Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 WEYERHAEUSER COMPANY
BRUCE R. KATZ, DBA ROSEWOOD STONE GROUP
Opposition Nos. 83,822; 83,823; 83,824
July 29, 1992
Before Sams, Rice and Rooney
By the Board:
J.D. Sams, J.E. Rice and L.E. Rooney
This case now comes up for consideration of two objections, each party having filed an objection in regard to a notice of reliance filed by the other. Opposer has objected to applicant's filing, under Trademark Rule 2.122, of two search reports derived from computerized data bases. Applicant has objected to opposer's filing, under Trademark Rule 2.120(j)(3), of copies of documents from opposition no. 83,657.
On April 20, 1992, applicant filed a notice of reliance under Rule 2.122 seeking to introduce into evidence (1) a trademark-trade name search report prepared by the private search firm of Thomson & Thomson, which was commissioned by applicant; (2) a trademark search report utilizing an on-line database of Dialog Information Services, Inc., which was conducted by a librarian employed by applicant's counsel; and (3) copies of the mark drawing sheet from abandoned application serial no. 73/836,469 and computer printouts from the Patent and Trademark Office's TRAM system showing the status of the same application.
With a paper filed April 28, 1992, opposer acknowledged the apparent admissibility of the copies of the application drawing sheet [FN1] and TRAM computer printout. However, opposer objected to introduction of the two search reports on the ground that they "are neither printed publications, nor official records, as referred to in Rule 2.122(e); nor do they appear to qualify under any other section of Rule 2.122." Opposer's objection, having been raised promptly after the filing of applicant's notice of reliance, will be considered as a motion to strike the notice, in part.
Applicant has not specified the subsection of Rule 2.122 under which it seeks to introduce the search reports, but subsection (e), which allows for the introduction of "[p]rinted publications, such as books and periodicals" and "official records," is the only one which even arguably applies. The rule provides as follows:
2.122 Matters in evidence
... (e) Printed publications and official records. Printed 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, if the publication or official record is competent evidence and relevant to an issue, may be introduced in evidence by filing a notice of reliance on the material being offered. The notice shall specify the printed publication (including information sufficient to identify the source and the date of the publication) or the official record and the pages to be read; indicate generally the relevance of the material being offered; and be accompanied by the official record or a copy thereof whose authenticity is established under the Federal Rules of Evidence, or by the printed publication or a copy of the relevant portion thereof. A copy of an official record of the Patent and Trademark Office need not be certified to be offered in evidence. The notice of reliance shall be filed during the testimony period of the party that files the notice.
*2 The "official records" provision of the rule does not apply because the search reports are the products of private enterprises' data bases. The term "official records," as used in Rule 2.122(e), refers not to private business records, but rather to the records of public offices or agencies, or records kept in the performance of duty by a public officer. See Black's Law Dictionary (Fifth Edition, 1979), and Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579 (TTAB 1979). See also Fed.R.Evid. 902(4).
Moreover, applicant seeks to introduce the search reports, according to the statement of their relevance in the notice of reliance, "as evidence of the weakness of Opposer's marks." In essence, applicant's attempt to introduce the search reports constitutes an attempt to introduce the registrations mentioned therein, so as to establish that opposer's marks are weak and entitled to only a narrow scope of protection.
However, a trademark search report is not credible evidence of the existence of the registrations listed in the report. See National Football League v. Jasper Alliance Corp., 16 USPQ2d 1212 (TTAB 1990), and Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), affirmed, --- F.2d ----, 21 USPQ2d 1142 (Fed.Cir.1991). To be sure, third party registrations may be made of record with a notice of reliance filed during the offering party's testimony period, but the notice must be accompanied by legible, soft copies of the registrations themselves, see Kellogg, 14 USPQ2d at 1549, citing In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983), or the electronic equivalent thereof, i.e., printouts of the registrations from the electronic records of the Patent and Trademark Office's Trademark Automated Search System, known as "T-Search." [FN2]
Turning to the "printed publications" provision of Rule 2.122(e), the search reports here in issue do not qualify as publications of the type contemplated by the rule. That is, trademark search reports clearly are not in the nature of "printed publications, such as books and periodicals." Moreover, as noted in Glamorene Products Corporation v. Earl Grissmer Company, Inc., 203 USPQ 1091, 1092 n. 5 (TTAB 1979), wherein objection to introduction of third-party promotional materials by notice of reliance under this rule was held well-taken, "Rule 2.122(c) [now 2.122(e)] is intended to facilitate the introduction of books and publications for what they show on their face subject to the safeguard that the party against whom the evidence is offered is readily able to corroborate or refute the authenticity of what is proffered. The assumption underlying the rule is that a party is or may become readily familiar with printed matter in libraries open to the public or in general circulation." See also Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996, 1997 n. 2 (TTAB 1986), wherein use of a notice of reliance to introduce conference papers, dissertations and journal papers was held improper.
*3 In both Glamorene Products and Hunter Publishing, the fact that the materials sought to be introduced into evidence were not readily available to the general public was an important factor supporting the Board's decisions to uphold objections to the evidence. This is a factor also present in the instant case, where the two search reports are available only from private enterprises at a fee.
On the other hand, the proffered search reports are not objectionable simply because they were obtained from searches in computerized data bases. Material from a computerized data base may be made of record by notice of reliance under Rule 2.122(e), if the material constitutes "printed publications" or "official records" within the meaning of the rule. That is, a party may offer into evidence a printed publication (or a portion thereof), such as a book or periodical, or an official record, within the contemplation of Rule 2.122(e), by filing during its testimony period a notice of reliance accompanied by either (1) the actual printed publication (or a copy of the relevant portion thereof), or the official record (or a copy thereof), or (2) an electronically generated document (or a copy thereof) which is the equivalent of the printed publication (or relevant portion thereof) or the official record. For example, a party which wishes to file a notice of reliance on an article published in a newspaper or magazine of general circulation may submit with the notice, in lieu of the actual article (or a photocopy thereof), a printout of the article (or a copy thereof) from Mead Data Central's NEXIS computerized library of information. [FN3] See International Assn. of Fire Chiefs, Inc. v. H. Marvin Ginn Corp., 225 USPQ 940 (TTAB 1985), reversed on other grounds, 782 F.2d 987, 228 USPQ 528 (Fed.Cir.1986); Compare R.J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169 (TTAB 1985). The Board emphasizes that the problem with applicant's trademark search reports is that they do not constitute printed publications or official records, within the contemplation of Rule 2.122(e).
Opposer's motion to strike applicant's notice of reliance, insofar as it attempts to introduce the two search reports, is, therefore, granted as well-taken. The reports shall be given no consideration by the Board.
Next up for consideration are applicant's objections to opposer's notice of reliance.
On May 15, 1992, opposer filed a notice of reliance under Rule 2.120(j)(3), which recited the following: "Opposer hereby introduces into evidence the attached copy of the following Official records: Notice of Opposition No. 83,657 and Default judgment therein. Opposer will rely on evidence contained therein at trial." The attachments include a copy of the notice of opposition filed to initiate the referenced proceeding, a copy of the Board's notice formally instituting the proceeding, and a copy of the Board's order entering a default judgment.
*4 On June 1, 1992, applicant filed an objection to opposer's notice of reliance on the following grounds: (1) that the submitted items do not constitute discovery materials admissible under Rule 2.120(j)(3), (2) that the notice does not explain the relevance of the items to this proceeding, (3) that the evidence "is incompetent and hearsay as to the contents of the Notice of Opposition therein referenced," and (4) that the notice is untimely because the materials submitted therewith should have been filed during opposer's principal testimony period rather than its rebuttal testimony period. Applicant's objections, having been raised promptly after the filing of opposer's notice of reliance, will be considered as a motion to strike the notice.
Consideration of the third and fourth objections, the latter of which is, in essence, an allegation that opposer's notice of reliance seeks to introduce improper rebuttal evidence, is deferred to final hearing. The Board does not read testimony and consider substantive objections to evidence, or determine the probative value of evidence, prior to final hearing. See M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070 (TTAB 1990).
On the other hand, the first two of applicant's four objections are clearly procedural in nature. Opposer's filing of the notice of reliance under an inapplicable provision of the rules, and its failure to explain the relevance of the material attached to the notice, are two defects that can be cured. When a motion to strike a notice of reliance is filed on the ground that it does not meet the procedural requirements of the rules, and the Board finds that the notice is defective but that the defect is curable, the Board may allow the party which filed the notice of reliance time in which to cure the defect, failing which the notice will stand stricken. See Heaton Enterprises of Nevada Inc. v. Lang, 7 USPQ2d 1842 (TTAB 1988).
Accordingly, opposer is allowed 20 days from the mailing date hereof to submit a substitute notice of reliance which remedies the procedural defects noted above. Presuming that opposer will address applicant's first objection by filing the substitute notice of reliance under Rule 2.122(e), on the premise that the documents in question constitute official records of the Patent and Trademark Office, opposer should note that its own file copies of documents from a Board proceeding do not constitute official records. See Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 906 n. 5 (TTAB 1985). Thus, in filing a substitute notice of reliance, opposer should obtain from the PTO's files, copies of the documents sought to be introduced.
Briefs on the case remain due within the time periods provided by Trademark Rule 2.128, as calculated from the close of opposer's rebuttal testimony period on May 30, 1992.
Members, Trademark Trial and Appeal Board
FN1. Drawings from Federal trademark applications were held admissible in Jetzon Tire & Rubber Corp. v. General Motors Corp., 177 USPQ 467 (TTAB 1973).
FN2. A party's introduction of third-party registrations through the filing of soft copies or T-Search printouts under cover of a notice of reliance must be differentiated from the party's introduction of its own registrations under such a notice. When a party seeks to introduce its own registrations under a notice of reliance, so as to benefit from the evidentiary presumptions that attach thereto pursuant to Trademark Act Sections 7(b) or 15, soft copies or T-Search printouts may not be used. Instead, the notice of reliance must be accompanied by copies of the registrations, prepared and issued by the Patent and Trademark Office, showing both the current status of and current title to the registrations. Trademark Rule 2.122(d)(2).
FN3. Similarly, as indicated above, third-party registrations may be made of record by notice of reliance accompanied by copies of printouts of the registrations from the Patent and Trademark Office's "T-Search" system.