Notice of reliance on internet evidence allowed

United States of America

In Safer Inc v OMS Investments Inc (Opposition 91176445, February 23 2010), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has decided that parties in opposition and cancellation proceedings may offer into evidence printouts of internet web pages pursuant to a notice of reliance under Trademark Rule 2.122(e), in the same manner as a printed publication in general circulation.

Trademark Rule 2.122(e) allows a party to proffer evidence, by notice of reliance, of:

[p]rinted publications, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant under an issue in a proceeding, and official records.”

The rule requires that the notice of reliance provide information about the printed publication or official record sufficient to identify the source and date of the publication. Documents meeting these requirements need not be authenticated prior to their admission. However, such documents are generally admissible and probative only for what they show on their face, and not as proof of the matters asserted in documents.

In considering whether to allow a Rule 2.122(e) notice of reliance to be used for documents printed from the Internet, the TTAB observed that it must recognize and adapt to changes in technology. Specifically, the TTAB commented that many publications, including government documents, are maintained and circulated over the Internet. The TTAB noted that even the US Patent and Trademark Office’s files are in electronic form and accessible to all via the Internet, and, to that extent, are both official records and in general circulation. Moreover, some matter that was once admissible as a printed publication no longer exists in printed form, such as magazine publications that now exist online only. Given these changes in technology, the TTAB commented as follows:

"[E]ither the utility of the use of notices of reliance to introduce printed publications and government records will become limited, or the TTAB must adapt the procedure to recognize the changes in how publications and other documents are kept and 'circulated'."

The TTAB provided guidance on several issues relating to notices of reliance on internet documents:

  • The date and source information printed on the document allows the non-offering party to verify that the document is publicly available. The party offering the document runs the risk that the website owner may change the information contained on the site. If there has been a relevant or significant change in the website information, that will be a matter for rebuttal by the other side.
  • This change, in practice, expands 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.”
  • Printouts from web pages may have more limitations on their probative value than traditional printed publications. However, a party may increase the weight given to website evidence by submitting testimony and proof of the extent to which the website has been viewed.
  • The party offering the internet evidence must indicate generally the relevance of the material being offered. To meet this requirement, the party should associate the materials with a relevant likelihood of confusion factor or a specific fact relevant to determining a particular issue, such as whether a mark is merely descriptive. If the adverse party believes that the offering party has not met the requirement of indicating the document’s relevance, the adverse party must make an objection before the opening of the next testimony period following that in which the material was offered into the record or risk waiver of the objection.
  • Once a document is admitted into evidence, it may be relied on by any adverse party and considered by the TTAB for any relevant purpose, beyond the specific purpose for which the offering party presented the document.

David S Fleming, Brinks Hofer Gilson & Lione, Chicago

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