Precedential No. 53: TTAB Strikes "Wayback Machine" Evidence, Enters Summary Judgment Okaying Amendment of "AQUA STOP" Registration
The Board granted Respondent Sporto's motion for summary judgment, permitting Sporto to amend its registered mark and finding Petitioner's claims of abandonment, naked licensing, and fraud to be without merit. In preliminary rulings, Respondent also convinced the Board to strike from the record a Google "hit list" search summary retrieved via the "Wayback Machine," and printouts from two online catalogs. Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856 (TTAB 2007) [precedential].
Petitioner Paris Glove sought to cancel a registration for the mark AQUA STOP in the "rectangular" form shown above, for footwear. It contended that the specimen submitted with Respondent's renewal application (i.e., its Section 8 Declaration), did not support the renewal, that Respondent had abandoned the mark in the form registered, had engaged in unclothed (i.e., naked) licensing, and had defrauded the PTO. [See specimen immediately below].
Internet evidence: Respondent moved to strike certain Internet evidence submitted by Petitioner on the ground that it was not introduced by way of affidavit or declaration -- i.e., it was not properly authenticated.
The Board pointed out that Internet materials "may be admissible as evidence in connection with a summary judgment motion, if competent and relevant, provided that they are properly authenticated by and affidavit or declaration pursuant to FRCP 56(e). See TBMP Section 528.04(e)(2d ed. rev. 2004)."
Contrary to Petitioner's assertions, however, "Google hit-lists" are not directly admissible into evidence in an inter partes proceeding. (In any case they have limited probative value). Petitioner argued that concerns about authentication no longer exist in view of the availability of the Internet Archive and its "Wayback Machine" feature. According to Petitioner, the "Wayback Machine" shows "each date on which a website has undergone a significant change."
The Board, however, ratified the holding of Raccioppi v. Apogee, Inc., 47 USPQ2d 1368 (TTAB 1998), which requires that Internet articles submitted with a summary judgment motion be authenticated by declaration. The Board observed that the "Wayback Machine" suffers from a serious evidentiary flaw: even Petitioner noted that the "Wayback Machine" shows "each date on which a website has undergone a significant change." "What may be insignificant to the archivers for the 'Wayback Machine' may have significance from the standpoint of evidentiary value in a trademark proceeding."
Because Petitioner's Google hit-list and its Internet catalogue pages were not properly authenticated, Respondent's motion to strike was granted.
Amended mark: The subject registration was renewed in 2002, and in 2005 Respondent sought to amend the mark to the form shown below, which matched its 2002 specimen of use:
Respondent admitted that it is no longer using its mark in the original, rectangular form, but rather in the semicircular form shown above, and in a linear form shown below on the back of its hangtags.
Petitioner claimed that the change in form of the mark constituted a "material alteration" of the mark, resulting in abandonment of the registered rectangular mark. The Board, however, found the old and new versions to be "substantially the same." There is no material alteration because "the commercial impression of the mark is dependent upon the literal terms AQUA STOP and not on the rectangular, semicircular or linear forms of display." The additional elements on the 2002 specimen "are not integral to the term AQUA STOP such that a new composite AQUA STOP mark results."
Petitioner's fraud claim sunk like a stone. Respondent Sporto submitted a specimen of use showing how the mark was being used in 2002. Its statements were truthful. The PTO accepted the declaration. As to the adequacy of the specimen to demonstrate use of the registered mark, "that does not go to the issue of fraud."
Finally, Petitioner's nude licensing claim also failed miserably. Respondent's goods are manufactured to its specifications by vendors. Although these manufacturers may "drop ship" the products to customers, Respondent does not license its mark to these manufacturers. Therefore there was no illegal licensing.
Despite Petitioner's efforts to create a genuine issue of material fact that would preclude summary judgment, the Board ruled summarily in Respondent's favor.
TTABlog note: Ron Coleman, at his Likelihood of Confusion blog, points out other evidentiary problems with the "Wayback Machine." (here).
Text Copyright John L. Welch 2007.