Wednesday, March 03, 2010

Precedential No. 7: TTAB Deems Internet Printouts Admissible Via Notice of Reliance

In a significant new interpretation of Rule 2.122(e), the Board held that "if a document obtained from the Internet identifies its date of publication or date that it was accessed and printed, and its source (e.g., the URL), it may be admitted into evidence pursuant to notice of reliance in the same manner as a printed publication in general circulation." [emphasis in original]. The Board dismissed this Section 2(d) opposition, finding the mark DEER-B-GON for "animal repellant used to repel deer and other ruminant animals and rabbits" not confusingly similar to the registered marks DEER AWAY and DEER AWAY PROFESSIONAL for deer repellant [DEER disclaimed]. Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010) [precedential].

Strength of an incontestably-registered mark: Opposer Safer argued that the incontestability of its registrations under Section 15 is evidence of the strength of its marks; Applicant OMS urged that incontestability does not make a weak mark strong. The Board noted that the appellate courts are split on the issue, some presuming that incontestability is an indicator of strength, others holding that incontestability refers to the validity of the registration, not the mark's degree of strength. The Board held that incontestability "does not dictate that the mark is 'strong' for purposes of determining likelihood of confusion."

Likelihood of confusion: The Board found that the products involved "are for a very specific purpose and purchasers will be particular about purchasing a product that suits this purpose." Furthermore, Opposer’s marks are highly suggestive and are not entitled to as broad a scope of protection as arbitrary marks. The Board therefore concluded that the marks are sufficiently different that confusion as to source is not likely.

Admissibility of Internet Evidence: Under Rule 2.122(e), "[p]rinted publications,, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public" may be introduced into evidence by way of notice of reliance. In other words, they are self-authenticating.

Opposer Safer proffered, in its notice of reliance, certain publications obtained from the Internet. The Board, acknowledged its obligation to "recognize and adapt to changes in technology, particularly the prevalence of the internet." And so the Board deemed these publications admissible.

Thus Safer broadened "the types of documents that may be introduced by notice of reliance to include not only printed publications in general circulation, but also documents such as websites, advertising, business publications, annual reports, studies or reports prepared for or by a party or non-party, if, and only if, they can be obtained through the Internet as publicly available documents." Of course these downloaded documents are admissible for the limited purpose of demonstrating what the documents show on their face; they are not admissible to prove the truth of the statements contained therein.

Furthermore, the Board noted that "the party proffering information obtained through the Internet, runs the risk that the website owner may change the information contained therein. However, any relevant or significant change to the information submitted by one party is a matter for rebuttal by the opposing party."

TTABlog comment: This change will eliminate the formalistic step of authenticating Internet documents by witness testimony (or by declaration in non-trial situations), and should save both the Board and practitioners considerable time and expense. [Not to mention the time of paralegals and legal assistants who no longer have to testify about when and how they downloaded documents.]

Text Copyright John L. Welch 2010.


At 6:41 PM, Anonymous Rob said...

Thanks for the post.

While it's certainly a step in the right direction, I'm not sure it would actually eliminate formal requirements. Since information submitted this way won't be admitted for truth of the matter, a notice of reliance would be of limited help.

When you submit evidence from a paper dictionary, it can be admitted for the truth of the matter. Why treat an online dictionary any differently?

At 7:01 PM, Blogger John L. Welch said...

Many times, you just want to show that an item was published, like your annual report, or third-party websites showing that two types of goods are sold at the same store. Now you don't have to have a person testify that he or she downloaded the document on a particular day, or you don't need someone to testify that the annual report was published and distributed to some number of people.

At 7:06 PM, Blogger John L. Welch said...

Or suppose you want to show that a term is generic. You now can put in the website pages without the need for testimony from the downloader. Likewise with descriptive use of a term. As for dictionary pages, I think it's a question of reliability.

At 11:29 PM, Anonymous Josh said...

Like John said, we often use websites to argue descriptiveness or genericness, or similarity of goods and trade channels, or a crowded field. For those of us that have been involved in cases with absurd amounts of website evidence, this decision is welcome.


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