a printout from a webpage may have more limitations on its probative value than traditional printed publications.
  • Producing thousands of pages of documents without an index is an example of gameplaying.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • In response, opposer identified all 31,144 pages of its produced documents. We know, because both parties make the point, that thousands of pages of opposer's produced documents comprise the file histories of opposer's applications, and while those file histories may arguably be tangentially related to opposer's communications to applicant, identifying all of them, without an index, in response to Document Request No. 25 is an example of gameplaying rather than compliance with the Prior Order.
  • Recitation of Trademark Rule 2.122(d)(1) regarding the introduction of pleaded registrations in inter partes proceedings which was amended over two years ago.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • "Trademark Rule 2.122(d)(1) regarding the introduction of pleaded registrations in inter partes proceedings was amended over two years ago. The rule, in pertinent part, now reads: ""A registration of the opposer or petitioner pleaded in an opposition or petition to cancel will be received in evidence and made part of the record if the opposition or petition is accompanied by an original or photocopy of the registration prepared and issued by the United States Patent and Trademark Office showing both the current status of and current title to the registration, or by a current printout of information from the electronic database records of the USPTO showing the current status and title of the registration. (emphasis added)"" See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed.Reg. 42,242 (Aug. 1, 2007). Of particular significance in the present case is that the amendment to Trademark Rule 2.122(d)(1) only applies to proceedings commenced on or after August 31, 2007. Id. at 42,242."
  • Responses to written discovery may be served after the close of discovery.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • FOOTNOTE 13 "Trademark Rule 2.120(a)(3) provides that "[d]iscovery depositions must be taken, and interrogatories, requests for production of documents and things, and requests for admission must be served, on or before the closing date of the discovery period as originally set or as reset." Accordingly, responses to written discovery may be served after the close of discovery."
  • Rule 2.122(e) is intended to expedite and facilitate the presentation and evaluation of evidence.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • "Rule 2.122(e) is intended to expedite and facilitate the presentation and evaluation of evidence. ""[Rule 2.122(e)] is intended to facilitate the introduction of books and publications for what they show on their face subject to the safeguard that the party against whom the evidence is offered is readily able to corroborate or refute the authenticity of what is proffered. The assumption underlying the rule is that a party is or may readily become familiar with printed matter in libraries open to the public or in general circulation. The burden of showing public availability, in case of reasonable doubt, lies on the proponent of the evidence. Private promotional literature is not presumed to be publicly available in the sense of being readily accessible for inspection in libraries open to the public or of such currency that the other party is presumably familiar with it."" Glamorene Products Corp. v. Earl Grissmer Co., Inc., 203 USPQ 1090, 1092 n.5 (TTAB 1979)."
  • Search engine results (Google)—which provide little context to discern how a term is actually used on the webpage that can be accessed through the search result link—-may be insufficient to determine the nature of the use of a term or the relevance of the search results to registration considerations.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • Many of the pages applicant has submitted are simply Google search summary sheets. "Search engine results—which provide little context to discern how a term is actually used on the webpage that can be accessed through the search result link—-may be insufficient to determine the nature of the use of a term or the relevance of the search results to registration considerations." In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007).
  • Since both parties used notices of reliance to introduce Internet evidence, the TTAB treated those Internet screen-prints as having been stipulated into the record.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • However, inasmuch as both parties to this proceeding have used notices of reliance to introduce Internet evidence, we treat these Internet screen-prints as having been stipulated into the record. Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1956 (TTAB 2008).
  • Statements made by others in a magazine article are not admissible to prove the truth of the matters.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • We sustain opposer's objection to this exhibit because it is hearsay. Statements made by others in a magazine article are not admissible to prove the truth of the matters. In view thereof, we have not considered this exhibit in reaching our decision herein.
  • The categories of materials that may be submitted under a notice of reliance are quite limited. For example, a party that has obtained documents from another party may not make the produced documents of record by notice of reliance alone. Evidence not obtained and filed in compliance with this and other sections of the Trademark Rules will not be considered.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • The categories of materials that may be submitted under a notice of reliance are quite limited. For example, under 37 CFR § 2.120(j)(3)(ii), a party that has obtained documents from another party may not make the produced documents of record by notice of reliance alone. Evidence not obtained and filed in compliance with this and other sections of the Trademark Rules will not be considered. Cf. Trademark Rule 2.123(l), 37 C.F.R. § 2.123(l).
  • The change in practice concerning internet evidencedoes not change our practice with respect to traditional paper documents.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • The change in practice articulated herein does not change our practice with respect to traditional paper documents.18 FOOTNOTE 18 "This may create a situation where identical types of documents may be treated differently. For example, a corporate annual report available only in paper form may not be admissible through a notice of reliance because it is not a document in general circulation, however, a corporate annual report in digital form publicly available over the Internet would be admissible through a notice of reliance because its publication on the Internet places it in general circulation."
  • The determination and weighing of the parties' respective burdens is only necessary and appropriate if the responding party already has established that it would be unduly burdensome for it to provide written answers to the interrogatories, and if its responses to the interrogatories have specified in sufficient detail the business records from which the answers to the interrogatories can be ascertained.
    • Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS", Opposition No. 91182207 and 91184467 (TTAB 2010)
      • "That is, the determination and weighing of the parties' respective burdens is only necessary and appropriate if the responding party already has established that it would be unduly burdensome for it to provide written answers to the interrogatories, and if its responses to the interrogatories have specified in sufficient detail the business records from which the answers to the interrogatories can be ascertained." Jain, 49 USPQ2d at 1434.
  • The fact that some of the excerpts of the printed publications include advertisements for a party's goods and services does not disqualify them as proper subject matter for a notice of reliance as these documents are not promotional materials per se, but rather are advertisements in printed publications that are available to the general public or in general circulation.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Applicant also objected to a portion of opposer's notice of reliance ("#3" filed on June 13, 2008) on certain documents. Document Nos. PP 00001-PP 000075, and PP 0000488-PP 0000492 are admissible as printed publications pursuant to Trademark Rule 2.122(e). The fact that some of the excerpts of the printed publications include advertisements for opposer's goods and services does not disqualify them as proper subject matter for a notice of reliance; these documents are not promotional materials per se, but rather are advertisements in printed publications that are available to the general public or in general circulation. See Gravel Cologne, Inc. v. Lawrence Palmer, Inc., 469 F.2d 1397, 176 USPQ 123, 123 (CCPA 1972); Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 201 USPQ 410 (TTAB 1979); and Wagner Electric Corp. v. Raygo Wagner, Inc., 192 USPQ 33, 36 n.10 (TTAB 1976).
  • The failure to properly indicate generally the relevance of the material being offered, as such an indication has been described herein, is an evidentiary defect that can be cured by the propounding party as soon as it is raised by any adverse party, without reopening the testimony period of the propounding party.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • The failure to properly "indicate generally the relevance of the material being offered," as such an indication has been described herein, is an evidentiary defect that can be cured by the propounding party as soon as it is raised by any adverse party, without reopening the testimony period of the propounding party.
  • The four factors to be considered in determining excusable neglect.
    • Dating DNA, LLC v. Imagini Holdings, Ltd., Opposition No. 91185884 and 91191912 (TTAB 2010)
      • "As the Board stated in Baron Philippe: ""In Pioneer Investment Services Company v. Brunswick Associates Limited Partnership, 507 U.S. 380, 395 (1993), the Supreme Court set forth four factors to be considered in determining excusable neglect. Those factors are: (1) the danger of prejudice to the nonmoving party; (2) the length of delay and its potential impact on judicial proceedings; (3) the reason for the delay, including whether it was within the reasonable control of the moving party; and, (4) whether the moving party has acted in good faith. In subsequent applications of this test by the Circuit Courts of Appeal, several courts have stated that the third factor may be considered the most important factor in a particular case. See Pumpkin Ltd v. The Seed Corps, 43 USPQ2d 1582, 1586 at fn. 7 (TTAB 1997)."" Id., at 1852."
  • The manner in which many "publications," including government documents, are maintained and circulated has dramatically changed.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Likewise, the manner in which many "publications," including government documents, are maintained and circulated has dramatically changed since this Board decided Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998) ("these printouts must be viewed simply as information available to the general public at the time opposer's counsel accessed the Internet") and even Paris Glove of Can. Ltd. v. SBC/Sporto Corp., 84 USPQ2d at 1858-59 (TTAB 2007) (web pages which are not the equivalent of printed publications are not admissible under a notice of reliance).
  • The probative value of a third-party letter is limited to the extent that the TTAB cannot consider the statements therein for the truth of the matters asserted.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • We note, however, that Exh. No. 3 consists of a letter from a third party, and the probative value of this letter is limited to the extent that we cannot consider the statements therein for the truth of the matters asserted.
  • The same is true for materials retrieved through Internet searches. Thus, it is important that applicants and examining attorneys carefully consider the materials retrieved by their Internet searches and make a judicious submission of the results.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • The same is true for materials retrieved through Internet searches. Thus, it is important that applicants and examining attorneys carefully consider the materials retrieved by their Internet searches and make a judicious submission of the results.
  • The specific issue in the Total Quality Management Group case was whether the TTAB would take judicial notice of online dictionary evidence filed for the first time with the Trademark Examining Attorney's brief on appeal.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • This includes Internet evidence attached to the Trademark Examining Attorney's denial of the request for reconsideration. See In re Fiesta Palms LLC, 85 USPQ2d 1360 (2007)(Board considered Internet evidence submitted with the Trademark Examining Attorney's denial of request for reconsideration). The Total Quality Management Group case applicant relies on is inapposite because in that case the Trademark Examining Attorney's Internet evidence (a definition from an online dictionary) was submitted for the first time with the Trademark Examining Attorney's brief on appeal, not with the earlier-issued denial of the request for reconsideration, as in the present case. Also, the specific issue in the Total Quality Management Group case was whether the Board would take judicial notice of online dictionary evidence filed for the first time with the Trademark Examining Attorney's brief on appeal. The propriety of taking judicial notice is not an issue in the present case.
  • The submission of a large number of third-party registrations and internet evidence to show a mark is weak do not prove that the marks depicted therein are in use, although they can be used in the manner of dictionary definitions, in order to show that a term has been adopted because it has a significance in a particular industry.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • In order to show that the registrant's mark MAX is weak, applicant has submitted a large number of third-party registrations, as well as Internet evidence which purports to show third-party use of MAX marks. The third-party registrations do not prove that the marks depicted therein are in use, although they can be used in the manner of dictionary definitions, in order to show that a term has been adopted because it has a significance in a particular industry. See Mead Johnson & Co. v. Peter Eckes, 195 USPQ 187 (TTAB 1977).
  • The term "official records" as used in Trademark Rule 2.122(e) refers not to a party's company business records, but rather to the records of public offices or agencies, or records kept in the performance of duty by a public officer.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • The term "official records" as used in Trademark Rule 2.122(e) refers not to a party's company business records, but rather to the records of public offices or agencies, or records kept in the performance of duty by a public officer. TBMP §704.07 (2d ed. rev. 2004). See Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580 n.5 (TTAB 1979) (official records are records prepared by a public officer).
  • The third requirement, if at issue, often will not be met "because the responding party will have greater familiarity with its own records and will generally have a lesser burden than the inquiring party when searching through the relevant records."
    • Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS", Opposition No. 91182207 and 91184467 (TTAB 2010)
      • The Board has added that the third requirement, if at issue, often will not be met "because the responding party will have greater familiarity with its own records and will generally have a lesser burden than the inquiring party when searching through the relevant records." No Fear Inc. v. Rule, 54 USPQ2d at 1555; and Jain, 49 USPQ2d at 1433-34.
  • The traditional dichotomy between "printed" and "publication" is no longer valid. Given the state of technology in document duplication, data storage, and data retrieval systems, the "probability of dissemination" of any item very often has little to do with whether or not it is "printed" in the sense of that word when it was introduced into the patent statutes in 1836.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • "We agree that "printed publication" should be approached as a unitary concept. The traditional dichotomy between "printed" and "publication" is no longer valid. Given the state of technology in document duplication, data storage, and data retrieval systems, the "probability of dissemination" of any item very often has little to do with whether or not it is "printed" in the sense of that word when it was introduced into the patent statutes in 1836." In re Wyer, 655 F.2d 221, 210 USPQ 790, 794 (CCPA 1981)(quoting I.C.E. Corp. v. Armco Steel Corp., 250 F.Supp. 738, 743, 148 USPQ 537, 540 (SDNY 1966)).
  • The TTAB expects parties to cooperate during discovery. Each party has a duty to make a good faith effort to satisfy the reasonable and appropriate discovery needs of its adversary.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • The Board expects parties to cooperate during discovery. Each party has a duty to make a good faith effort to satisfy the reasonable and appropriate discovery needs of its adversary.5 FOOTNOTE 5 "TBMP §408.01 (2nd ed. rev. 2004)."
  • The TTAB frowns equally upon an applicant or examining attorney submitting hundreds of pages of evidence in the hope that as the TTAB wades through it we will find something that is probative.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • We must also comment not only about the sheer number of pages submitted by applicant, but the fact that applicant has not even pointed out in its brief the specific Internet evidence that it believes is most probative of its position. The Board frowns equally upon an applicant or examining attorney submitting hundreds of pages of evidence in the hope that as the Board wades through it we will find something that is probative.
  • The TTAB generally finds that a document identifying its publication date and source may be introduced into evidence pursuant to Trademark Rule 2.122(e) if it is in general circulation.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • The Board generally finds that a document identifying its publication date and source may be introduced into evidence pursuant to Trademark Rule 2.122(e) if it is in general circulation. Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1857 (TTAB 2007) (article from a trade magazine is admissible under 2.122(e) because "[o]n its face, it identifies the publication and the date published"); Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1722 (TTAB 1999), rev'd on other grounds, 284 F.Supp.2d 96, 68 USPQ2d 1225 (D.D.C. 2003) (excerpts that are unidentified as to either source or date are not admissible under a notice of reliance because the authenticity of the document cannot be ascertained); Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405 (TTAB 1998) (excerpt from a newspaper or periodical is not admissible under 2.122(e) if it is incomplete, illegible or not fully identified as to its name and date of the published source); Int'l Assn. of Fire Chiefs v. H. Marvin Ginn Corp., 225 USPQ 940, 942 n.6 (TTAB 1985), rev'd on other grounds, 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) (excerpts from the Lexis/Nexis database were admissible through notice of reliance because the materials "clearly identify the excerpted articles by their dates of publication and sources, all of which are readily available in published materials"); see also In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984), rev'd on other grounds, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) (magazine articles obtained through Lexis/Nexis search admissible because they were clearly identified and therefore there was "no credibility problem"); In re Capital Formation Counselors, Inc., 219 USPQ 916, 918 n. 3 (TTAB 1983) (Lexis/Nexis articles are clearly identified by name and date therefore applicant could have easily checked the articles).
  • The TTAB will consider evidence taken from Wikipedia so long as the non-offering party has an opportunity to rebut that evidence.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • FOOTNOTE 2 "Magnetic Resonance Imaging (MRI) … uses powerful magnets to polarise and excite hydrogen nuclei (single proton) in water molecules in human tissue, producing a detectable signal which is spatially encoded resulting in images of the body." Final Office Action, www.wikipedia.org. The "Board will consider evidence taken from Wikipedia so long as the non-offering party has an opportunity to rebut that evidence…." In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 2007).
  • The TTAB will henceforth deem a document obtained from the Internet displaying a date and its source as presumptively true and genuine. Of course, the document must be publicly available. The date and source information on the face of Internet documents allow the nonoffering party the opportunity to verify the documents.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • The Board will henceforth deem a document obtained from the Internet displaying a date and its source as presumptively true and genuine. Of course, the document must be publicly available. The date and source information on the face of Internet documents allow the nonoffering party the opportunity to verify the documents.
  • The TTAB will not consider foreign language documents at trial unless a translation were submitted with them.
    • Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS", Opposition No. 91182207 and 91184467 (TTAB 2010)
      • FOOTNOTE 3 "The Board notes that if applicant intends to rely on these documents at trial, the Board could not consider them unless a translation were submitted with them. Cf. 37 C.F.R. § 2.34(a)(3)(ii)(2010)(requiring translation of foreign registrations not in English for applications based on § 44(e) of Trademark Act). If such documents were submitted at trial with translations, but the translations had not been provided to opposers during discovery, applicant's documents could be the subject of a motion to strike pursuant to Fed. R. Civ. P. 37."
  • The USPTO no longer maintains new trademark files in printed form but rather their files are in electronic form and accessible to all via the Internet, and to that extent they are both official records and in general circulation.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Even the USPTO no longer maintains new trademark files in printed form but rather the Office's files are in electronic form and accessible to all via the Internet, and to that extent they are both official records and in general circulation.
  • Third-party registrations may have some relevance regarding the standard to be applied to personal name marks and the USPTO practice in determining registrability of certain types of marks.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • With regard to Exhibits Nos. 14 and 15, third-party registrations for band names, e.g., COUNT BASIE ORCHESTRA, these documents have some relevance regarding the standard to be applied to personal name marks and the United States Patent and Trademark Office (USPTO) practice in determining registrability of certain types of marks. As opposer states, "these exhibits are relevant, as they provide evidence of the distinctiveness of marks that include both the name of a famous historical band leader and the word ORCHESTRA." Br. p. 3. In view thereof, applicant's objections to these exhibits submitted under notice of reliance are also overruled.
  • Though respondent filed no brief, nor objected to any of the documents made of record by petitioner, this does not mean respondent has agreed to petitioner's submission of documents not contemplated within the Rules for such submissions by way of a notice of reliance.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • Respondent filed no brief, nor has he objected to any of the documents made of record by petitioner. However, we do not deem respondent to have agreed to petitioner's submission of documents not contemplated within the Trademark Rules of Practice and Procedure for such submissions by way of a notice of reliance (e.g., unauthenticated web pages, sales catalogues, invoices, blank forms of the United States Postal Service (USPS), a responding party's own discovery responses, etc.).
  • To the extent that there may appear to be a discrepancy between Trademark Rule 2.122(d)(1) and Trademark Rule 2.122(d)(2), Trademark Rule 2.122(d)(1) is an attempt to expand the possible means for proving a pleaded registration, not as intended to make proof of a pleaded registration more difficult at trial than during pleading.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • To the extent that there may appear to be a discrepancy between Trademark Rule 2.122(d)(1) and Trademark Rule 2.122(d)(2) in that the former allows for proof of a pleaded registration by the submission of USPTO records with a pleading while the latter appears to preclude use of such records during trial, there is no sound basis for the distinction. We view the Office's amendment of Trademark Rule 2.122(d)(1) as an attempt to expand the possible means for proving a pleaded registration, not as intended to make proof of a pleaded registration more difficult at trial than during pleading.
  • Today some matter that was once admissible as a printed publication no longer exists in printed form (e.g., new magazine "publications" that only exist online). As this trend continues, more and more "publications" will exist only online. Therefore, either the utility of the use of notices of reliance to introduce printed publications and government records will become limited, or the TTAB must adapt the procedure to recognize the changes in how publications and other documents are kept and "circulated."
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Today some matter that was once admissible as a printed publication no longer exists in printed form (e.g., new magazine "publications" that only exist online). As this trend continues, more and more "publications" will exist only online. Therefore, either the utility of the use of notices of reliance to introduce printed publications and government records will become limited, or the Board must adapt the procedure to recognize the changes in how publications and other documents are kept and "circulated."
  • Trademark Rule 2.120(a)(3) provides that "[a] party must make its initial disclosures prior to seeking discovery …." Opposer failed to comply with this Rule, and accordingly its motion to compel is denied.
    • Dating DNA, LLC v. Imagini Holdings, Ltd., Opposition No. 91185884 and 91191912 (TTAB 2010)
      • Turning next to opposer's motion to compel, Trademark Rule 2.120(a)(3) provides that "[a] party must make its initial disclosures prior to seeking discovery …." Opposer failed to comply with this Rule, and accordingly its motion to compel also is DENIED.
  • Trademark Rule 2.122(d)(1) was in need of amendment because of an outdated requirement for filing of duplicate copies of materials offered to prove a pleaded registration.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Trademark Rule 2.122(d)(1) was in need of amendment because of an outdated requirement for filing of duplicate copies of materials offered to prove a pleaded registration. 72 Fed.Reg. at 42,249.
  • Trademark Rule 2.122(e) provides that the notice of reliance shall indicate generally the relevance of the material being offered.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • Trademark Rule 2.122(e) provides that the notice of reliance shall "indicate generally the relevance of the material being offered."
  • Trademark Rule 2.122(e) specifically provides that USPTO official records, such as TESS lists of registrations and applications, and the records thereof, may be introduced by notice of reliance. Such evidence may also be introduced during the testimony of a witness. Opposer's objection to this evidence on the ground of elevance goes to the weight of the evidence rather than its admissibility, and we will therefore consider the evidence for whatever probative value it may have.
    • Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519 (TTAB 2008)
      • Trademark Rule 2.122(e) specifically provides that USPTO official records, such as TESS lists of registrations and applications, and the records thereof, may be introduced by notice of reliance. Such evidence may also be introduced during the testimony of a witness. Opposer's objection to this evidence on the ground of elevance goes to the weight of the evidence rather than its admissibility, and we will therefore consider the evidence for whatever probative value it may have.
  • Turning to these threshold issues, the TTAB finds that applicant has failed to establish that it would be unduly burdensome for applicant to provide separate and full written answers to the interrogatories at issue in accordance with Fed. R. Civ. P. 33(b) as Applicant has made no specific mention of what burden it faces in providing written answers, relying instead on its "having satisfied its burden by supplementing its answers and providing the Bates number table.
    • Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS", Opposition No. 91182207 and 91184467 (TTAB 2010)
      • Turning to these threshold issues, the Board finds that applicant has failed to establish that it would be unduly burdensome for applicant to provide separate and full written answers to the interrogatories at issue in accordance with Fed. R. Civ. P. 33(b). Applicant has made no specific mention of what burden it faces in providing written answers, relying instead on its "having satisfied its burden" by supplementing its answers and providing the Bates number table.
  • Under Rule 2.122(e) the propounding party of internet documents as well as traditional publications must indicate generally the relevance of the material being offered.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • We emphasize that under Rule 2.122(e) the propounding party of internet documents as well as traditional publications must "indicate generally the relevance of the material being offered."
  • Use of discovery deposition, answer to interrogatory, admission or written disclosure may be submitted and made part of the record only by the receiving or inquiring party except that, if fewer than all of the written disclosures, answers to interrogatories, or fewer than all of the admissions, are offered in evidence by the receiving or inquiring party, the disclosing or responding party may introduce under a notice of reliance any other written disclosures, answers to interrogatories, or any other admissions, which should in fairness be considered so as to make not misleading what was offered by the receiving or inquiring party. The notice of reliance filed by the disclosing or responding party must be supported by a written statement explaining why the disclosing or responding party needs to rely upon each of the additional written disclosures or discovery responses listed in the disclosing or responding party's notice, and absent such statement the TTAB, in its discretion, may refuse to consider the additional written disclosures or responses.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • FOOTENOTE 4 "(j) Use of discovery deposition, answer to interrogatory, admission or written disclosure…(5) Written disclosures, an answer to an interrogatory, or an admission to a request for admission, may be submitted and made part of the record only by the receiving or inquiring party except that, if fewer than all of the written disclosures, answers to interrogatories, or fewer than all of the admissions, are offered in evidence by the receiving or inquiring party, the disclosing or responding party may introduce under a notice of reliance any other written disclosures, answers to interrogatories, or any other admissions, which should in fairness be considered so as to make not misleading what was offered by the receiving or inquiring party. The notice of reliance filed by the disclosing or responding party must be supported by a written statement explaining why the disclosing or responding party needs to rely upon each of the additional written disclosures or discovery responses listed in the disclosing or responding party's notice, and absent such statement the Board, in its discretion, may refuse to consider the additional written disclosures or responses." 37 C.F.R. § 2.120(j)(5).
  • Use-based, third-party registrations may serve to suggest that such goods or services are of a type which may emanate from a single source.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • FOOTNOTE 6 "Use-based, third-party registrations may "serve to suggest that such goods or services are of a type which may emanate from a single source." In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n. 6 (TTAB 1988)."
  • We are not aware of, nor do the parties cite to, a precedential case addressing the situation where a responding party responds to interrogatories pursuant to Fed. R. Civ. P. 33(d) by providing the interrogating party documents in a foreign language. There are, however, non-precedential cases.
    • Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS", Opposition No. 91182207 and 91184467 (TTAB 2010)
      • We are not aware of, nor do the parties cite to, a precedential case addressing the situation where a responding party responds to interrogatories pursuant to Fed. R. Civ. P. 33(d) by providing the interrogating party documents in a foreign language. There are, however, non-precedential cases. See, e.g., Sungjin Fo-Ma, Inc. v. Chainworks, Inc., Civ. Act. No. 08-CV-12393, 2009 U.S. Dist. LEXIS 58059, 2009 WL 2022308 (E.D. Mich. July 8, 2009)(requiring responding party to extract information from documents in Korean and provide answers to interrogatories in English); E. & J. Gallo Winery v. Cantine Rallo, S.p.A., No. 1:04cv5153 OWW DLB, 2006 U.S. Dist. LEXIS 84048, 2006 WL 3251830 (E.D. Cal. Nov. 8, 2006)(finding volume of documents and repeated references to them in responding to all interrogatories meant it was less burdensome for responding party to provide written answers than for interrogating party to attempt to ferret information from documents); and Chocolate Comercio de Roupas Ltda. v. China Trade & Research, Inc., Op. No. 91104145, (TTAB Apr. 14, 2000)(requiring written answers to interrogatories where documents produced pursuant to Rule 33(d) were in foreign language and did not mention mark at issue).
  • We hold that, if a document obtained from the Internet identifies its date of publication or date that it was accessed and printed, and its source (e.g., the URL), it may be admitted into evidence pursuant to a notice of reliance in the same manner as a printed publication in general circulation in accordance with Trademark Rule 2.122(e).
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • We hold that, if a document obtained from the Internet identifies its date of publication or date that it was accessed and printed, and its source (e.g., the URL), it may be admitted into evidence pursuant to a notice of reliance in the same manner as a printed publication in general circulation in accordance with Trademark Rule 2.122(e). Cf. MPEP §2128 ("An electronic publication, including an on-line database or Internet publication, is considered to be a ‘printed publication' within the meaning of 35 U.S.C. §102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates").
  • Web pages are not the equivalent of "printed publications," and hence are not admissible under a notice of reliance.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • Web pages are not the equivalent of "printed publications," and hence are not admissible under a notice of reliance. See Paris Glove of Can. Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1858-59 (TTAB 2007); and Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998).
  • Web pages are not the equivalent of "printed publications," and hence are not admissible under a notice of reliance.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Defendant also included excerpts from the ZAGAT.com website and websites from third-party restaurants. Web pages are not the equivalent of "printed publications," and hence are not admissible under a notice of reliance. Hiraga v. Arena, 90 USPQ2d 1102, 1104 (TTAB 2009); Paris Glove of Can. Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1858-59 (TTAB 2007); and Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998). Accordingly, we have not considered the website evidence.
  • Website exhibits are not admissable where there is no date on the face of the documents and there is no URL as the documents have not been authenticated for purposes of submission by notice of reliance, nor have they been authenticated by testimony.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • The specific exhibits noted above are not admissible into evidence in accordance with Trademark Rule 2.122(e) because there is no date on the face of the documents and there is no URL. Thus, the documents have not been authenticated for purposes of submission by notice of reliance, nor have they been authenticated by testimony.
  • When a party believes that it is necessary to submit a significant amount of such material, it is incumbent on the party to specify in their briefs those pieces of evidence that they believe are most persuasive of their respective positions, so that the TTAB can consider that evidence in particular.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • When they believe that it is necessary to submit a significant amount of such material, it is incumbent on the applicant and the examining attorney to specify in their briefs those pieces of evidence that they believe are most persuasive of their respective positions, so that the Board can consider that evidence in particular.
  • When a timely request for reconsideration of an appealed action is filed (with or without new evidence), the examining attorney may submit, with his or her response to the request, new evidence directed to the issue(s) for which reconsideration is sought. However, the applicant may not submit additional evidence in response to any evidence submitted by the examining attorney unless the examining attorney's action is a nonfinal action to which a response may be filed. Otherwise, if the applicant wishes to submit additional evidence, it must file a request for remand.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • "We deny applicant's motion to strike. Trademark Rule 2.142(d), 37 C.F.R. §2.142(d), provides that the evidentiary record on appeal should be complete prior to appeal. However, TBMP5 §1207.04 provides: ""A timely request for reconsideration of an appealed action may be accompanied by additional evidence, which will thereby be made part of the evidentiary record in the application. There is no need, in such a situation, for a 37 CFR §2.142(d) request to suspend and remand for additional evidence. Evidence submitted with a timely request for reconsideration of an appealed action, that is, a request filed during the sixmonth response period following issuance of the appealed action, is considered by the Board to have been filed prior to appeal, even if the notice of appeal was, in fact, filed earlier in the six-month response period than the request for reconsideration.

        When a timely request for reconsideration of an appealed action is filed (with or without new evidence), the examining attorney may submit, with his or her response to the request, new evidence directed to the issue(s) for which reconsideration is sought. However, the applicant may not submit additional evidence in response to any evidence submitted by the examining attorney unless the examining attorney's action is a nonfinal action to which a response may be filed. Otherwise, if the applicant wishes to submit additional evidence, it must file a request for remand."""

  • Where a party fails to provide copies of the specific discovery requests to which a party failed to respond, the TTAB cannot judge whether those discovery requests sought the documents that were later introduced as the party's evidence.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Also, because applicant failed to provide copies of the specific discovery requests to which opposer failed to respond, we cannot judge whether those discovery requests sought the documents that were later introduced as opposer's evidence. Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 110, 1005 (TTAB 2007).12
  • Where a party stipulates to the admission into evidence without objection of an affidavit and the exhibits thereto, the party has waived its right to object to its admissibility.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • Applicant has already stipulated "to the admission into evidence without objection of the affidavit attached hereto as Exhibit B [Brooks' affidavit] and the exhibits thereto as part of Opposer's testimony in these proceedings." Stip. p. 1. Thus, applicant has waived its right to object to the admissibility of the exhibits attached to Mr. Brooks' testimony affidavit and its objections are overruled.
  • Where a responding party makes the decision to produce documents in lieu of responding directly to an interrogatory, a duty is imposed on the party to provide documents from which the response to the interrogatory is clearly ascertainable. Referencing documents written in a foreign language does not completely fulfill this duty.
    • Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS", Opposition No. 91182207 and 91184467 (TTAB 2010)
      • Where, as here, a responding party makes the decision to produce documents in lieu of responding directly to an interrogatory, a duty is imposed on the party to provide documents from which the response to the interrogatory is clearly ascertainable. Referencing documents written in a foreign language does not completely fulfill this duty.
  • Where resolution of discovery or other interlocutory issues would likely be facilitated by a conference in person of the parties or their attorneys, the TTAB may request that the parties or their attorneys meet with the TTAB at its offices for a conference.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • Furthermore, under Trademark Rule 2.120(i)(2), where resolution of discovery or other interlocutory issues "would likely be facilitated by a conference in person of the parties or their attorneys," the Board may "request that the parties or their attorneys … meet with the Board at its offices" for a conference. If the parties remain unwilling or unable to work together cooperatively and efficiently, the Board will not hesitate to invoke this Rule in the future.
  • While limited-circulation sales catalogues may be a publication in the broadest sense of the word, they do not qualify as a work available to the general public in libraries or of general circulation among members of the public" and is thus not a "printed publication"within the meaning of Trademark Rule 2.122(e).
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • Arena Roses' annual catalogue (Item #3) is inappropriate for submission under a notice of reliance. While this limited-circulation sales catalogue may be a publication in the broadest sense of the word, it does not qualify as a work "available to the general public in libraries or of general circulation among members of the public" and is thus not a "printed publication" within the meaning of Trademark Rule 2.122(e). See Hunter Publ'g Co. v. Caulfield Publ'g Ltd., 1 USPQ2d 1996, 1997 n.2 (TTAB 1986) [while subject matter may be of interest to the general public, such materials are not necessarily in general circulation].
  • While opposer was required to supplement its initial disclosures, there is no obligation to provide supplemental or corrective information that has been otherwise made known to the parties in writing or during the discovery process.
    • Byer California v. Clothing for Modern Times Ltd., Opposition No. 91189238 (TTAB 2010)
      • Furthermore, while opposer was required to supplement its initial disclosures, there is "no obligation to provide supplemental or corrective information that has been otherwise made known to the parties in writing or during the discovery process …." Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1861 (TTAB 2009)(quoting 1993 Advisory Committee Notes to Fed. R. Civ. P. 26(e)).
  • While parties need not identify prospective trial witnesses in their initial disclosures, they must identify each individual likely to have discoverable information that the disclosing party may use to support its claims or defenses.
    • Byer California v. Clothing for Modern Times Ltd., Opposition No. 91189238 (TTAB 2010)
      • Opposer's inability to specify a reason for not identifying Mr. Manburg in its initial disclosures, despite discussing this proceeding with him, is surprising. See, Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444-45 (TTAB 2009). Indeed, while parties need not identify prospective trial witnesses in their initial disclosures, they must identify "each individual likely to have discoverable information that the disclosing party may use to support its claims or defenses." Id. at 1443 n. 1 (quoting Fed. R. Civ. P. 26(a)(1)).
  • While parties preparing initial disclosures need not conduct an exhaustive search for all information that could be used at trial, initial disclosures may in many cases be broader than pretrial disclosures, because the latter may reflect a narrowing of the issues that need to be proved at trial. At the very least, initial disclosures should be broad enough to demonstrate a party's willingness to cooperate in the discovery process.
    • Byer California v. Clothing for Modern Times Ltd., Opposition No. 91189238 (TTAB 2010)
      • "On the other hand, however, opposer identified Mr. Manburg in its discovery responses, and it is not surprising that a party might not become aware of information relevant to its claims in preparing initial disclosures, which do not require an exhaustive search for all information or potential witnesses that could be used at trial.8 FOOTNOTE 8 ""While parties preparing initial disclosures need not conduct an exhaustive search for all information that could be used at trial, initial disclosures may in many cases be broader than pretrial disclosures, because the latter may reflect a narrowing of the issues that need to be proved at trial. At the very least, initial disclosures should be broad enough to demonstrate a party's willingness to cooperate in the discovery process."""
  • The Board may take judicial notice of dictionary evidence.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • FOOTNOTE 5 "The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
  • The Board may take judicial notice of dictionary evidence.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • FOOTNOTE 2 "The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
  • The TTAB may take judicial notice of dictionary definitions.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • FOOTNOTE 1 "The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
  • The TTAB may take judicial notice of dictionary definitions.
    • In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008)
      • FOOTNOTE 2 "MERRIAM-WEBSTER ONLINE DICTIONARY 2008, at http://www.merriamwebster. com/dictionary/lollipop . As requested by the Trademark Examining Attorney, we take judicial notice of this dictionary definition. See University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
  • The TTAB may take judicial notice of dictionary definitions.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • FOOTNOTE 3 "We take judicial notice that "clapper boards" are defined as "a pair of boards hinged at one end and banged together in front of a motion-picture camera before or after a take to facilitate synchronization of sound and picture prints." Webster's Third New International Dictionary p. 415 (1993). The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
  • An Internet search summary has little or no probative value.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Moreover, even if considered, the search summary has little or no probative value. In re Bayer Aktiengesellschaft, 82 USPQ2d 1828, 1933 (Fed. Cir. 2007). Most results on these hit lists provide only a few words surrounding the term LifeZone, and some do not seem to include the term at all, so there is little or no context to the excerpts.
  • The Board may take judicial notice of dictionary definitions.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • FOOTNOTE 5 "The Board may take judicial notice of dictionary definitions. See University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."
  • The TTAB may take judicial notice of such dictionary definitions.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • The Board may take judicial notice of such dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
  • Applicant's responses to opposer's interrogatories, is admissible.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Exhibit L, applicant's responses to opposer's interrogatories, is admissible. Trademark Rule 2.120(j)(3)(i).
  • Entry and consideration may be refused to improperly marked exhibits.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Trademark Rule 2.123(g)(2) provides that "[e]ntry and consideration may be refused to improperly marked exhibits."
  • We start by pointing out that attorney argument is no substitute for evidence.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • We start by pointing out that "[a]ttorney argument is no substitute for evidence." Enzo Biochem Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005).
  • The Board may take judicial notice of dictionaries and standard reference works.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • FOOTNOTE 1 "The Little Giant Encyclopedia of Names, p. 20 (1999; What's In A Name? . . . Everything You Wanted To Know, pp. 75-76 (1989). The Board may take judicial notice of dictionaries and standard reference works. B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (dictionary definitions and encyclopedias); Sprague Electric Co. Electrical Utilities Co., 209 USPQ 88, 95 n.3 (TTAB 1980) (standard reference works). Moreover, it is common knowledge that some persons use initials in lieu of a given name."
  • Exhibits or attachments to briefs are of little or no use in a Board proceeding.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Both parties submitted briefs with extensive evidentiary attachments. Exhibits or attachments to briefs are of little or no use in a Board proceeding. The Board sets trial periods during which the parties may submit evidence by filing notices of reliance or by taking testimony. Evidence submitted outside of the trial periods - including that attached to briefs - is untimely, and will not be considered. See TRADEMARK BOARD MANUAL OF PROCEDURE ("TBMP") § 704.05(b) (2d ed. rev. 2004)(and cases cited therein).
  • Internet materials may not be appropriate for introduction under a notice of reliance.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Applicant has also submitted, as Exhibit C to its notice of reliance, what appear to be a number of pages of search summary results for a search of the term "LifeZone" from the Ask.com and Dogpile web sites, as well as nine pages from several websites. However, internet materials of this type are not appropriate for introduction under a notice of reliance. Paris Glove, 84 USPQ2d at 1858-59.
  • Waiver of objection to submitted material may deem the material admitted by stipulation.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • Because none of the described materials submitted by opposer may be introduced in evidence by way of a notice of reliance, they will not be considered. Nonetheless, applicant has specifically waived its objection to the introduction of the apparent press release entitled "Newest NK Brand Innovation," which is accordingly admitted by stipulation.
  • A status copy of a trademark registration may be admissible through a notice of reliance.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • As noted, applicant submitted a notice of reliance. Exhibit A is a title and status copy of Registration No. 1753895,12 which is admissible.
  • A notice of reliance must be submitted during the testimony period of the offering party.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • The distinction is important, however. A notice of reliance must be submitted during the testimony period of the offering party. See Trademark Rules 2.120(j)(3)(i); 2.122(d)(2); 2.122(e).
  • The TTAB may take judicial notice of the Census data attached to the examining attorney's brief.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • In this case, the foreign language is Japanese, which the evidence shows is a modern language spoken by more than 100 million people worldwide and by hundreds of thousands of people in the United States. See Final Office Action, attachment and Examining Attorney's Brief, Attachment.1 FOOTNOTE 1 "We take judicial notice of the Census data attached to the examining attorney's brief. Spirits International, 86 USPQ2d at 1085 n.11."
  • An admission to a request for admission is admissible via a notice of reliance, but not a denial.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • On the other hand, Exhibits O and P, applicant's responses to opposer's requests for admission, are not. Trademark Rule 2.120(j)(3)(i) permits submission under a notice of reliance of "an admission to a request for admission." (emphasis added.) In this case, applicant denied each of opposer's requests for admission, and opposer's denials are not admissible.10 FOOTNOTE 10 "Moreover, unlike an admission (or a failure to respond which constitutes an admission), the denial of a request for admission establishes neither the truth nor the falsity of the assertion, but rather leaves the matter for proof at trial. Cf. Fed. R. Civ. P. 36(b).
        While applicant's responses to opposer's interrogatories are admissible, they yield little useful information. Nevertheless, we will give them whatever probative value they may have.
  • Copies of Office Actions from two files of the USPTO may be admissible as official records of the USPTO.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • These exhibits are copies of Office Actions from two files of the USPTO, including one from the file of the subject application, and U.S. Patent Application No. 2006/0187449, listing Darius Akbar Sadeghi as inventor. This evidence is admissible as official records of the USPTO.
  • Evidence which was timely filed during the parties' trial periods need not and should not be resubmitted.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Conversely, evidence which was timely filed during the parties' trial periods need not and should not be resubmitted.4 See ITC Entm't Group Ltd. v. Nintendo of Am. Inc., 45 USPQ2d 2021 (TTAB 1998).
  • Deposition testimony is admissible, although it may be unnecessary to submit it under a notice of reliance.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Finally, applicant submitted the testimonial deposition of Mr. Randy Moser, identified as the "founder and owner" of applicant. Mr. Moser's testimony is admissible, although it was unnecessary to submit it under a notice of reliance. See Trademark Rule 2.123 (taking and filing trial testimony).
  • An internal memo and a printer's proof of information may not be introduced by way of a notice of reliance.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • This exhibit comprises an internal memo and what appears to be a printer's proof of information about opposer's AGROMETER product. For the reasons discussed above, this evidence may not be introduced by way of a notice of reliance.
  • Web pages which are not the equivalent of printed publications are not admissible under a notice of reliance.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Exhibit A is a "[p]rintout of Life Zone's Website." Web pages which are not the equivalent of printed publications are not admissible under a notice of reliance. Paris Glove of Can. Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1858-59 (TTAB 2007); Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998).
  • Web pages which are not the equivalent of printed publications are not admissible under a notice of reliance.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • "Web pages which are not the equivalent of printed publications are not admissible under a notice of reliance." Life Zone, 87 USPQ2d at 1956, citing Paris Glove of Can. Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1858-59 (TTAB 2007); Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998).
  • It is not appropriate to submit TTAB testimony under a notice of reliance, although doing so is harmless error.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • While applicant is partially correct, it errs in the apparent assumption that testimony in a Board proceeding must be submitted under a notice of reliance. In fact, it is not appropriate to submit testimony under a notice of reliance, Sports Auth. Mich. Inc. v. PC Auth. Inc., 63 USPQ2d 1782, 1786, n.4 (TTAB 2001), although doing so is harmless error.
  • There is no requirement for a survey, or any other specific type of evidence, to show acquired distinctiveness.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • There is no "requirement" for a survey, or any other specific type of evidence, to show acquired distinctiveness. Yamaha Intl. Corp. v. Hoshino Gakki Co. Ltd., 6 USPQ2d at 1008.
  • As a general matter, objections which can be cured must be raised when the testimony or other evidence is offered.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • As a general matter, objections which can be cured must be raised when the testimony or other evidence is offered. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1264 (TTAB 2003)("If a party objects on procedural grounds to testimony or a notice of reliance ..., the objecting party should promptly file a motion to strike the testimony or notice of reliance; and failure to do so will generally result in a waiver of the procedural objection.").
  • Disclosures allow parties to know prior to trial the identity of trial witnesses, thus avoiding surprise witnesses.
    • Jules Jurgensen/Rhapsody, Inc. v. Peter Baumberger, Cancellation No. 92048667 (TTAB 2009)
      • Such disclosures allow parties to know prior to trial the identity of trial witnesses, thus avoiding surprise witnesses. See id. at 42257-58.
  • Internal sales information and inquiries about opposer's products may not be admissible under a notice of reliance.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • This exhibit, identified by opposer as "[a]dditional current sales information and inquiries" comprises opposer's internal communications and information about opposer's products. Since it is not a printed publication - or any other type of material admissible under a notice of reliance - it will be disregarded.
  • The TTAB may take judicial notice of online reference works which exist in printed format or have regular fixed editions.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • FOOTNOTE 8 "We take judicial notice of the definition of "vulgar" as "5 a: offensive in language : EARTHY b: lewdly or profanely indecent." Merriam-Webster Online Dictionary (2008) (at www.merriam-webster.com). The Board may take judicial notice of online reference works which exist in printed format or have regular fixed editions. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006)."
  • Applicant's responses to opposer's request for production of documents may not normally be submitted by notice of reliance.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • On the other hand, applicant's responses to opposer's request for production of documents - Exhibits M (applicant's production of documents) and N (applicant's responses to opposer's requests for production) - may not normally be submitted by notice of reliance, Trademark Rule 2.120(j)(3)(ii), and are therefore inadmissible under our rules. Nonetheless, because applicant has noted its reliance on Exhibit M, we consider the admission of that exhibit to have been stipulated.
  • The TTAB will consider an objection as to improper authentication, but of course its ruling depends on the facts of the case.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • The Board will consider an objection as to improper authentication, but of course our ruling depends on the facts of the case. Pass & Seymour, Inc. v. Syrelec, 224 USPQ 845, 847 (TTAB 1984) (allowing admission of documents that were presented to, and identified by, witness at deposition).
  • The Federal Circuit is the TTAB's primary reviewing court, and its cases may also address registration issues more specifically.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • FOOTENOTE 2 "We note that both opposer and applicant have cited 9th Circuit authority extensively in their briefs. While we believe our conclusions are entirely consistent with those cases, we have relied primarily on precedent from the Federal Circuit, not only because the Federal Circuit is our primary reviewing court, but also because its cases address registration issues more specifically."
  • In certain situations, the filing of a motion for summary judgment may serve as good cause for not responding to discovery requests.
    • Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010)
      • In certain situations, the filing of a motion for summary judgment may serve as good cause for not responding to discovery requests. It is our view, however, that in the circumstances of this case, the pendency of espondent's motion for summary judgment does not constitute good cause for not complying with the Board's order granting discovery sanctions. See Giant Food, Inc., v. Standard Terry Mills, Inc., 229 USPQ at 962 (the Board found that the filing of applicant's motion for summary judgment was a "convenient afterthought to applicant's counsel" and did not constitute good cause for not timely responding to opposer's outstanding discovery requests).
  • Internet search results are not admissible under a notice of reliance, because it is not clear that they are "printed publications."
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • Exhibit C is identified by opposer as "Internet search results," and consists of several pages of materials from the internet. These exhibits (and the remaining internet article in Exhibit B) are not admissible under a notice of reliance, because it is not clear that they are "printed publications," within the meaning of Trademark Rule 2.122(e).
  • Deposition transcripts need to signed by the witness where the parties did not waive the requirement for signature of either transcript.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • Applicant raises an additional objection to opposer's testimony. Neither of the transcripts are signed by the witness, and only one (the testimony of Francis Marier) is signed by the official who administered the oath. As applicant notes, the parties did not waive the requirement for signature of either transcript. While both signatures are required, Trademark Rules 2.123(e)(5) and 2.123(f)(2), we find that applicant waived this objection by its failure to timely raise its objection.
  • A printed publications are generally books and periodicals available to the general public and usually only admissible for what it shows on its face.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • FOOTNOTE 5 ""Printed publications" are generally defined as "books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant under an issue in a proceeding...." TBMP § 704.08 (2d ed. rev. 2004) (and cases cited therein). It should further be noted that a printed publication is only admissible for what it shows on its face; unless it falls within an exception to the hearsay rule it will not be considered to prove the truth of any matter stated in the publication. 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.2 (TTAB 2007)."
  • Evidentiary matters should not be pleaded in or with a complaint or filed at any time other than the petitioner's assigned time for submitting evidence.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009)
      • Finally, the Board notes that on November 17, 2008, petitioner filed several items "in support of" its petition to cancel. However, evidentiary matters should not be pleaded in or with a complaint or filed at any time other than the petitioner's assigned time for submitting evidence, i.e., its assigned testimony period.
  • The TTAB may take judicial notice of dictionary definitions, including online reference works which exist in print format or have regular fixed editions.
    • Galasxy Metal Gear, Inc. v. Direct Access Technology, Inc.
      • FOOTNOTE 1 "Also pending is opposer's July 20, 2009 request that the Board take judicial notice of dictionary definitions for the terms "equipment," "metal" and "gear." Opposer's uncontested motion is accompanied by definitions of such terms from the online dictionary merriamwebster. com. Inasmuch as the Board may take judicial notice of dictionary definitions, including online reference works which exist in print format or have regular fixed editions, opposer's request is granted. See, for example, Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1590 (TTAB 2008) (judicial notice taken of definition from the Merriam-Webster Online Dictionary). See also Syngenta Crop Protection, Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1117 (TTAB 2009); and University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also Trademark Rule 2.127(a)."
  • Submission of a TTAB Order was unnecessary as it is already part of the record, although it is not considered evidence of anything other than the course of this case.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Finally, submission of Exhibit Q, the Board's order of April 19, 2007,11 was unnecessary as it is already part of the record, although it is not considered evidence of anything other than the course of this case.
  • While default judgment is sometimes considered a harsh remedy, it is justified where no less drastic remedy would be effective and there is a strong showing of willful evasion.
    • Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010)
      • We further observe that while default judgment is sometimes considered a harsh remedy, it is justified "where no less drastic remedy would be effective and there is a strong showing of willful evasion." See Trademark Trial and Appeal Board Manual of Procedure ("TBMP") Section 527.01(a) (2d ed. rev. 2004).
  • Parties to TTAB cases occasionally seem to be under the impression that attaching previously-filed evidence to a brief is a courtesy or a convenience to the Board. It is neither.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • FOOTNOTE 4 "Parties to Board cases occasionally seem to be under the impression that attaching previously-filed evidence to a brief (and citing to the attachments, rather than to the original testimony or notices of reliance) is a courtesy or a convenience to the Board. It is neither. When considering a case for final disposition, the entire record is readily available to the panel. Because we must determine whether such attachments are properly of record, Trademark Rule 2.123(l), citation to the attachment requires examination of the attachment and then an attempt to locate the same evidence in the record developed during trial, requiring more time and effort than would have been necessary if citations were directly to the trial record."
  • A copy of the transcript of testimony, together with copies of documentary exhibits, must be served on the adverse party within thirty days after completion of the taking of testimony.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009)
      • In each instance, a copy of the transcript of testimony, together with copies of documentary exhibits, must be served on the adverse party within thirty days after completion of the taking of testimony. See Trademark Rule 2.l25.
  • For inter partes cases commenced on or after August 31, 2007, a pleading may be accompanied by copies of USPTO electronic records showing the status and title of a pleaded registration.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • Exhibit A is a copy of the certificate of Registration No. 2880197, pleaded by opposer as a bar to applicant's registration. This appears to be a copy of the certificate issued by the USPTO to the registrant on August 31, 2004, the date of registration. We agree with applicant that this is not "a copy ... of the registration prepared and issued by the Patent and Trademark Office showing both the current status of and current title to the registration." Trademark Rule 2.122(d)(2) (emphasis added). We add that opposer did not take advantage of any other means to introduce this registration into evidence, see Trademark Rule 2.122(d)(1) (status and title copy of the registration attached to notice of opposition);6 Trademark Rule 2.122(d)(2) (identification and introduction of registration during the taking of testimony), nor did applicant admit or stipulate to the current ownership and validity of this registration. Accordingly, this registration was not properly introduced in evidence, and will not be considered. FOOTNOTE 6 "For inter partes cases commenced on or after August 31, 2007, a pleading may be accompanied by copies of USPTO electronic records showing the status and title of a pleaded registration."
  • A brochure used to provide background information is not a printed publication where it does not appear to be a work of general circulation of the type which would be found in libraries.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • FOOTNOTE 7 "Exhibit B is described in the notice of reliance as a "[b]rochure from Life Zone used to provide background information." While this document may be a publication in the broad sense of the word, it does not appear to be a work of general circulation of the type which would be found in libraries, and is thus not a "printed publication" within the meaning of Trademark Rule 2.122(e)."
  • During the rulemaking process in 1998 the USPTO specifically considered and rejected a proposal to automatically suspend proceedings upon the filing of a potentially-dispositive motion.
    • Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010)
      • In fact, during the rulemaking process in 1998 the USPTO specifically considered and rejected a proposal to automatically suspend proceedings unpon the filing of a potentially-dispositive motion.
  • Where applicant stated in its own notice of reliance that it would rely on the documents submitted by opposer, the TTAB may treat those exhibits as having been stipulated to be part of the record.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Exhibit A is a "[p]rintout of Life Zone's Website." Web pages which are not the equivalent of printed publications are not admissible under a notice of reliance. Paris Glove of Can. Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1858-59 (TTAB 2007); Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998). Nonetheless, in its own notice of reliance, applicant stated that it would rely on the documents submitted by opposer as Exhibits A, J, and M. Accordingly, we treat those exhibits as having been stipulated to be part of the record, although they will not be considered for the truth of the matters asserted therein.
  • During an appeal, the TTAB may take judicial notice of dictionary definitions retrieved from online sources when the definitions themselves are derived from dictionaries that exist in printed form.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • FOOTNOTE 1 "During an appeal, the Board may take judicial notice of dictionary definitions retrieved from online sources when the definitions themselves are derived from dictionaries that exist in printed form. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). Applicant's definitions of "camera," retrieved from the website Dictionary.com, meet this requirement because they are from The Random House Unabridged Dictionary. See also In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1030 n.4 (TTAB 2007)."
  • While exhibits to briefs are not explicitly prohibited by the Trademark Rules, the TTAB will usually ignore them, because they comprise either untimely evidence or unnecessary copies of timely evidence.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Thus, while exhibits to briefs are not explicitly prohibited by the Trademark Rules, the Board will usually ignore them, because they comprise either untimely evidence or unnecessary copies of timely evidence.
  • While exhibits to briefs are not explicitly prohibited by the Trademark Rules, the Board will usually ignore them, because they comprise either untimely evidence or unnecessary copies of timely evidence.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • As the Board recently remarked, "[t]he Board sets trial periods during which the parties may submit evidence by filing notices of reliance or by taking testimony. Evidence submitted outside of the trial periods - including that attached to briefs - is untimely, and will not be considered. See TRADEMARK BOARD MANUAL OF PROCEDURE ("TBMP") § 704.05(b) (2d ed. rev. 2004) (and cases cited therein). Conversely, evidence which was timely filed during the parties' trial periods need not and should not be resubmitted. See ITC Entm't Group Ltd. v. Nintendo of Am. Inc., 45 USPQ2d 2021 (TTAB 1998). Thus, while exhibits to briefs are not explicitly prohibited by the Trademark Rules, the Board will usually ignore them, because they comprise either untimely evidence or unnecessary copies of timely evidence. Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1955 (TTAB 2008) (footnote omitted)."
  • On appeal, the TTAB will review only the correctness of the underlying substantive refusals and will not consider any arguments regarding whether the refusals are procedurally deficient based on their timing.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • FOOTNOTE 3 "Applicant complained that the refusals to register were issued after applicant filed a Statement of Use. On appeal, the Board will review only the correctness of the underlying substantive refusals. We will not consider any arguments regarding whether the refusals are procedurally deficient based on their timing. In re Jump Designs LLC., 80 USPQ2d 1370, 1373 (TTAB 2006); see also TMEP § 1109.08 (7th ed. 2010)."
  • Although the policy set forth by Trademark Rule 2.122(d)(1) as amended liberalizes the nature of the documentation that must be submitted, the plaintiff still must submit with its pleading such documentation.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • Although the policy set forth by Trademark Rule 2.122(d)(1) as amended liberalizes the nature of the documentation that must be submitted, the plaintiff still must submit with its pleading such documentation.
  • A printed publication is only admissible for what it shows on its face; unless it falls within an exception to the hearsay rule it will not be considered to prove the truth of any matter stated in the publication.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • FOOTNOTE 7 "Even if these items were admitted, their use is limited. A printed publication is only admissible for what it shows on its face; unless it falls within an exception to the hearsay rule it will not be considered to prove the truth of any matter stated in the publication. 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.2 (TTAB 2007)."
  • Brochures, radio ads and radio interviews, newsletters, and seminar/conference material which do not appear on their face to be "printed publications," may be inappropriate for submission under a notice of reliance.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Exhibits B (opposer's brochure), C (materials used by opposer in radio ads and radio interviews), D (examples of opposer's periodic newsletters - without indication that they were circulated), and E (materials used by opposer in seminars and conferences showing topics of discussion), do not appear on their face to be "printed publications," and are therefore inappropriate for submission under a notice of reliance.7 See Hunter Publ'g Co. v. Caulfield Publ'g Ltd. 1 USPQ2d 1996, 1997 n.2 (TTAB 1986) (while subject matter may be of interest to the general public, such materials are not necessarily in general circulation).
  • Where the TTAB did not issue an order suspending this case pending disposition of applicant's motion for summary judgment, respondent was obligated to respond to petitioner's discovery requests as ordered by the TTAB.
    • Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010)
      • Because the Board did not issue an order suspending this case pending disposition of applicant's motion for summary judgment until March 30, 2009, respondent was obligated to respond to petitioner's discovery requests as ordered by the Board by the March 13, 2009, deadline set by the Board.
  • Under the amended Trademark Rules applicable to this proceeding, petitioner was required to name in its pretrial disclosures any witness from whom it intended to take testimony, or even might take testimony if needed.
    • Jules Jurgensen/Rhapsody, Inc. v. Peter Baumberger, Cancellation No. 92048667 (TTAB 2009)
      • Under the amended Trademark Rules applicable to this proceeding, petitioner was required to name in its pretrial disclosures any witness, including Mr. Clayman, from whom it intended to take testimony, or even might take testimony if needed.
  • The requirement for parties to make pretrial disclosures was introduced into TTAB inter partes proceedings by amendments to the Trademark Rules, and is applicable to all proceedings which commenced on or after November 1, 2007.
    • Jules Jurgensen/Rhapsody, Inc. v. Peter Baumberger, Cancellation No. 92048667 (TTAB 2009)
      • The requirement for parties to make pretrial disclosures, which are provided for in Fed. R. Civ. P. 26(a)(3), was introduced into Board inter partes proceedings by amendments to the Trademark Rules, and is applicable to all proceedings which commenced on or after November 1, 2007.
  • Only certain materials may be introduced by a notice of reliance; such as, an adverse party's discovery deposition, answer to an interrogatory, or admission to a request for admission, printed publications and official records.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • In a Board proceeding, certain materials may be introduced by filing them, accompanied by a notice of reliance. However, the categories of materials which may be submitted under a notice of reliance are limited, consisting only of an adverse party's discovery deposition, answer to an interrogatory, or admission to a request for admission, Trademark Rule 2.120(j)(3)(i); printed publications;5 and official records, Trademark Rule 2.122(e).
  • The mere filing of a motion for summary judgment (or any other motion which is potentially dispositive of a case) does not, however, automatically suspend a proceeding. Only an order of the TTAB formally suspending proceedings has such effect.
    • Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010)
      • The mere filing of a motion for summary judgment (or any other motion which is potentially dispositive of a case) does not, however, automatically suspend a proceeding..Rather, only an order of the Board formally suspending proceedings has such effect. See Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 965 (TTAB 1986); and Consultants & Designers, Inc. v. Control Data Corp., 221 USPQ 635, 637 n.8 (TTAB 1984).
  • Petitioner's assertion that a person's testimony is critical to its case but was not identified in petitioner's initial disclosures, is one of the relevant circumstances to be considered in determining whether to strike the deposition testimony.
    • Jules Jurgensen/Rhapsody, Inc. v. Peter Baumberger, Cancellation No. 92048667 (TTAB 2009)
      • Petitioner's assertion that Mr. Clayman's testimony is "critical" to its case indicates that petitioner very likely intended to depose this witness at trial, and certainly should have considered him a possible witness. Given this statement, it is also surprising that Mr. Clayman was not identified in petitioner's initial disclosures, and we must consider this fact as one of the relevant circumstances to be considered in determining whether to strike Mr. Clayman's testimony deposition.
  • When determining whether consumers would perceive the term as a trademark or as a description of the goods, the text provided with the search summary results was too scant to be helpful in making that determination and may be given no consideration.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • In this case, because we are determining whether consumers would perceive NKJV as a trademark or as a description of the bibles, the text provided with the search summary results was too scant to be helpful in making that determination. Accordingly, the search summary results did not provide sufficient context to have any probative value and, therefore, we gave those search results no consideration.
  • A party's obligations under a Board order specifically directing it to respond to discovery by a date certain upon pain of sanctions is very different from the routine obligations arising from the service of discovery requests by an opposing party.
    • Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010)
      • A party's obligations under a Board order specifically directing it to respond to discovery by a date certain upon pain of sanctions (or, in this case, further sanctions) is very different from the routine obligations arising from the service of discovery requests by an opposing party.
  • Disclosures require that a party, in advance of the presentation of its testimony, inform its adversary of the names of, and certain minimal identifying information about, the individuals who are expected to, or may, if the need arises, testify at trial.
    • Jules Jurgensen/Rhapsody, Inc. v. Peter Baumberger, Cancellation No. 92048667 (TTAB 2009)
      • These disclosures require that a party, in advance of the presentation of its testimony, inform its adversary of the names of, and certain minimal identifying information about, the individuals who are expected to, or may, if the need arises, testify at trial. See id. at 42257.
  • While the parties may agree to present testimony by affidavit or declaration, absent such a stipulation, testimony in a TTAB proceeding must be presented by way of a testimonial deposition, allowing the opposing party an opportunity for cross-examination of the witness.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • These statements may not be considered because they do not constitute any of the materials which may be submitted under a notice of reliance. Further, to the extent they are being offered to prove the truth of the matters asserted therein, they are hearsay. Fed. R. Evid. 801(c). While the parties may agree to present testimony by affidavit or declaration, absent such a stipulation (and there is no such stipulation of record), testimony in a Board proceeding must be presented by way of a testimonial deposition, allowing the opposing party an opportunity for cross-examination of the witness. Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017 (TTAB 2003); see generally, Trademark Rule 2.123(a)-(b).
  • A party need not, through its mandatory initial disclosures, identify particular individuals as prospective trial witnesses, per se, but must identify each individual likely to have discoverable information that the disclosing party may use to support its claims or defenses.
    • Jules Jurgensen/Rhapsody, Inc. v. Peter Baumberger, Cancellation No. 92048667 (TTAB 2009)
      • FOOTNOTE 1 "A party need not, through its mandatory initial disclosures, identify particular individuals as prospective trial witnesses, per se, but must identify "each individual likely to have discoverable information that the disclosing party may use to support its claims or defenses." See Fed. R. Civ. P. 26(a)(1), made applicable to this proceeding by Trademark Rule 2.116(a). Individuals identified through initial disclosures therefore could reasonably be viewed as possible witnesses."
  • Trademark Rule 2.127(d) did not effect an automatic suspension of this proceeding upon the filing of respondent's motion for summary judgment. Accordingly, respondent's compliance with the Board's Order was not affected by the filing of respondent's motion for summary judgment.
    • Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010)
      • In summary, we find that Trademark Rule 2.127(d) did not effect an automatic suspension of this proceeding upon the filing of respondent's motion for summary judgment. Accordingly, respondent's compliance with the Board's February 11 order was due on or before March 13, and was not affected by the filing of respondent's motion for summary judgment.
  • It is not at all clear that these materials are the electronic counterparts of books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant under an issue in a proceeding.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • It is not at all clear that these materials are the electronic counterparts of "books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant under an issue in a proceeding...." TBMP § 704.08 (2d ed. rev. 2004) and cases cited therein).
  • Case Finding: Where Respondent has been afforded multiple opportunities to comply with the TTAB's discovery rules and orders, but has not done so, there is no reason to assume that, given additional opportunities, respondent will fulfill his obligations as a party to this proceeding.
    • Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010)
      • Respondent has been afforded multiple opportunities to comply with the Board's discovery rules and orders, but has not done so. Petitioner filed its original motion to compel discovery more than two years ago, but has yet to see any of the discovery responses to which it is entitled. There is no reason to assume that, given additional opportunities, respondent will fulfill his obligations as a party to this proceeding.
  • The fact that completion of the ESTTA filing form results in the creation of electronic records in the Board's TTABVUE system, and that such records contain links to information on a pleaded registration, is for administrative ease and it is insufficient to make the pleaded registrations of record.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • The fact that completion of the ESTTA filing form results in the creation of electronic records in the Board's TTABVUE system,13 and that such records contain links to information on a pleaded registration, is for administrative ease and it is insufficient to make the pleaded registrations of record.
  • Case Finding: While there are some elements of the www.freedict.com dictionary that may not enhance its reliability, when the meaning is consistent with applicant's own translation and applicant's own submitted dictionary definition, it is at least evidence that supports the examining attorney's position.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • While we agree with applicant that there are some elements of the www.freedict.com dictionary that may not enhance its reliability, when the meaning is consistent with applicant's own translation and applicant's own submitted dictionary definition, it is at least evidence that supports the examining attorney's position.
  • Online dictionary, which is not from Merriam-Webster's printed reference work, definitions may be acceptable where they appear to be of a type that are not subject to reasonable dispute in that they are capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • Although the pages do not indicate that this online dictionary is the electronic version of Merriam-Webster's printed reference work, the definitions appear to be of a type that are "not subject to reasonable dispute in that [they are] capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned." Fed. R. Evid. 201(b)(1). The Board may take judicial notice of such dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
  • Exhibit D to applicant's notice of reliance comprises several pages of "[a]pplicant's recently created marketing material." These documents may not be submitted by way of a notice of reliance because they are not printed publications; there is no indication of whether or when they were published, and in what publication.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Exhibit D to applicant's notice of reliance comprises several pages of "[a]pplicant's recently created marketing material." These documents may not be submitted by way of a notice of reliance because they are not printed publications; there is no indication of whether or when they were published, and in what publication.
  • Recognizing the increased reliability of the USPTO's publicly available electronic records, advances in technology, and society's evolving dependence on electronic media, the Board amended Trademark Rule 2.122(d)(1), 37 C.F.R § 2.122(d)(1), effective August 31, 2007, to expand the means for proving a pleaded registration.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • Recognizing the increased reliability of the USPTO's publicly available electronic records, advances in technology, and society's evolving dependence on electronic media, the Board amended Trademark Rule 2.122(d)(1), 37 C.F.R § 2.122(d)(1), effective August 31, 2007, to expand the means for proving a pleaded registration.
  • Case Finding: Rather than providing justification for the failure to comply with the Board's order, the filing of respondent's clearly meritless motion for summary judgment, one day before respondent's discovery responses were due, can only be viewed as an effort to further obstruct petitioner's rights to obtain discovery.
    • Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010)
      • Rather than providing justification for the failure to comply with the Board's order, the filing of respondent's clearly meritless motion for summary judgment just one day before respondent's discovery responses were due can only be viewed as an effort to further obstruct petitioner's rights to obtain discovery under the Board's rules, the Board's order compelling discovery, and the Board's order granting discovery sanctions.
  • Documents of any type which may not be submitted with a Notice of Reliance may nonetheless be introduced during a party's testimony period without the need of introduction by a witness, if the parties stipulate to entry of the documents. In such circumstances, the stipulation must be made of record prior to or with the submission of documents.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009)
      • FOOTNOTE 7 "Documents of any type which may not be submitted with a Notice of Reliance may nonetheless be introduced during a party's testimony period without the need of introduction by a witness, if the parties stipulate to entry of the documents. In such circumstances, the stipulation must be made of record prior to or with the submission of documents. The Board encourages stipulations that ease the introduction of evidence."
  • Case Finding: The parties have needlessly inflated the size of the record by their briefing of the motion for summary judgment. Opposer should not have submitted copies of publicly available decisions; applicant should not have submitted copies of materials opposer had already submitted; and it was unnecessary for applicant to submit copies of its application and notice of publication, which are already part of the record for this proceeding.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • FOOTNOTE 5 "The parties have needlessly inflated the size of the record by their briefing of the motion for summary judgment. Opposer should not have submitted copies of publicly available decisions; applicant should not have submitted copies of materials opposer had already submitted; and it was unnecessary for applicant to submit copies of its application and notice of publication, which are already part of the record for this proceeding."
  • Case Finding: The TTAB drew the parties attention to the following: First, respondent has not submitted any evidence that its mark would be perceived by the purchasing public as a double entendre. Second, evidence that a mark had acquired distinctiveness as of the date of registration can include material that came into being after the date of registration provided that such material tended to show that as of the time of registration, the mark had acquired a secondary meaning.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • FOOTNOTE 4 "While we have not considered the parties' respective briefs, we nonetheless draw the parties' attention to the following observations. First, respondent has not submitted any evidence that its ROUGH-IN READY mark would be perceived by the purchasing public as a double entendre. Second, evidence that a mark had acquired distinctiveness as of the date of registration can include "material that came into being after the date of registration provided that such material tended to show that as of the time of registration, the mark had acquired a secondary meaning." Neapco, Inc. v. Dana Corp., 12 USPQ2d 1746, 1747 (TTAB 1989). Third, with respect to respondent's contention that petitioner has not properly pleaded its standing, respondent is referred to Binney & Smith Inc. v. Magic Markers Industries, Inc., 222 USPQ 1003 (TTAB 1984) (allegations that a petitioner is engaged in the manufacture or sale of the same or related products as those listed in respondent's involved registration, or that the product in question is one which could be produced in the normal expansion of petitioner's business, constitute a sufficient pleading of standing)."
  • The opposition must be dismissed unless opposer has established that excusable neglect exists to reopen the periods which have closed or, if not, unless applicant's admissions and the evidence of record by way of the application file are sufficient to establish opposer's claims.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • In view thereof, opposer's pleaded registrations are not of record and cannot be relied upon by opposer in support of his claims, or to establish that dismissal under Trademark Rule 2.132 is not warranted. Thus, the opposition must be dismissed unless opposer has established that excusable neglect exists to reopen the periods which have closed or, if not, unless applicant's admissions and the evidence of record by way of the application file are sufficient to establish opposer's claims.
  • Evidence submitted in connection with applicant's motion for judgment is of record only for consideration of that motion. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • FOOTNOTE 7 "The parties should note that evidence submitted in connection with applicant's motion for judgment is of record only for consideration of that motion. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983); American Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB 1981)."
  • While contact information may previously have been provided to the party or parties receiving a disclosure and, therefore, need not be repeated, the disclosure of the name of each prospective witness still must be made, along with identifying information, a summary of subjects on which the witness will or may testify and a summary of the types of documents or exhibits that will or may be introduced during the testimony.
    • Jules Jurgensen/Rhapsody, Inc. v. Peter Baumberger, Cancellation No. 92048667 (TTAB 2009)
      • While Rule 2.121(e) contemplates that the telephone number and address of a witness (i.e., contact information) may previously have been provided to the party or parties receiving a disclosure and, therefore, need not be repeated, the disclosure of the name of each prospective witness still must be made, along with identifying information, a summary of subjects on which the witness will or may testify and a summary of the types of documents or exhibits that will or may be introduced during the testimony.
  • Case Finding: The remand is for the purpose of considering the applicability of 37 C.F.R. Section 2.127(d) to the facts of this case. Id. Slip Op. at 3.
    • Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010)
      • On March 3, 2010, the U.S. Court of Appeals for the Federal Circuit vacated the Board's decision of August 18, 2009, in which the Board entered default judgment against respondent for his failure to comply with a Board order granting discovery sanctions and remanded the case for further consideration. Benedict v. Super Bakery, Inc., No. 2010-1085 (Fed. Cir. March 3, 2010). The remand is for the purpose of considering the applicability of 37 C.F.R. Section 2.127(d) to the facts of this case. Id. Slip Op. at 3.
  • Moreover, while failure to sign a testimonial deposition transcript is a valid ground for objection, it is not a fatal defect, and said objection is waived unless timely raised.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • Moreover, while failure to sign a testimonial deposition transcript is a valid ground for objection, it is not a fatal defect, and can be cured by the filing of a properly-signed transcript. Had applicant timely raised its objection when the transcript was filed and served, opposer could have filed properly executed copies of the testimony. Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382, 1383 (TTAB 2000). By waiting until after trial, applicant waived its right to object to the unsigned testimony.
  • A plaintiff, with a pleading filed on or after August 31, 2007, is now permitted to submit a current printout of information from the electronic database records of the USPTO showing the current status and title of the registration as an alternative way to make any pleaded registration of record with the pleading or at trial.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • Thus, a plaintiff, with a pleading filed on or after August 31, 2007, is now permitted to submit "a current printout of information from the electronic database records of the USPTO showing the current status and title of the registration" as an alternative way to make any pleaded registration of record with the pleading or at trial.11 See Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1928 (TTAB 2009). FOOTNOTE 11 "The Board also removed the requirement for two copies. Only a single copy is now necessary."
  • The categories of documents which may be submitted under a notice of reliance are limited to discovery depositions; interrogatory responses, admissions or written disclosures of an adverse party; trademark registrations); and printed publications or official records. Other documents must be introduced by having them identified and authenticated through the testimony of a competent witness.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • The categories of documents which may be submitted under a notice of reliance are strictly limited. The procedure may be used to introduce only discovery depositions; interrogatory responses, admissions or written disclosures of an adverse party, Trademark Rule 2.120(j)(3)(1); trademark registrations, Trademark Rule 2.122(d); and printed publications or official records, Trademark Rule 2.122(d). Other documents must be introduced by having them identified and authenticated through the testimony of a competent witness.
  • When any party files a motion for summary judgment, or any other motion which is potentially dispositive of a proceeding, the case will be suspended by the TTAB with respect to all matters not germane to the motion and no party should file any paper which is not germane to the motion except as otherwise specified in the TTAB's suspension order. If the case is not disposed of as a result of the motion, proceedings will be resumed pursuant to an order of the Board when the motion is decided.
    • Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010)
      • Trademark Rule 2.127(d) provides, in relevant part: "When any party files . a motion for summary judgment, or any other motion which is potentially dispositive of a proceeding, the case will be suspended by the Trademark Trial and Appeal Board with respect to all matters not germane to the motion and no party should file any paper which is not germane to the motion except as otherwise specified in the Board's suspension order. If the case is not disposed of as a result of the motion, proceedings will be resumed pursuant to an order of the Board when the motion is decided."
  • A registration of the opposer or petitioner pleaded in an opposition or petition to cancel will be received in evidence and made part of the record if the opposition or petition is accompanied by an original or photocopy of the registration prepared and issued by the USPTO showing both the current status of and current title to the registration, or by a current printout of information from the electronic database records of the USPTO showing the current status and title of the registration.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • The rule now reads, in relevant part, as follows: A registration of the opposer or petitioner pleaded in an opposition or petition to cancel will be received in evidence and made part of the record if the opposition or petition is accompanied by an original or photocopy of the registration prepared and issued by the United States Patent and Trademark Office showing both the current status of and current title to the registration, or by a current printout of information from the electronic database records of the USPTO showing the current status and title of the registration.
  • If pretrial disclosures are improper or inadequate with respect to a witness, an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure.
    • Jules Jurgensen/Rhapsody, Inc. v. Peter Baumberger, Cancellation No. 92048667 (TTAB 2009)
      • Trademark Rule 2.123(e)(3) provides, in part, that if pretrial disclosures are improper or inadequate with respect to a witness, an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. . A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure.." (emphasis added). The rule further provides that such a motion to strike the testimony of a witness "will be decided on the basis of all the relevant circumstances."
  • With the exception of a plaintiff's pleaded registrations, which may be filed along with the petition to cancel or notice of opposition, documents and other exhibits may be made of record only during the testimony period of the offering party in the following two ways: (1) they may be introduced by a witness during the course of a deposition, and (2) they may be submitted pursuant to a notice of reliance filed with the TTAB.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009)
      • Moreover, with the exception of a plaintiff's pleaded registrations, which may be filed along with the petition to cancel or notice of opposition, documents and other exhibits may be made of record only during the testimony period of the offering party in the following two ways: (1) they may be introduced by a witness during the course of a deposition, and (2) they may be submitted pursuant to a notice of reliance filed with the Board if they meet the requirements of Trademark Rule 2.120 or 2.122. See generally, TBMP Chapter 700 (2nd ed. rev. 2004).7 In view thereof, petitioner's November 17, 2008 submission will not be given any further consideration.
  • Even if some prior registrations had some characteristics similar to applicant's application, the PTO's allowance of such prior registrations does not bind the Board or this court.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • Insofar as the third-party registrations for marks consisting of configurations of bottles/containers for various goods are concerned, the Board has often noted that each case must be decided on its own merits. We are not privy to the records of the third-party registration files and, moreover, the determination of registrability of those particular marks by the examining attorneys cannot control our decision in the case now before us. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). ("Even if some prior registrations had some characteristics similar to [applicant's application], the PTO's allowance of such prior registrations does not bind the Board or this court.")
  • That petitioner produced the documents in response to respondent's document production requests during discovery does not automatically make the documents of record.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Here, we find upon review of the contested exhibits that the deponents did indeed refer to the documents during the depositions, as asserted by petitioner. However, as respondent asserts, the documents were not physically present during the depositions, and therefore were not specifically identified and authenticated. That petitioner produced the documents in response to respondent's document production requests during discovery does not automatically make the documents of record. See Trademark Rule 2.122(e), 37 CFR §2.122(e), (providing for the filing of printed publications and official records through a notice of reliance) and 2.123(h), 37 CFR §2.123(h) (providing for the filing of all trial deposition transcripts, with proper indexing and exhibits).
  • No later than fifteen days prior to the opening of each testimony period the party scheduled to present evidence must disclose the name and, if not previously provided, the telephone number and address of each witness from whom it intends to take testimony, or may take testimony if the need arises, general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness.
    • Jules Jurgensen/Rhapsody, Inc. v. Peter Baumberger, Cancellation No. 92048667 (TTAB 2009)
      • Trademark Rule 2.121(e) provides, in pertinent part, "no later than fifteen days prior to the opening of each testimony period . the party scheduled to present evidence must disclose the name and, if not previously provided, the telephone number and address of each witness from whom it intends to take testimony, or may take testimony if the need arises, general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness .."
  • Discussion of production of registration documents under Trademark Rule 2.122(d)(1) prior to amendment.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • The registration copies "prepared and issued by the Patent and Trademark Office showing both the current status of and title to the registration," as contemplated by Trademark Rule 2.122(d)(1) prior to amendment, were printed copies of the registrations on which the USPTO had entered the information contained in its records at the time it prepared and issued the status and title copies. TBMP § 704.03(b)(1)(A). Neither plain copies of the registration certificates nor electronic copies thereof (e.g., printouts of the registrations from the electronic records of the USPTO's automated search system) were sufficient. TBMP § 704.03(b)(1)(A). See also Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 at n.4 (TTAB 2008); and Teledyne Technologies Inc. v. Western Skyways Inc., 78 USPQ 2d 1203, 1205-6 (TTAB 2006).
  • If opposer intends to rely on printouts from the USPTO's electronic databases to introduce his pleaded registrations, opposer is required to electronically attach copies of such printouts as exhibits to its on-line submission of its notice of opposition, which attachments would then form part of the record; or make these registrations properly of record, in the form required by the amended rule, during trial.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • The amendment does not contemplate a plaintiff's mere inputting of a registration number when prompted by ESTTA, the Board's on-line filing system, to list any registration upon which the plaintiff relies. Instead, if opposer in this case intended to rely on printouts from the USPTO's electronic databases to introduce his pleaded registrations, opposer was required to electronically attach copies of such printouts as exhibits to its on-line submission of its notice of opposition, which attachments would then form part of the record; or make these registrations properly of record, in the form required by the amended rule, during trial.12 FOOTNOTE 12 "The procedures specified in Trademark Rule 2.122(d)(1) are not complicated, costly or time-consuming. The Board has the authority to require parties to follow simple, straightforward, and inexpensive procedures to prove ownership and status of pleaded registrations. See Volkswagenwerk Aktiengesellschaft v. Clement Wheel Co., 204 USPQ 76, 81 (TTAB 1979)."
  • Discussion of production of deposition testimony close to discovery deadline and remedies for untimely production of said transcripts.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • Testimony, on the other hand, must be taken during the offering party's testimony period, but need not be submitted during the party's testimony period - and frequently is not - because it can take several days to several weeks to prepare and sign the transcripts. As a result, transcripts are frequently not available for filing and service until after the close of the offering party's testimony period. Instead, the Trademark Rules require that the transcript be filed and served "within thirty days after completion of the taking of that testimony." Trademark Rule 2.125(a). But in the event that the party taking testimony does not meet this deadline, the other party's remedy is not to strike the testimony, but rather to file a motion "to reset such adverse party's testimony and/or briefing periods, as may be appropriate," or for an order compelling service of the transcript. Id. Striking the testimony is only appropriate if the party which took testimony fails to comply with a Board order to serve the other party. Id.
  • Pretrial disclosure of a witness under this subsection does not substitute for issuance of a proper notice of examination and illustrates that a pretrial disclosure is an independent requirement of the rules and not one that can be ignored simply because some information about a testifying individual may be known by the adverse party or parties.
    • Jules Jurgensen/Rhapsody, Inc. v. Peter Baumberger, Cancellation No. 92048667 (TTAB 2009)
      • Petitioner's arguments as to why Mr. Clayman's testimony should now be considered are not persuasive. Petitioner failed to comply with the rules or to provide a satisfactory explanation as to why it did not comply with them. Petitioner's contention that any prejudice to respondent was due to respondent's own inaction, in that respondent failed to depose Mr. Clayman during discovery, and is not due to any action by petitioner, is not welltaken. Petitioner's further assertion that respondent "was aware of Mr. Clayman" prior to petitioner's taking of his testimony deposition through such actions as Mr. Clayman's signing the petition to cancel cannot substitute for petitioner's disclosing Mr. Clayman as a witness. Cf. Trademark Rule 2.121(e) ("Pretrial disclosure of a witness under this subsection does not substitute for issuance of a proper notice of examination under § 2.123(c) or § 2.124(b)."), which illustrates that a pretrial disclosure is an independent requirement of the rules and not one that can be ignored simply because some information about a testifying individual may be known by the adverse party or parties.
  • A search summary of Internet search results 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., Serial No. 76681269 (TTAB 2011)
      • We note that in the October 16, 2008 Office Action, the examining attorney submitted a search summary of results from the GOOGLE search engine. A search summary of Internet search results has little probative value, because such a list does not show the context in which the term is used on the listed web pages. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 967, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (GOOGLE® search results that provided very little context of the use of ASPIRINA deemed to be "of little value in assessing the consumer public perception of the ASPIRINA mark"); In re Tea and Sympathy, Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008) (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 (TTAB 2006) (Board rejected 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. Inc., 79 USPQ2d 1048 (TTAB 2006); In re Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB 2002); In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002).
In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011) Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010) Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010) Dating DNA, LLC v. Imagini Holdings, Ltd., Opposition No. 91185884 and 91191912 (TTAB 2010) In re Nielsen Business Media, Inc. Serial No. 77223725 and 77223738 (TTAB 2010) In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010) Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010) Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS", Opposition No. 91182207 and 91184467 (TTAB 2010) Byer California v. Clothing for Modern Times Ltd., Opposition No. 91189238 (TTAB 2010) In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010) In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010) Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010) In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010) Super Bakery, Incorporated v. Ward E. Benedict, Cancellation No. 92047859 (TTAB 2010) Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009) Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009) Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009) Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009) In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009) Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009) In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009) Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009) In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009) In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009) Galaxy Metal Gear, Inc. v. Direct Access Technology, Inc., Opposition No. 91184213 (TTAB 2009) Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009) Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008) In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008) The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008) M.C.I. Foods, Inc. v. Brady Bunte, Cancellation No. 92045959 & 92046056, (TTAB 2008) Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008) Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008) Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008) In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008) In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008) Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008) Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007) In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007) In re Association of the United States Army, Serial No. 76578579, (TTAB 2007) In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007) In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007) In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007) In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007) In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007) In re The W.W. Henry Company, L.P., Serial No. 78401595, (TTAB 2007) Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007) Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007) ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007) Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007) The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007) Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007) In re Aerospace Optics, Inc., Serial No. 76171288, (TTAB 2006) In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006) In re Classic Media, Inc., Serial No. 78278235, (TTAB 2006) In re Finisar Corporation, Serial No. 76300876, (TTAB 2006) In re Grass GmbH, Serial No. 76544861, (TTAB 2006) In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006) In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006) In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006) In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006) In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006) In re Vanilla Gorilla, L.P., Serial No. 76561135, (TTAB 2006) Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006) Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006) Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006) Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006) Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005) In re The Place, Inc., Serial No. 76436826, (TTAB 2005) In re Cell Therapeutics, Inc., Serial No. 75/313,795, (TTAB 2003) In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003) Interpayment Services Limited, and Travelex Global and Financial Services Ltd. v. Docters & Thiede, Opposition No. 119,852, (TTAB 2003) In re American Institute of Certified Public Accountants, Serial No. 75/626,097, (TTAB 2002) In re Fitch IBCA, Inc., Serial No. 75/628,232, (TTAB 2002) Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., Opposition No. 121,784, (TTAB 2002) In re Broyhill Furniture Industries, Inc., Serial No. 75/473,959, (TTAB 2001) In re Styleclick.com Inc., Serial No. 75/459,910, (TTAB 2000) In re Sunburst Products, Inc., Serial No. 74/300,843, (TTAB 1999) In re Dos Padres, Inc., Serial No. 75/075,701, (TTAB 1998) In re Patent & Trademark Services, Inc., Serial No. 75/009,424, (TTAB 1998) Grand Total
Dating DNA, LLC v. Imagini Holdings, Ltd., ___ USPQ2d ___, 2010 WL 985361 at * 4 (TTAB Feb. 22, 2010) 1
Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031 (TTAB 2010) 1
Benedict v. Super Bakery, Inc., No. 2010-1085 (Fed. Cir. March 3, 2010) 1
Ak-Chin Indian Community v. United States, 85 Fed. Cl. 397 (Ct. Cl. 2009) 1
Amazon Technologies, Inc. v. Wax, __ USPQ2d ___, TTAB Opposition No. 91187118 (TTAB Nov. 4, 2009) 1
eSungjin Fo-Ma, Inc. v. Chainworks, Inc., Civ. Act. No. 08-CV-12393, 2009 U.S. Dist. LEXIS 58059, 2009 WL 2022308 (E.D. Mich. July 8, 2009) 1
Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859 (TTAB 2009) 1
Hiraga v. Arena, 90 USPQ2d 1102 (TTAB 2009) 1
Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443 (TTAB 2009) 1
Panda Travel, Inc. v. Resort Option Enterprises, Inc., __ USPQ2d ___, 2009 WL 5253036 (TTAB Dec. 29, 2009) 1
Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926 (TTAB 2009) 2
Syngenta Crop Protection, Inc. v. Bio-Chek LLC, 90 USPQ2d 1112 (TTAB 2009) 1
Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008) 1
HighBeam Marketing LLC v. Highbeam Research LLC, 85 USPQ2d 1902 (TTAB 2008) 1
Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953 (TTAB 2008) 2
M.C.I. Foods Inc. v. Bunte, 86 USPQ2d 1044 (TTAB 2008) 1
In re Spirits International, 86 USPQ2d 1078 (TTAB 2008) 1
Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526 (TTAB 2008) 1
In re Tea and Sympathy, Inc., 88 USPQ2d 1062 (TTAB 2008) 1
Alfa Corp. v. OAO Alfa Bank, 475 F.Supp.2d 357 (S.D.N.Y. 2007) 1
Novak v. Tucows Inc., No. 06-CV-1909, 2007 WL 922306 (E.D.N.Y. March 26, 2007) 1
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007)  4
In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) 1
In re IP Carrier Consulting Group, 84 USPQ2d 1028 (TTAB 2007) 2
Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 110 (TTAB 2007) 1
Paris Glove of Can. Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856 (TTAB 2007) 5
Quality Candy Shoppes/Buddy Squirrel of Wisconsin Inc. v. Grande Foods, 90 USPQ2d 1389 (TTAB 2007) 1
Sunrider Corp. v. Raats, 83 USPQ2d 1648 (TTAB 2007) 1
7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715 (TTAB 2007) 2
In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006) 1
In re Jump Designs LLC, 80 USPQ2d 1370 (TTAB 2006) 1
In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006) 2
In re Thomas, 79 USPQ2d 1021 (TTAB 2006) 1
St. Luke's Cataract and Laser Institute, P.A. v. Sanderson, 70 Fed. R. Evid. Serv. 174 No. 8:06-CV-223, 2006 WL 1320242 (M.D.Fla. May 12, 2006) 1
Teledyne Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203, 1210 (TTAB 2006), aff'd unpublished opinion, Appeal Nos. 2006-1366 and 1367 (Fed. Cir. Dec. 6, 2006) 1
E. & J. Gallo Winery v. Cantine Rallo, S.p.A., No. 1:04cv5153 OWW DLB, 2006 U.S. Dist. LEXIS 84048, 2006 WL 3251830 (E.D. Cal. Nov. 8, 2006) 1
In re International Business Machines Corp., 81 USPQ2d 1677 (TTAB 2006) 1
In re King Koil Licensing Co., 79 USPQ2d 1048 (TTAB 2006) 1
Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005) 1
In re Sulfuric Acid Antitrust Litigation, 231 F.R.D. 351 (N.D. Ill. 2005) 1
Enzo Biochem Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616 (Fed. Cir. 2005) 1
In re Planalytics Inc., 70 USPQ2d 1453 (TTAB 2004) 1
Genesco Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003) 1
In re Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003) 4
In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629 (Fed. Cir. 2003) 1
Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017 (TTAB 2003) 2
In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002) 2
In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002) 1
In re Remacle, 66 USPQ2d 1222 (TTAB 2002) 1
Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782 (TTAB 2002) 1
In re A La Vieille Russie Inc., 60 USPQ2d 1895 (TTAB 2001) 1
In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) 1
Chianti Ruffino Esportazione Vinicola Toscana S.p.A. v. Colli Spolenti Spoletoducale SCRL, 59 USPQ2d 1383 (TTAB 2001) 1
Wagner v. Dryvit Systems, Inc., 208 F.R.D. 606 (D. Neb. 2001) 1
In re Nett Designs Inc., 236 F.3d 1339, 957 USPQ2d 1564 (Fed. Cir. 2001) 6
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) 1
In re Lamb-Weston Inc., 54 USPQ2d 1190 (TTAB 2000) 1
Pilates Inc. v. Current Concepts Inc., 120 F.Supp.2d 286, 57 USPQ2d 1174 (S.D.N.Y. 2000) 1
Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Mfg. Co., 55 USPQ2d 1848 (TTAB 2000) 1
Chocolate Comercio de Roupas Ltda. v. China Trade & Research, Inc., Op. No. 91104145, (TTAB Apr. 14, 2000) 1
Hard Rock Cafe International (USA) Inc. v Elsea, 56 USPQ2d 1504 (TTAB 2000) 2
No Fear, Inc. v. Rule, 54 USPQ2d 1551 (TTAB 2000) 2
Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382 (TTAB 2000) 1
Harjo v. Pro Football Inc., 50 USPQ2d 1705 (TTAB 1999) 2
In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999) 3
In re Urbano, 51 USPQ2d 1776 (TTAB 1999) 1
Novamedix Ltd. v. NDM Acquisition Corp., 166 F.3d 1177, 49 USPQ2d 1631 (Fed. Cir. 1999) 1
Elec. Indus. Ass'n v. Potega, 50 USPQ2d 1775 (TTAB 1999) 1
In re Couture, 60 USPQ2d 1317 (TTAB 1999) 1
Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998) 2
In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) 1
In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998) 1
In re Pingel Enterprise Inc., 46 USPQ2d 1811 (TTAB 1998) 1
In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998) 1
Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998) 9
Fossil Inc. v. Fossil Group, 49 USPQ2d 1452 (TTAB 1998) 1
Atlanta-Fulton County Zoo Inc. v. DePalma, 45 USPQ2d 1858 (TTAB 1998) 1
HKG Industries Inc. v. Perma-Pipe Inc., 49 USPQ2d 1156 (TTAB 1998) 1
Jain v. Ramparts, Inc., 49 USPQ2d 1429 (TTAB 1998) 1
ITC Entm't Group Ltd. v. Nintendo of Am. Inc., 45 USPQ2d 2021 (TTAB 1998) 2
Pumpkin Ltd v. The Seed Corps, 43 USPQ2d 1582 (TTAB 1997) 1
Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff'd, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998) 1
Stiller v. Arnold, 167 F.R.D. 68 (N.D. Ind. 1996) 1
Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995) 1
Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748 (TTAB 1995) 1
In re John Harvey & Sons Ltd., 32 USPQ2d 1451 (TTAB 1994) 1
In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994) 1
Levi Strauss & Co. v. R. Josephs Sportwear Inc., 36 USPQ2d 1328 (TTAB 1994) 1
Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993) 1
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993) 3
In re BDH Two Inc., 26 USPQ2d 1556 (TTAB 1993) 1
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993) 1
Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846 (Fed. Cir. 1993) 1
Pioneer Investment Services Company v. Brunswick Associates Limited Partnership, 507 U.S. 380 (1993) 1
Levi Strauss & Co. v. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993) 1
General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270 (TTAB 1992) 1
In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) 2
In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992) 2
In re Medical Disposables Co., 25 USPQ2d 1801 (TTAB 1992) 1
Institut National Des Appellations D'Origine v. Vintners Int'l Co., 958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992) 1
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992) 2
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321 (TTAB 1992) 1
In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990) 2
Miss America Pageant v. Petite Productions Inc., 17 USPQ2d 1067 (TTAB 1990) 1
Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040 (TTAB 1989) 1
In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff'd 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) 1
Murphy Door Bed Co. v. Interior Sleep Systems Inc., 874 F.2d 95, 10 USPQ2d 1748 (2d Cir. 1989) 1
Neapco, Inc. v. Dana Corp., 12 USPQ2d 1746 (TTAB 1989) 1
B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir. 1988) 1
In re Budge Manufacturing Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988) 1
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988) 3
Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895 (TTAB 1988) 1
SBS Products Inc. v. Sterling Plastic & Rubber Products Inc., 8 USPQ2d 1147 (TTAB 1988) 1
Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988) 1
In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987) 1
In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987) 1
In re Societa Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987) 1
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987) 2
Giant Food Inc. v. Standard Terry Mills Inc., 229 USPQ 955 (TTAB 1986) 1
Hunter Publishing Co. v. Caulfield Publishing, Ltd., 1 USPQ2d 1996 (TTAB 1986) 2
In re Men's International Professional Tennis Council, 1 USPQ2d 1917 (TTAB 1986) 4
In re Shapely Inc., 231 USPO 72 (TTAB 1986) 1
In re Loew's Theatres Inc., 749 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) 1
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) 1
In re Northland Aluminum Products, 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) 1
Int'l Assn. of Fire Chiefs v. H. Marvin Ginn Corp., 225 USPQ 940 (TTAB 1985), rev'd on other grounds, 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) 1
Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905 (TTAB 1985) 1
Binney & Smith Inc. v. Magic Marker Industries Inc., 222 USPQ 1003 (TTAB 1984) 1
Anheuser-Busch, Inc. v. Major Mud & Chemical Co., Inc., 221 USPQ 1191 (TTAB 1984) 1
Jeanne- Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58 (TTAB 1984) 1
Pass & Seymour, Inc. v. Syrelec, 224 USPQ 845 (TTAB 1984) 1
Consultants & Designers, Inc. v. Control Data Corp., 221 USPQ 635 (TTAB 1984) 1
In re Capital Formation Counselors Inc., 219 USPQ 916 (TTAB 1983) 1
Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983) 1
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co. Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) 21
In re Hub Distributing Inc., 218 USPQ 284, 285-86 (TTAB 1983) 1
Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982) 1
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co. Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) 5
American Meat Institute v. Horace W. Longacre Inc., 211 USPQ 712 (TTAB 1981) 2
In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981) 1
Sprague Electric Co. Electrical Utilities Co., 209 USPQ 88 (TTAB 1980) 1
Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579 (TTAB 1979) 2
Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448 (TTAB 1979) 1
Glamorene Products Corp. v. Earl Grissmer Co., Inc., 203 USPQ 1090 (TTAB 1979) 1
Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 201 USPQ 410 (TTAB 1979) 1
Volkswagenwerk Aktiengesellschaft v. Clement Wheel Co., 204 USPQ 76 (TTAB 1979) 1
Mead Johnson & Company v. Peter Eckes, 195 USPQ 187 (TTAB 1977) 2
General Electric Company v. Graham Magnetics Inc., 197 USPQ 690 (TTAB 1977)  1
Beecham Inc. v. Helene Curtis Industries, Inc., 189 USPQ 647 (TTAB 1976) 1
Wagner Electric Corp. v. Raygo Wagner, Inc., 192 USPQ 33 (TTAB 1976) 1
In re Semel, 189 USPQ 285 (TTAB 1975) 1
National Aeronautics & Space Administration v. Record Chemical Co., 185 USPQ 563 (TTAB 1975) 1
The Conde Naste Publications Inc. v. Miss Quality Inc., 507 F.2d 1404, 184 USPQ 422 (CCPA 1975) 1
In re Duofold Inc., 184 USPQ 638 (TTAB 1974) 2
Exxon Corp. v. Fill-R-Up Systems, Inc., 182 USPQ 443 (TTAB 1974) 1
Polaroid Corporation v. Opto Specs, Ltd., 181 USPQ 542 (TTAB 1974) 1
AMF Inc. v. American Leisure Products Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973) 1
Smith Brothers Manufacturing Co. v. Stone Manufacturing Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973) 1
American Optical Corporation v. Autotrol Corporation, 175 USPQ 725 (TTAB 1972) 1
Gravel Cologne Inc. v. Lawrence Palmer Inc., 469 F.2d 1397, 176 USPQ 123 (CCPA 1972) 1
I.C.E. Corp. v. Armco Steel Corp., 250 F.Supp. 738, 743, 148 USPQ 537 (SDNY 1966) 1
Conde Nast Publications Inc. v. American Greetings Corp., 329 F.2d 1012, 141 USPQ 249 (CCPA 1964) 1
In re Hartop & Brandes, 311 F.2d 249, 135 USPQ 419 (CCPA 1962) 1
Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330 (CCPA 1953) 1
Grand Total 6 2 6 6 1 5 21 5 8 1 2 4 2 3 3 6 1 6 3 5 1 1 3 1 3 9 2 1 7 3 2 7 2 1 2 2 4 2 2 5 2 3 2 2 1 2 4 4 1 5 1 1 2 4 2 2 2 2 2 5 3 1 1 1 2 1 1 1 2 1 1 2 4 1 3 1 4 2 5 242
No Statutes Listed.

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