Internet Evidence and Trademark Prosecutions and Proceedings
Trademark applicants must be careful when submitting Internet evidence in trademark prosecutions and proceedings. Information from the Internet is admissible as evidence in trademark matters before the United States Patent & Trademark Office ("USPTO") and before the Trademark Trial and Appeal Board ("TTAB" or the "Board"). Such evidence will be considered when evaluating how a term is being used by the public and to generally evaluate a trademark. The amount of weight given to Internet evidence will vary from case to case because sometimes the source is unknown or unreliable.
When Examining Attorneys include Internet evidence as part of the record, they are required to provide complete information as to the source or context of the evidence. Complete URL addresses of websites should be indicated, as well as the time and date the search was conducted and the terms searched. The Examining Attorney should attach copies of the website pages that show how the term is actually used.
Often trademark applicants will conduct an Internet search for a term and produce the computer print out as evidence that a subject mark is diluted because it appears in multiple search results. A list of Internet search results has little probative value if the list does not show the context in which the term is used on the webpages. See Bayer Aktiengesellschaft, 488 F.3d 960, 967, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007), where it was held that a GOOGLE® search would be entitled to little probative value in assessing public perception of the mark ASPIRINA since there was insufficient evidence showing context of use.
Websites such as Wikipedia® are controversial. The USPTO and the Board recognize that there are issues with reliability due to the collaborative nature of the website. Any member of the public can edit an article. Therefore, at any given time an entry or article can be in the middle of an edit or a controversial rewrite. However, over the course of the last several years, Wikipedia's® website has gained credibility in the media and has proven to be a relatively reliable source.
The USPTO and TTAB have adopted the position that such evidence is admissible, but the weight of the evidence will depend on the amount of corroborating evidence or the lack of such evidence. The Commissioner for Trademarks has indicated that the Examining attorneys have received training and instruction regarding collaborative websites. If you are introducing evidence from Wikipedia's® website, it is always a prudent policy to submit other reliable sources and evidence in support.
The Board has stated in the past that it will consider evidence from Wikipedia's ® website as long as the non-offering party receives an opportunity to rebut the evidence either with other sources or is allowed to question the accuracy or reliability of the evidence. In furtherance of this policy, the Board has refused to take judicial notice of the evidence from Wikipedia's® website. Since the Board has a policy of taking judicial notice of dictionary definitions, encyclopedia entries, and commonly known facts, an applicant requested the same policy be applied to the information found on Wikipedia's® website. See In re Steven Madden Ltd., Serial No. 85313681 (November 29, 2013) [not precedential]. Since evidence gathered from Wikipedia's® website may be questioned regarding its accuracy, the Board concluded that it will not take judicial notice of information submitted as evidence from this source.
It should be noted that an Examining Attorney will generally take the opportunity to review the applicant's website even if the applicant does not include the URL address in the trademark application. Therefore, we recommend that trademark practitioners and trademark applicants carefully review the applicant's website for proper trademark use and for accurate information regarding the goods and services. Further, the Board has held that even if the applicant's basis for trademark registration is intent-to-use, the applicant's current website can be used to evaluate the trademark application. See In re Promo Ink, U.S.P.Q.2d 1301, 1303, 2006 WL 478994 (TTAB 2006). If you have questions regarding the type of evidence that can be submitted in support of a trademark application or proceeding, please contact our office for a courtesy consultation.