Wednesday, September 02, 2020

Precedential No. 33: TTAB Explains Safer Rule for Internet Evidence

In this Section 2(d)/dilution opposition to registration of the marks BAD MOMS UNLIMITED and BAD MOMS BIBLE for audio books, printed matter, clothing, and charitable foundation services, Opposer STX Financing (producer of the film BAD MOMS) filed a motion to strike the exhibits listed in applicant's notice of reliance. STX achieved little from its all-out attack, but did give the Board the opportunity to clarify or explain several issues concerning the submission of internet evidence. STX Financing, LLC v. Stacey Michelle Terrazas, 2020 USPQ2d 10989 (TTAB 2020) [precedential] (Order by Mary Beth Myles, Interlocutory Attorney).

Applicant’s notice of reliance contained the following items: (1) copies of third-party registrations and applications obtained from the TESS database; (2) selected pages from the file history of opposer STX’s pleaded pending applications obtained from the TSDR database; (3) screenshots of various websites; and (4) STX's s responses to applicant’s interrogatories.

The Board granted STX's motion only to the extent of requiring applicant to indicate the relevance of items 1 and 4, under Trademark Rule 2.122(g). Applicant had stated only this: "to show no likelihood of confusion and/or dilution." That was too broad, because a party must "associated [each] exhibit with a specific fact or a particular element of the claim of likelihood of confusion and/or dilution." The Board allowed applicant 15 days to file and serve an amended notice of reliance.

Third-Party Applications and Registrations: As to the first item, the Board pointed out that, under Rule 2.122(e)(1), copies of third-party registrations are admissible under notice of reliance as official records. STX argued that because the copies submitted by applicant were obtained via the internet, they must include the date the material was accessed and printed, and the source. Not so, said the Board. Since these printouts are admissible as official records, it "was not necessary for Applicant to provide the access date or URL for any of the third-party applications or registrations .... Applicant clearly provided a 'copy' of the records obtained from TESS, which is all that is required."

File History Excerpts: Since pages from the file history are official records, they are [self-authenticating and] admissible by way of notice of reliance. STX complained that applicant did not submit entire office actions, but the Board noted that there is no requirement in Rule 2.122(e)(1) that the entire file history be submitted. STX went so far as to gripe about a typographical error in applicant's identification of the serial number of one of the file histories. The Board pointed out, however, that the correct serial number is apparent from a review of the exhibit.

Internet Materials: Each of applicant's internet exhibits included the URL for the specific page of the exhibit, but did not include the date the webpages were accessed or printed. However, that information was provided on the accompanying notice of reliance. STX contended that this information must appear on the face of the documents for purposes of admissibility. Wrong again. Rule 2.122(e) was amended in January 2017 to codify the Board's holdings in Safer and Rocket Trademark by stating that internet materials are admissible "so long as the date the internet materials were accessed and their source (e.g., URL) are provided." The rule does not require that the date or source information appear on the document themselves, but only that the information be "provided."  "If the access date and source are identified clearly in the notice of reliance, the webpages are in compliance with Trademark Rule 2.122(e)(2)."

STX also argued that complete copies of the website documents must be submitted, but the Board again disagreed. Rule 2.122(e)(2) says that internet materials may be submitted "in the same manner as a printed publication in general circulations ..." and Rule 2.122(e)(1) says that "a printed publication or a copy of the relevant portion thereof" may be submitted under notice of reliance. [emphasis by the Board].

STX pointed to the TBMP Section 704.08(b), which states that the submitting party must ensure the completeness of the evidence submitted.  The Board pointed out, however that "[t]he TBMP is a resource and guide, but does not modify, amend, or serve as a substitute for any existing statutes, rules, or decisional law and is not binding upon the Board. See Introduction to TBMP." [As I've been saying for years, the TBMP in not the law! - ed.]. Moroever, STX misconstrued Section 704.08(b), which points out merely that the submitting party must ensure that the entire exhibit is uploaded, and not that each exhibit must be a complete copy.

Interrogatory Answers: STX's only objection to  applicant's submission of STX's interrogatory answers concerned the failure to properly identify their relevance. As discussed above, to that extent the motion was granted.

And so the end result of STX's motion was little more than delaying the resolution of this proceeding by six months.

Read comments and post your comment here.

TTABlogger comment: WYHM? (would you have moved?).

Text Copyright John L. Welch 2020.


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