T.M.E.P. § 710.03
Evidence of Third-Party Registrations
Executive summary:
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710.03 Evidence of Third-Party Registrations
The Trademark Trial and Appeal Board does not take judicial notice of registrations, and the submission of a list of registrations does not make these registrations part of the record. In re Duofold Inc., 184 USPQ 638 (TTAB 1974). Furthermore, the submission of a copy of a commercial search report is not proper evidence of third-party registrations. In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).
To make registrations of record, soft copies of the registrations or the complete electronic equivalent (i.e., printouts or electronic copies of the registrations taken from the electronic search records of the USPTO) must be submitted. Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998); In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n. 3 (TTAB 1994); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992).
If the applicant submits improper evidence of third-party registrations, the examining attorney should object to the evidence in the next Office action, or the Board may consider the objection to be waived. See In re Broyhill Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n. 3 (TTAB 2001) (objection to evidence waived where it was not interposed in response to applicant's reliance on listing of third-party registrations in response to initial Office action). If the applicant files an appeal, the examining attorney should continue the objection to the evidence in his or her appeal brief.
See TMEP §1207.01(d)(iii) regarding the relevance of third-party registrations to a determination of likelihood of confusion under 15 U.S.C. 1052(d).