T.M.E.P. § 710.01
Evidence Supporting Refusal or Requirement
Executive summary:
This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.
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710.01 Evidence Supporting Refusal or Requirement
The examining attorney should support his or her action with relevant evidence whenever appropriate.
All evidence that the examining attorney relies on in making any requirement or refusal to register must be placed in the record and copies must be sent to the applicant.
In appropriate cases, the examining attorney may also present evidence that may appear contrary to the USPTO's position, with an appropriate explanation as to why this evidence was not considered controlling. In some cases, this may foreclose objections from an applicant and present a more complete picture if there is an appeal. Cf. In re Federated Department Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987).
710.01(a) Evidence From Research Database
If evidence is obtained from a research database, the record should include an indication of the specific search that was conducted. The record should indicate the libraries and/or files that were searched and the results. If the examining attorney does not review all of the documents the search locates, the record should indicate the number of documents that were reviewed. The printout (or electronic equivalent) that summarizes the search should be made a part of the record and will provide most of this information. Information not indicated on the printout, such as the number of documents viewed, should be stated in narrative in the Office action. The Office action should include a citation to the research service, indicating the service, the library and the file searched, and the date of the search (e.g., "LEXIS(r), New and Business, All News, Jan. 5, 2005)").
When evidence is obtained from a research database, the examining attorney does not have to make all stories of record. It is sufficient to include only a portion of the search results, as long as that portion is a representative sample of what the entire search revealed. In re Vaughan Furniture Co. Inc., 24 USPQ2d 1068, 1069 n. 2 (TTAB 1992). See also In re Federated Department Stores Inc., 3 USPQ2d 1541, 1542 n. 2 (TTAB 1987).
710.01(b) Internet Evidence
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. See In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-71 (TTAB 1998). When making this evidence part of the record, the examining attorney should provide complete information as to the source or context of the evidence. Any information that would aid a party in locating the document retrieved through Internet research should be included in the citation (e.g., the complete URL address of the website, the time and date the search was conducted, and the terms searched). This can often be done by printing out the pages and noting the date the printouts were run.
Evidence of actual use of a phrase by a website has far greater probative value than the summary results of a search for key words, which may indicate only that the words in a phrase appear separately in the website literature. In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002).
When a document found on the Internet is not the original publication, then the examining attorney or Trademark Law Library staff should try to obtain a copy of the originally published document, if practicable. Electronic-only documents are considered to be original publications, and scanned images are considered to be copies of original publications. See notice at 64 Fed. Reg. 33056, 33063 (June 21, 1999).
710.01(c) Record Must Be Complete Prior to Appeal
The record in any application must be complete prior to appeal. 37 C.F.R. 2.142(d). Accordingly, if an examining attorney or applicant attempts to introduce new evidence at the time of the appeal, the new evidence will generally be excluded from the record. TBMP §§1207 et seq. See Rexall Drug Co. v. Manhattan Drug Co., 284 F.2d 391, 128 USPQ 114 (C.C.P.A. 1960); In re Psygnosis Ltd., 51 USPQ2d 1594 (TTAB 1999). However, the Board may consider evidence submitted after appeal, despite its untimeliness, if the nonoffering party: (1) does not object to the evidence; and (2) discusses the evidence or otherwise treats it as being of record. See TBMP §1207.03 and cases cited therein. Therefore, examining attorneys and applicants should either consider or object to new evidence.
Whenever an examining attorney objects to evidence submitted by an applicant, the objection should be raised as soon as possible and continued in the examining attorney's brief, or the Board may consider the objection to be waived. In re Broyhill Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n. 3 (TTAB 2001).
If the applicant or examining attorney wishes to introduce new evidence at the time of or during appeal, the party seeking to introduce the new evidence may request the Board to suspend the appeal and remand the case. See TMEP §§1504.05 et seq. and TBMP §1207.02 regarding requests for remand.
The Board may take judicial notice of definitions from printed dictionaries, even if they are not made of record by the applicant or examining attorney prior to appeal. In re Dodd International, Inc., 222 USPQ 268 (TTAB 1983); In re Canron, Inc., 219 USPQ 820 (TTAB 1983); TBMP §1208.04. However, the better practice is to copy the relevant material to ensure that it is in the record. Definitions from online dictionaries and other Internet evidence must be made of record prior to appeal, so that the applicant will have the opportunity to check the reliability of the evidence and offer rebuttal evidence. In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999). The examining attorney should include a copy of the title page of the dictionary. In re Gregory, 70 USPQ2d 1792 (TTAB 2004) (Board declined to take judicial notice of dictionary definitions submitted with examining attorney's appeal brief, where neither the photocopied pages nor the examining attorney's brief specified the dictionaries from which the copies were made).