TMEP 710.03: Evidence of Third-Party Registrations

October 2017 Edition of the TMEP

Previous: §710.02 | Next: §711

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 1st USA Realty Prof'ls, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974); TBMP §1208.02 ("[T]he Board does not take judicial notice of records residing in the Patent and Trademark Office.").   Furthermore, the submission of a copy of a commercial search report is not proper evidence of third-party registrations. In re Hub Distrib., Inc., 218 USPQ 284, 285 (TTAB 1983).

To make registrations of record, copies of the registrations or the complete electronic equivalent (i.e., complete printouts taken from the USPTO’s Trademark database) must be submitted. In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002); In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1561 n.6 (TTAB 1996); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994).

If the applicant's response includes improper evidence of third-party registrations, the examining attorney must object to the evidence in the first Office action following the response. Otherwise the Board may consider the objection to be waived. See In re Houston, 101 USPQ2d 1534, 1536 (TTAB 2012) (finding that the examining attorney's failure to advise applicant of the insufficiency of the list of registrations when it was proffered during examination constituted a waiver of any objection to consideration of that list); In re 1st USA Realty Prof'ls, 84 USPQ2d at 1583 (allowing evidence of a list of third-party registrations because the examining attorney did not advise applicant of the insufficiency of the list while there was still time to correct the mistake); In re Broyhill Furniture Indus., Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001) (finding examining attorney's objection to a listing of third-party registrations waived because it was not raised in the Office action immediately following applicant's response in which applicant’s reliance on the listing as evidence was indicated).  If the applicant files an appeal, the examining attorney should continue the objection to the evidence in his or her appeal brief.

Note that third-party applications have no probative value other than as evidence that the applications were filed. In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366 n.7 (TTAB 2007); In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002); TBMP §1208.02.