Introduction
Website pages may be relied on by: (1) the examining attorney to support his grounds for rejection of the applicant’s mark; and/or (2) the applicant as evidence to try and overcome a rejection. This blog discusses the new rules for submitting Internet evidence to the USPTO by the applicant in support of registration as the result of two recent decisions by the Trademark Trial and Appeal Board (“TTAB” or “Board”). Take home points are presented at the end of the blog.
Discussion
When making Internet evidence part of the record, the Trademark Manual of Examining Procedure (TMEP) has for several years required the examining attorney to: (1) provide complete information as to the date of the evidence was published or accessed from the Internet . . . . and the complete URL address of the website; and (2) download and attach the evidence to the Office action. TMEP § 710.01(b). These requirements were adopted on the basis of Board’s precedential opinion in Safer Inc. v. OMS Invs. Inc., 94 USPQ2 1031, 1039 (TTAB 2010).
In its precedential decision of May 16, 2018 in In re Mueller Sports Medicine, Inc., the Board extended the requirements imposed on the examining attorney concerning Internet data to applicants in ex parte proceedings. Thus, an applicant who submits Internet data in response to an office action now must provide the same level of detail as is required of USPTO examining attorneys.
If the applicant’s response includes Internet evidence without the URL or date the information was printed, the examining attorney must object to the evidence in the first Office action following the applicant’s response and advise the applicant as to the proper way to ensure that the proffered Internet information will be treated as evidence. Similarly, the applicant must now also object to any Internet data provided by the examining attorney that does not comply with TMEP § 710.01(b).
Failure of the examining attorney and/or the applicant to object to the other’s improperly submitted Internet data results in waiver by the receiving party of any further objection to the insufficiency of the Internet evidence. This means that the Board may consider the “improper” website evidence for whatever probative value it may have.
In its June 7, 2018 decision in In re I-Coat Company, LLC, the Board had a chance to address its decision in Mueller when the applicant failed to properly submit Internet data in its Request for Reconsideration of its rejected application prior to filing its appeal. The examining attorney objected to the submitted Internet evidence because the dates of website access were either missing or many of the URL addresses appearing on the printed pages were cut off. Slip opinion at pg. 4.
The applicant appealed and the applicant’s counsel submitted a declaration and accompanying exhibits showing the Internet pages presented in the Request for Consideration and the dates upon which the websites were accessed. The declaration included the statement that “[t]he applicant asserts that it lists the marks below and resubmits this evidence with appropriate dates and URLs for the Board’s consideration.” Slip opinion at 4.
In I-Coat, the Board succinctly stated that “[i]n accordance with our decision in Mueller Sports Medicine, we will no longer consider Internet evidence filed by an applicant in an ex parte proceeding to be properly of record unless the URL and access or print date has been identified, either directly on the webpage itself, or providing this information in a response, except where the examining attorney does not object.”
As it turned out, the I-Coat applicant was left off the hook because its evidence had, albeit incorrectly, been submitted during prosecution of the application prior to the Mueller decision. The Board thus considered I-Coat’s later submitted evidence that was duplicative of the evidence previously submitted with the Request for Consideration. However, as is generally the case with any new evidence that is presented in an appeal whether in a court of law or in this case before the TTAB, the Board did not consider any evidence that was not previously submitted during prosecution. This is because such evidence is untimely and is not considered in an appeal. 37 C.F.R. § 2.142(d); TBMP § 1203.02(e) and § 1207.01. Slip opinion at 7.
Take Home Points
Attorneys who prosecute trademark applications need to be mindful of Internet evidence submission requirements in response to an Office action by the examining attorney. Care should be taken to ensure that the proffered evidence has the required information. No longer will the Board entertain Internet evidence that is not been properly submitted to the examining attorney prior to appeal with one exception: the examining attorney does not object to improperly submitted Internet evidence.
Similarly, the applicant’s attorney should review any Internet-based evidence provided by the examining attorney as grounds for rejection in an Office action for compliance with the TMEP’s requirements. Objections to any provided evidence should be presented in a timely response to the underlying Office action.
Finally, care should be taken to ensure that the applicant’s response(s) during an ex parte proceeding includes all relevant evidence the applicant may wish to have available for any future appeal. Additional evidence not previously provided to the examining attorney during prosecution of the application will likely not be considered by the TTAB.
© 2018 by Troy & Schwartz, LLC
WE THANK YOU FOR READING THIS BLOG. HOWEVER, THE FOREGOING IS NOT LEGAL ADVICE AND IS PRESENTED FOR INFORMATIONAL PURPOSES ONLY. IF YOU ARE CONTEMPLATING ANY ACTION THAT MAY HAVE LEGAL CONSEQUENCES, YOU SHOULD CONSIDER CONSULTING WITH AN ATTORNEY OF YOUR CHOOSING.
