TMEP 710.01(c): Record Must Be Complete Prior to Appeal

This is the October 2015 Edition of the TMEP

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710.01(c)    Record Must Be Complete Prior to Appeal

The record in any application should 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 §1207.01; see In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1059 n.2 (TTAB 2002); In re Trans Cont’l Records, Inc., 62 USPQ2d 1541, 1541 n.2 (TTAB 2002). However, the Board may consider evidence submitted after appeal, despite its untimeliness, if the non-offering 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: (a) object to the new evidence but not substantively discuss it; (b) object to the new evidence and, while preserving the objection, discuss why it in any event does not support the offeror’s position; or (c) consider the 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. See In re Broyhill Furniture Indus., 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 TBMP §1207.02 and TMEP §1504.05 regarding requests for remand.

The Board may take judicial notice of definitions from printed dictionaries that were not made of record prior to appeal, and may do so either sua sponte or upon request of the applicant or examining attorney. See In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 n.3 (TTAB 2008); In re Piano Factory Grp., Inc., 85 USPQ2d 1522, 1525 n.6 (TTAB 2006); In re Canron, Inc., 219 USPQ 820, 821 (TTAB 1983); TBMP §1208.04. However, the better practice is to ensure that the relevant material is included in the record prior to appeal. When requesting that the Board take judicial notice of a printed dictionary definition, the examining attorney must provide sufficient information regarding the source of the definition (e.g., a copy of the title page of the dictionary). See In re Gregory, 70 USPQ2d 1792, 1793 (TTAB 2004) (declining to take judicial notice of dictionary definitions submitted with examining attorney’s appeal brief, because neither the photocopied pages nor the examining attorney’s brief specified the dictionaries from which the copies were made); TBMP §1208.04.

Due to concerns about the reliability of online dictionary definitions that are not also available in printed form, the Board will not take judicial notice of this type of evidence unless the online dictionary is readily available and verifiable. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006) (taking judicial notice of an Encarta Dictionary definition, because the dictionary was a widely known reference, readily available in specifically denoted editions via the Internet and CD-ROM and thus was “the electronic equivalent of a print publication,” which could be easily verified; refusing to take judicial notice of a definition from www.wordsmyth.net, because the source of the definition was not identified on the submitted website excerpt or by the examining attorney and thus could not be verified); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002) (taking judicial notice of online dictionary that was also available in printed form); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1476 (TTAB 1999) (declining to take judicial notice of online dictionary that did not exist in printed format, because the source was unknown and the Board was unsure whether the dictionary was readily available or reliable, stating that the evidence should have been made of record prior to appeal, so applicant would have the opportunity to check the reliability of the evidence and offer rebuttal evidence).