New Rules for Trademark Prosecutions
Precedential decision 18 extends the rule established in Safer Inc. v. OMS Inv. Inc., 94 USPQ2d 1031 (TTAB 2010) pertaining to Internet evidence. After Safer, a rule was codified in Trademark Rule 2.122(e) for examining attorneys. In this recent precedential decision, In re Mueller Sports Medicine, Inc. Serial No. 87209946 (May 16, 2018) [precedential], the Trademark Trial and Appeal Board (the "Board" or the "TTAB") declared that both Examining Attorneys and applicants must include the name of the website URL, and the date it was downloaded when submitting Internet evidence into the record. If this information is printed on the webpage this is acceptable or it would be proper to provide information in an Office Action or in an applicant's response.
Moving forward, if an Examining Attorney does not include the website address (website URL) and the date the website was accessed, and the applicant fails to object, the Board will consider the evidence for whatever probative value it possesses. As mentioned above, In re Mueller Sports Medicine, extends this rule to applicants as well. Examiners must object to improper submissions in the first Office Action. Otherwise, the Board may consider the objection waived.
The reasoning for the rule is that if only an address was provided or a mere hyperlink, the particular information cited from the URL could be deleted or modified at a later date. This would prevent the responding party from refuting the information. In addition, if the applicant does not properly submit evidence, the Examiner must advise the applicant of the appropriate means to make Internet evidence of record. For example, a list of Internet search results generally has little probative value because typically it will not show the context in which the term is used. Instead parties should attach copies of the website pages that show how the term is actually used.
This rule is quite similar to the scenario where an applicant improperly submits a list of third party registrations. Trademark Manual of Examining Procedure ("TMEP") Section 710.03 requires that a copy of a third party registration be submitted or there must be submission of the complete printout from one of the USPTO's automated systems (X-Search, TESS, TSDR, or TRAM). See In re Ruffin Gaming LLC, 66 USPQ2d 1924, (TTAB 2002). See also our webpage entitled, Internet Evidence And Trademark Prosecutions and Proceedings, for more on this topic. If there is an improper submission with regard to third party registrations, the Examining Attorney must object in the first Office Action, or else the Board will consider the objection waived. If the applicant files an appeal, the Examining Attorney will continue the objection to the evidence in the appeal brief.
Keep in mind the TMEP sets forth various rules that Examiners must adhere to in ex parte proceedings. All evidence that an Examining Attorney relies on must be placed in the record, and a copy must be sent to the applicant. However, if the Examining Attorney reviews a research database, and evidence is obtained therewith, the Examining Attorney does not have to make all the information of record. It's sufficient to include a portion of the search results, as long as the portion is a representative sample of what the entire search revealed. See TMEP § 710.01(a).
Another new rule involving Internet evidence comes from the Board's recent 19th precedential decision, see In re Canine Caviar Pet Foods, Inc., Serial No. 85710350 (May 17, 2018) [precedential]. At issue was evidence submitted by the Examining Attorney from a webpage. In Canine Caviar Pet Foods, Inc., the Board ruled that website evidence from an inactive website was not probative. The Board pointed out the general rule that evidence from a cached website may be admissible if there is a date and URL on the webpage, and no contrary evidence that the URL is inactive. The problem in this case, was the website was no longer active. It is critical that applicants know the rules pertaining to ex parte proceedings at the USPTO to effectively advocate. If you have questions pertaining to a trademark prosecution, please do not hesitate to contact our office for a courtesy consultation.