Thursday, November 02, 2006

TTABlog Special Report: "The TTAB and Foreign Website Evidence: Quo Vadis?"

The TTAB and Foreign Website Evidence: Quo Vadis?

John L. Welch
Ann Lamport Hammitte
Lando & Anastasi, LLP

With personal computers spreading like a virus, Americans have ever-increasing accessibility to foreign websites. It is inevitable that the Trademark Trial and Appeal Board should be confronted with the issue of how to treat evidence gleaned from foreign sources. PTO Examining Attorneys (like most Americans) make use of the Internet as a source of information, and they occasionally rely on a foreign website to support a refusal to register. Foreign websites may have some relevance to the issue of the meaning of a particular term, but when, and how much? This article will review the rather scanty TTAB case law on the issue – only three citable decisions of relevance – and will pose a few questions regarding the direction the TTAB seems to be taking.

In the distant past – i.e., before the dawn of Internet civilization – the Board considered articles in foreign publications to be of limited evidentiary value because they were unlikely to have "any material impact on the perceptions of the relevant public in this country." See, e.g., In re Men’s International Professional Tennis Council, 1 USPQ2d 1917, 1918 (TTAB 1986) ["it is fair to presume that the Manchester Guardian Weekly has little circulation here, [and thus we cannot] infer that these foreign uses have had any material impact on the perceptions of the relevant public in this country"].

With the arrival of the Internet, one no longer need trek to an international newsstand to access the Manchester Guardian Weekly and other foreign materials; they are often only a mouse-click or two away. But the ready accessibility of foreign websites does not necessarily make them probative of the meaning of a term to the relevant American public.

Recognizing that limited accessibility was no longer a viable justification for excluding foreign materials available on the Internet, the TTAB in In re Remacle, 66 USPQ2d 1222 (TTAB 2002), a citable decision, ruled that foreign website evidence may have probative value in some situations. Applicant Jose Remacle sought to register the mark BIO-CD for "compact discs that are used to test biological matter" and for medical research and diagnostic services, but he was met with a descriptiveness refusal under Section 2(e)(1). The Examining Attorney relied on excerpts from several Internet websites and on articles retrieved from the LEXIS/NEXIS database, in arguing that "cd" is an acronym for "compact disc," that "bio" is an abbreviation for "biological," and thus that BIO-CD describes the intended goods and services. Applicant Remacle challenged several of the Internet excerpts as having little relevance because the websites were of foreign origin. But the Board found the foreign evidence acceptable, distinguishing the Tennis Council decision:

"… there are factors in particular situations where inferences regarding accessibility and familiarity with foreign publications may be made. For example, it is reasonable to assume that professionals in medicine, engineering, computers, telecommunications and many other fields are likely to utilize all available resources, regardless of country of origin or medium. Further, the Internet is a resource that is widely available to these same professionals and to the general public in the United States. Particularly in the case before us, involving sophisticated medical technology, it is reasonable to consider a relevant article from an Internet web site, in English, about medical research in another country, Great Britain in this case, because that research is likely to be of interest worldwide regardless of its country of origin." Id. at 1224 n. 5.

This recognition of the availability of information from the Internet provided the underpinning for the Board’s citable decision in In re Cell Therapeutics, Inc., 67 USPQ2d 1795 (TTAB 2003), involving wire service stories. There, the Board affirmed refusals to register, on the ground of genericness, of CELL THERAPEUTICS, INC. ("INC." disclaimed) for certain bio-chemical signaling pathway modulators and for related laboratory research and development services. The PTO relied on many NEXIS items from wire services (a few from foreign sources), and Applicant argued that in the past the TTAB had accorded such wire service stories limited probative value. The Board, however, distinguished earlier decisions concerning newswire stories by pointing out that here the relevant public comprises highly sophisticated medical doctors and researchers who have access to news wire stores. Moreover, the widespread use of personal computers makes it more likely that news wire stories will reach the general public, and therefore such stories have decidedly more probative value today. [The Board neither cited Remacle nor discussed the probative value of the foreign excerpts].

"This Board would be blind if it did not recognize that during the past fifteen years, there has been a dramatic change in the way Americans receive their news. In the 1980’s personal computers were in their infancy as was the transmission of new stores via the Internet. Put it quite simply, we believe that communications have changed dramatically during the past fifteen years such that by now it is by no means uncommon for even ordinary consumers (much less sophisticated doctors and researchers) to receive news not only via tangible newspapers and magazines, but also electronically through personal computers. Thus, it is much more likely that newswire stories will reach the public because they can be picked up and 'broadcast' on the Internet." Id. at 1798.

The Remacle decision (perhaps with some support from Cell Therapeutics) at least unlocked the door to the acceptance of foreign website evidence: the TTAB indicated that it will give such evidence probative weight if the website is in English, has relevance to the technical subject at hand, and involves users who are "sophisticated," like medical doctors and researchers.

Of course, sophisticated technical people are not the only ones who turn to the Internet for information. Even unsophisticated non-technical consumers encounter foreign websites during their Internet safaris. A recent, citable TTAB decision indicates that non-technical foreign website evidence may have probative weight. In In re King Koil Licensing Co., 79 USPQ2d 1048 (TTAB 2006), the TTAB affirmed a Section 2(e)(1) refusal of THE BREATHABLE MATTRESS (“MATTRESS” disclaimed), finding the mark merely descriptive of beds and mattresses. Citing Remacle, the Board noted that "under appropriate circumstances, web pages posted abroad may be considered probative evidence on how a term will be perceived," even when a consumer product is involved.

"We ... disagree with applicant’s essential contention that a general consumer in the United States would not turn to foreign web sites when researching products they may be planning to purchase. Such consumers may visit foreign web sites for informational purposes, even if they are more likely to focus on internet retailers that can easily ship items or make items available for pick up in a store in a location convenient to the purchaser. That would appear especially likely in a case such as this, where the item in question, a mattress, is large and potentially more expensive to ship than a smaller item."

While the Board refused to "discount entirely" the impact of the foreign website evidence, it did find the websites to be of "much more limited probative value than in the Remacle case." But at least it was willing to give the non-technical foreign website evidence some weight, and it hinted that even more weight might be accorded when the items can be readily shipped or made conveniently available by the Internet retailer, because then a consumer is more likely to visit a foreign website for informational purposes.

But should the likelihood of a website visit be the only criterion for assessing the probative value of the evidence from a foreign website? And even if consumers may visit foreign websites for information about ordinary consumer products, where’s the proof that any appreciable number do so?

If the question at issue is the meaning of a given term, doesn’t the fact the website is of foreign origin make it particularly important to assess the relevance of that website? In "sophisticated" technical fields like science and medicine, "consumers" around the world share a common "scientific" language and vocabulary. But in non-technical fields, this same "universal language" concept arguably does not apply. When it comes to mattresses or diapers or toothpaste, does this same shared language even exist? A website based in, say, Norway may offer information in English, but should its usage of the English language be accorded the same probative weight as a scientific or medical website? Or what about a British website that refers to "nappies" rather than diapers? Should that website be accorded probative value vis-à-vis the use of American English?

As to non-technical products, an important factor would seem to be whether the website is one to which U.S. consumers might reasonably turn for the goods (or services) in question. For example, a consumer looking for information on kitchen knives might look to a British website, or to a French website for information on lace. But for mattresses or diapers, toothpaste or shoes, why should a foreign website be accorded any weight? Why would an American consumer even visit a foreign website for such products?

In sum, the TTAB is just beginning to shape its jurisprudence regarding the admissibility of foreign website evidence. While it may be on the right path with regard to technical websites visited by sophisticated consumers, the way is much less clear when it comes to non-technical website information. Unless the Board has reason to believe that a particular website in a particular country would have some attraction and reliability for the consumer of a given product or service, we suggest that the Board should decline to accord the evidence any probative weight.

Copyright John L. Welch and Ann Lamport Hammitte 2006.


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