March 2010 Issue
TTAB Cases
Safer, Inc. v. OMS Investments, Inc.,
Opp. No. 91176445 (TTAB Feb. 23, 2010)
ABSTRACT
In a precedential decision, the TTAB expanded the types of documents that can be submitted under a notice of reliance pursuant to Trademark Rule 2.122(e) as publicly available documents to include materials obtained from the Internet. Provided that the materials are publicly available on the Internet, they can now be submitted under a notice of reliance as long as these documents identify (1) the date of publication or the date that the document was accessed and printed, and (2) its source (e.g., a URL).
CASE SUMMARY
FACTS
During its trial period, Safer, Inc. (“Opposer”) submitted a notice of reliance containing various publications by federal and state agencies, universities, and certain private entities that were obtained from the Internet. OMS Investments, Inc. (“Applicant”) objected to the admissibility of these materials on the ground that they were not self-authenticating printed publications pursuant to Trademark Rule 2.122(e). The TTAB addressed the evidentiary objection in its ruling on the merits of the case.
ANALYSIS
Instead of strictly construing Rule 2.122(e) as applying only to printed publications and simply rejecting Opposer’s website evidence, the TTAB instead looked at why printed publications in general circulation are self-authenticating in the first instance, noting that the TTAB generally finds such materials to be admissible if they identify their publication date and source. The TTAB acknowledged that it “must recognize and adapt to changes in technology, particularly the prevalence of the Internet,” and noted that many of today’s “publications” are no longer maintained and published in printed form, and are frequently (and sometimes exclusively) made available in electronic form, accessible to all via the Internet. It further stated that “either the utility of the use of notices of reliance to introduce printed publications and government records will become limited, or the Board must adapt the procedure to recognize the changes in how publications and other documents are kept and ‘circulated.’”
Based upon the above reasoning, the TTAB held that, henceforth, a document obtained from the Internet may be admitted into evidence pursuant to a notice of reliance under Rule 2.122(e), as long as it is publicly available and identifies (1) its date of publication or the date that it was accessed and printed, and (2) its source (e.g., a URL). By providing the date and source, the nonoffering party is able to verify the contents of the document and may present rebuttal evidence if the content of the website has changed, just as the nonoffering party has been able do with traditional printed publications of general circulation.
The TTAB cautioned, however, that while it was expanding the types of documents that may be submitted via notice of reliance to include Internet-accessible websites, advertising, business publications, annual reports, and other materials, such documents may be of limited probative value and are admissible only to show what has been printed or displayed, but not to prove the truth of the matter asserted in the documents themselves.
The TTAB also noted that, in its notice of reliance submitting Internet and other “printed publication” evidence, a propounding party should indicate the specific legal issues and/or facts supported by each document or group of documents, so that their relevance to the case is clear.
Finally, the TTAB cautioned parties against engaging in the “needless presentation of cumulative evidence” which could lead to objection under Fed. R. Evid. 403.
CONCLUSION
While this new expanded rule will make it procedurally easier to put into evidence websites and other materials that are relevant for what they show on their face, it will not alleviate the need to utilize other mechanisms to introduce Internet evidence presented for other reasons. For example, certain Internet materials, such as advertisements, annual reports, and websites showing use of a mark or the promotion and sale of goods and services, may require introduction into evidence through the deposition testimony of a fact witness who can lay the proper foundation for such materials, provide necessary background on their content (e.g., how long the mark has been used in a particular manner, how many hits the website receives annually, etc.), and, in some cases, authenticate them as business records in order to overcome hearsay objections to prove the truth of the matters asserted therein.
