Precedential No. 18: TTAB Extends Safer Rule to Internet Evidence During Ex Parte Prosecution

Observing that there are no precedential decisions regarding an examining attorney's failure to properly submit Internet evidence, the Board ruled that both applicants and examining attorneys must include the URL and the date the webpage was accessed. If an applicant does not object to the examining attorney's failure to do so, "the Board will consider the website for whatever probative value it may have." If the applicant fails to do so without objection from the examining attorney, the Board may consider the objection waived. In re Mueller Sports Medicine, Inc., 126 USPQ2d 1584 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman).

Until Safer Inc. v. OMS Invs. Inc., there was no requirement that a party include a webpage address when introducing a webpage into evidence in an inter partes proceedings. [Now codified in Trademark Rule 2.122(e)]. The TMEP adopted the Safer requirements for examining attorneys in ex parte proceedings. TMEP §710.01(b) (October 2017). But the TMEP is not the law.

In determining whether to make those requirements the law, the Board first considered an analogous situation for guidance (namely, lists of third-party registrations):

If the applicant, during the prosecution of the application, provided a listing of third-party registrations, without also submitting actual copies of the registrations, and the examining attorney did not object or otherwise advise the applicant that a listing is insufficient to make such registrations of record at a point when the applicant could cure the insufficiency, the examining attorney will be deemed to have waived any objection to the admissibility of the list. Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 1207.03 (June 2017); see also TBMP § 1208.02.

Following that example, the Board ruled that "if an examining attorney fails to include the website URL and the date that the webpage was accessed but the applicant fails to lodge an objection on that ground, then the Board will consider the website for whatever probative value it may have."

Furthermore, the Board extended those requirements not only to examining attorneys, but to applicants in ex parte proceedings as well.

Similar to the submission of third-party registrations, Examining Attorneys have a responsibility to make sure that applicants properly submit Internet evidence. If the applicant’s response includes Internet evidence without a URL or date it was printed, the examining attorney must object to the evidence in the first Office action following the response and advise the applicant as to the proper way to make the Internet evidence of record. Otherwise the Board may consider the objection to be waived.

If the applicant files an appeal, the examining attorney should continue the objection to the evidence in his or her appeal brief.

Turning to the substantive issue in the case, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of the mark RECOIL for medical and athletic cohesive tape. Dictionary definitions, third-party website pages, and applicant's own packaging confirmed that "recoil" is used to describe the ability of applicant's tape to return to its original form.

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TTABlog comment: Note the use of "will" and "may." If the applicant fails to object, the Board will consider the evidence. If the examining attorney fails to object, the Board may consider the objection waived. Does this difference make sense?

Text Copyright John L. Welch 2018.