Westchester Women's Bar Association

Evidence in TTAB Cases

There are two primary ways to submit evidence in a Trademark Trial and Appeal Board ("Board" or "TTAB") proceeding: (1) through testimony depositions taken during the testimony period; and (2) through a notice of reliance during the offering party's testimony period. Board proceedings adhere to the following rules of evidence: (1) Trademark Rules Of Practice (Trademark Rules set forth in Title 37 of the Code of Regulations); (2) Federal Rules of Evidence, and (3) certain provisions of the Federal Rules of Civil Procedure. Once the discovery phase is completed, the testimony periods commence for each party. For more information on discovery in Board proceedings see our firm page entitled, An Overview Of Discovery In Board Proceedings.

The parties will each have a period of time to take testimony. If either party wants to modify the time periods set, it must be done by consent of all parties and approved by the Board, or upon motion by order of the Board. The party making the motion should also request suspension of the proceeding pending a ruling on the motion. However, if a motion to reschedule is denied by the Board, the deadlines will remain as set. If the parties are stipulating to reset certain dates for pretrial disclosure or for testimony periods, a stipulation must be filed with the Board. It should set forth the new dates as agreed to by the parties, be signed by the parties and then served on all parties. In order to reset dates in the Trial Order (Institution Order), there must be good cause such as the parties being involved in settlement discussions or if there is a discovery dispute.

The testimony periods for both the plaintiff and defendant will be 30 days long. Plaintiff will also have a rebuttal testimony period of 15 days, where the plaintiff can take additional testimony and file a notice of reliance to rebut the defendant's evidence. Rebuttal evidence must be in opposition to the defendant's evidence, and not to simply bolster the plaintiff's case in chief. It should be pointed out that Board proceedings differentiate between depositions (which can be oral or written) taken during the discovery phase and those taken during the testimony period. Depositions taken during discovery may be submitted in part under a notice of reliance. Testimony depositions are taken during the testimony period, are filed with a notice of filing of testimony and must be submitted in whole together with exhibits.

The other means of submitting evidence is with a notice of reliance. A notice of reliance must identify the evidence and describe why the evidence is relevant to the proceeding. The following evidence can be submitted under a notice of reliance: (1) discovery depositions, discovery responses of an adverse party (answers to interrogatories and admissions), trademark registrations, printed publications, and official records. However, documents that are produced in response to a document production request cannot be submitted under a notice of reliance, unless it is a printed publication or an official record. Printed publications include, magazine articles, newspaper articles, and dictionary definitions that are generally available to the public or the digital form of printed matter if available through the Internet. Internet print outs must display the date of publication or the date it was accessed and printed AND the URL.

Examples of documents that may be produced in response to a document production request include, correspondence, marketing plans, product literature or brochures. As mentioned above, typically these types of documents cannot be submitted through a notice of reliance (unless publically available over the Internet). Instead, these documents will need to be submitted into the record by one of the following methods: (1) identified as an exhibit through a discovery deposition; (2) identified at a testimony deposition; (3) through a request for admission, inquiring about the genuineness of the document, once the opponent produces the document; or (4) through the opponent's interrogatory answers, if they reference the documents in question and make the documents part of the answer. If that is the case, then the interrogatory answer along with the documents can be filed under a notice of reliance.

Although Internet materials can be introduced into the record with a notice of reliance, it can only be admissible for what the document shows on its face if there is no supporting testimony; and not for the truth of the matters stated in the Internet materials. For example, Internet material can be used to show how a particular term is used in a descriptive or generic manner. One can increase the probative value of the website evidence by introducing testimony of a knowledgeable witness who testifies to the number of consumer visits to the website. Keep in mind you can also submit third party registrations with a notice of reliance because they are official records. Third party registrations are usually introduced to show a party's mark is weak, and entitled to a narrow scope of protection. The above is a summary of some of the salient points in connection with evidence in a Board proceeding. If you have questions, pertaining to Board proceedings, please contact the firm for a courtesy consultation.

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