TBMP - Chapter 0700 - TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

Chapter 700 TRIAL PROCEDURE AND INTRODUCTION

OF EVIDENCE

Time of Trial701

Pretrial Disclosures; Manner of Trial; and Introduction of Evidence702

Pretrial Disclosures702.01

Introduction of Evidence702.02

Manner of Trial702.03

Accelerated Case Resolution702.04

In General702.04(a)

ACR using Summary Judgment Briefs702.04(b)

ACR Conversion - Summary Judgment Briefs702.04(c)

ACR using Stipulated Record and Trial Briefs702.04(d)

Utilizing Stipulations in Non-ACR Board cases702.04(e)

Overly Large Records702.05

Taking and Introducing Testimony703

Afﬁdavits, Declarations and Oral Testimony Depositions703.01

In General703.01(a)

Form of Testimony703.01(b)

Time for Taking Trial Testimony703.01(c)

Time and Place of Oral Testimony Deposition703.01(d)

Notice of Oral Deposition and Notice of Election of Oral Cross-Examination

of Afﬁant or Declarant

703.01(e)

Securing Attendance of Unwilling Adverse Party or Non-party for Testimony

Deposition

703.01(f)

In General703.01(f)(1)

Unwilling Witness Residing in United States703.01(f)(2)

Unwilling Witness Residing in Foreign Country703.01(f)(3)

Persons Before Whom Depositions May be Taken703.01(g)

Examination of Witnesses703.01(h)

Form of Deposition and Exhibits703.01(i)

Signature of Deposition by Witness703.01(j)

Certiﬁcation and Filing of Trial Testimony703.01(k)

Trial Testimony Must be Filed703.01(l)

Service of Trial Testimony703.01(m)

Correction of Errors in Trial Testimony Deposition703.01(n)

Objections to Testimony Afﬁdavits, Declarations and Depositions703.01(o)

Conﬁdential or Trade Secret Material703.01(p)

Testimony Depositions on Written Questions703.02

Depositions on Written Questions: When Available703.02(a)

Depositions on Written Questions: Before Whom Taken703.02(b)

Depositions on Written Questions: When Taken703.02(c)

Depositions on Written Questions: Place of Deposition703.02(d)

Depositions on Written Questions: Notice of Deposition703.02(e)

Depositions on Written Questions: Securing Attendance of Unwilling Witness703.02(f)

Depositions on Written Questions: Examination of Witness703.02(g)

Depositions on Written Questions: Form, Signature and Certiﬁcation of

Deposition

703.02(h)

Depositions on Written Questions: Service, Correction and Filing of Deposition703.02(i)

Testimony Depositions on Written Questions Must be Filed703.02(j)

Depositions on Written Questions: Objections to Deposition703.02(k)

Depositions on Written Questions: Conﬁdential or Trade Secret Material703.02(l)

January 2017700-1

Depositions on Written Questions: Utility703.02(m)

Introducing Other Evidence704

In General704.01

Notice of Reliance – Generally704.02

Applications and Registrations704.03

Subject of Proceeding704.03(a)

Not Subject of Proceeding – In General704.03(b)

Registration Not Subject of Proceeding704.03(b)(1)

Registration Owned by Party704.03(b)(1)(A)

Third-Party Registration704.03(b)(1)(B)

Application Not Subject of Proceeding704.03(b)(2)

Statements and Things in Application or Registration704.04

Exhibits to Pleadings or Briefs704.05

Exhibits to Pleadings704.05(a)

Exhibits to Briefs704.05(b)

Statements in Pleadings or Briefs704.06

Statements in Pleadings704.06(a)

Statements in Briefs704.06(b)

Ofﬁcial Records704.07

Printed Publications704.08

Traditional Printed Publications704.08(a)

Internet Materials704.08(b)

Other Printed Materials704.08(c)

Discovery Depositions704.09

Interrogatory Answers; Admissions704.10

Produced Documents704.11

Judicial Notice704.12

Kind of Fact That May be Judicially Noticed704.12(a)

When Taken704.12(b)

Opportunity to be Heard704.12(c)

Time of Taking Notice704.12(d)

Testimony From Another Proceeding704.13

Initial Disclosures and Disclosed Documents704.14

Stipulated Evidence and Accelerated Case Resolution (ACR)705

Noncomplying Evidence706

Objections to Evidence707

In General707.01

Objections to Notices of Reliance707.02

In General707.02(a)

On Procedural Grounds707.02(b)

On Ground of Untimeliness707.02(b)(1)

On Other Procedural Grounds707.02(b)(2)

On Substantive Grounds707.02(c)

Objections to Trial Testimony707.03

In General707.03(a)

On Procedural Grounds707.03(b)

On Ground of Untimeliness707.03(b)(1)

On Ground of Improper or Inadequate Notice707.03(b)(2)

On Ground of Failure to Disclose707.03(b)(3)

On Other Procedural Grounds and on Substantive Grounds707.03(c)

Refusal to Answer Deposition Question707.03(d)

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE

Waiver of Objection707.04

701 Time of Trial

37 CFR § 2.116

(b) The opposer in an opposition proceeding or the petitioner in a cancellation proceeding shall be in

the position of plaintiff, and the applicant in an opposition proceeding or the respondent in a cancellation

proceeding shall be in the position of defendant. A party that is a junior party in an interference proceeding

or in a concurrent use registration proceeding shall be in the position of plaintiff against every party that

is senior, and the party that is a senior party in an interference proceeding or in a concurrent use registration

proceeding shall be a defendant against every party that is junior.

and answer in a court proceeding.

(d) The assignment of testimony periods corresponds to setting a case for trial in court proceedings.

(e) The submission of notices of reliance, declarations and afﬁdavits, as well as the taking of depositions

during the assigned testimony periods corresponds to the trial in court proceedings.

37 CFR § 2.121 Assignment of times for taking testimony and presenting evidence.

(a) The Trademark Trial and Appeal Board will issue a trial order setting a deadline for each party’s

required pretrial disclosures and assigning to each party its time for taking testimony and presenting evidence

(“testimony period”). No testimony shall be taken or evidence presented except during the times assigned,

unless by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by

order of the Board. The deadlines for pretrial disclosures and the testimony periods may be rescheduled by

stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the

Board. If a motion to reschedule any pretrial disclosure deadline and/or testimony period is denied, the

pretrial disclosure deadline or testimony period and any subsequent remaining periods may remain as set.

The resetting of the closing date for discovery will result in the rescheduling of pretrial disclosure deadlines

and testimony periods without action by any party. The resetting of a party’s testimony period will result

in the rescheduling of the remaining pretrial disclosure deadlines without action by any party.

* * * *

(b)(1) The Trademark Trial and Appeal Board will schedule a testimony period for the plaintiff to

present its case in chief, a testimony period for the defendant to present its case and to meet the case of the

plaintiff, and a testimony period for the plaintiff to present evidence in rebuttal.

(2) When there is a counterclaim, or when proceedings have been consolidated and one party is

in the position of plaintiff in one of the involved proceedings and in the position of defendant in another of

the involved proceedings, or when there is an interference or a concurrent use registration proceeding

involving more than two parties, the Board will schedule testimony periods so that each party in the position

of plaintiff will have a period for presenting its case in chief against each party in the position of defendant,

each party in the position of defendant will have a period for presenting its case and meeting the case of

each plaintiff, and each party in the position of plaintiff will have a period for presenting evidence in rebuttal.

will be set for thirty days. The periods may be shortened or extended by stipulation of the parties approved

by the Trademark Trial and Appeal Board, or may be extended upon motion granted by the Board, or by

order of the Board. If a motion for an extension is denied, the testimony periods and their associated pretrial

disclosure deadlines may remain as set.

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§ 701TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

(d) When parties stipulate to the rescheduling of a deadline for pretrial disclosures and subsequent

testimony periods or to the rescheduling of the closing date for discovery and the rescheduling of subsequent

deadlines for pretrial disclosures and testimony periods, a stipulation presented in the form used in a trial

order, signed by the parties, or a motion in said form signed by one party and including a statement that

every other party has agreed thereto, shall be submitted to the Board through ESTTA, with the relevant

dates set forth and an express statement that all parties agree to the new dates.

(e) … [N]o later than ﬁfteen days prior to the opening of each testimony period, or on such alternate

schedule as may be provided by order of the Board, the party scheduled to present evidence must disclose

the name and, if not previously provided, the telephone number and address of each witness from whom it

intends to take testimony, or may take testimony if the need arises, general identifying information about

the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party

nor related to a party, occupation and job title, a general summary or list of subjects on which the witness

is expected to testify, and a general summary or list of the types of documents and things which may be

introduced as exhibits during the testimony of the witness. The testimony of a witness may be taken upon

oral examination and transcribed, or presented in the form of an afﬁdavit or declaration, as provided in §

2.123. Pretrial disclosure of a witness under this paragraph (e) does not substitute for issuance of a proper

notice of examination under § 2.123(c) or § 2.124(b). If a party does not plan to take testimony from any

witnesses, it must so state in its pretrial disclosure.

On receipt of a properly ﬁled notice of opposition or petition to cancel (or at the time described in 37 CFR

§ 2.92 for an interference, see TBMP § 1003, or 37 CFR § 2.99(c) for a concurrent use proceeding which

is not based on a court decision or a prior Board decision, see TBMP § 1106.04), the Board serves the

complaint to the defendant in the form of a link to, or web address for, the Board’s electronic case ﬁle system

(‘‘TTABVUE’’) in the notice advising the parties of the institution of the proceeding. The notice includes

a trial order setting deadlines for the answer, discovery conference, initial and expert disclosures, discovery,

and each party’s required pretrial disclosures, and assigning each party's time for taking testimony and

introducing other evidence in the case. [Note 1.] See TBMP § 310.01 (oppositions and cancellations); TBMP

§ 1007 (interferences) and TBMP § 1106.04 (concurrent use proceedings). See also TBMP § 403.01.

In the trial order, the Board schedules a 30-day testimony period for the plaintiff to present its case in chief,

a 30-day testimony period for the defendant to present its case and to meet the case of the plaintiff, and a

15-day testimony period for the plaintiff to present rebuttal evidence. [Note 2.] The plaintiff's period for

presenting its case in chief is scheduled to open 60 days after the close of the discovery period; the defendant's

testimony period is scheduled to open 30 days after the close of the plaintiff's testimony period in chief; and

the plaintiff's rebuttal testimony period is scheduled to open 30 days after the close of the defendant's

testimony period. [Note 3.] The trial order also schedules the time for pretrial disclosures of witnesses: each

party must make pretrial disclosures no later than ﬁfteen days prior to the opening of its testimony period.

[Note 4.]

If there is a counterclaim, or if proceedings have been consolidated and one party is in the position of plaintiff

in one of the involved proceedings and in the position of defendant in another, or if there is an interference

or a concurrent use registration proceeding involving more than two parties, the Board schedules testimony

periods as speciﬁed in 37 CFR § 2.121(b)(2), i.e., giving each plaintiff a period for presenting its case in

chief as against each defendant, giving each defendant a period for presenting its case and meeting the case

of each plaintiff, and giving each plaintiff a period for rebuttal. The testimony periods are separated from

the discovery period by a 60-day interval, and from each other by 30-day intervals. [Note 5.] In an interference

or concurrent use proceeding, a junior party is in the position of plaintiff and a senior party is in the position

of defendant. [Note 6.] See TBMP § 1005, TBMP § 1007 and TBMP § 1108.

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 701

A party may not take testimony or present evidence outside of its assigned testimony period, except by

stipulation of the parties approved by the Board, or, on motion, by order of the Board. [Note 7.]

Testimony periods may be rescheduled, extended, shortened or reopened by stipulation of the parties approved

by the Board, or on motion granted by the Board, or by order of the Board. [Note 8.] See TBMP § 501 and

TBMP § 509 regarding stipulations and motions to extend or reopen. A stipulation or consented motion to

reschedule a deadline for pretrial disclosures and subsequent testimony periods or to reschedule the closing

date for discovery and to reschedule subsequent deadlines for pretrial disclosures and testimony periods

must be submitted to the Board through ESTTA and must be presented in the form used in a trial order with

the relevant dates set forth, specifying the deadline for each subsequent period, including, as applicable, the

deadline for initial, expert and pretrial disclosures, the closing date for discovery and testimony periods,

and an express statement that the parties agree to the new dates. [Note 9.] It is preferable, where such a

motion is unconsented, that the motion request that the new deadlines be determined, and any period or

periods be set to run, from the date of the Board's decision on the motion. See TBMP § 509.02.

The resetting of the closing date for discovery results in the automatic rescheduling of pretrial disclosure

deadlines and testimony periods, without action by any party. Likewise, the resetting of a party’s testimony

period results in the automatic rescheduling of the remaining pretrial disclosure deadlines without action

by any party. [Note 10.] For information regarding extensions of the discovery period and time to respond

to discovery requests see TBMP § 403.04

In Board inter partes proceedings, the submission of evidence and testimony during the parties’ assigned

testimony periods corresponds to the trial in court proceedings. [Note 11.] The trial period commences with

the opening of the ﬁrst testimony period. [Note 12.] See TBMP § 504.01. Cf. TBMP § 528.02. An oral

hearing, if requested, corresponds to oral summation in court proceedings. [Note 13.] See TBMP §802.

The Board may sua sponte enter judgment for the defendant in cases where the plaintiff has not submitted

evidence or taken testimony during its assigned testimony period where it is clear that the plaintiff has not

offered any other evidence. [Note 14.]

NOTES:

1. See 37 CFR § 2.120(a) and 37 CFR § 2.121.

2. See 37 CFR § 2.121(b)(1) and 37 CFR § 2.121(c).

3. See Stagecoach Properties, Inc. v. Wells Fargo & Co., 199 USPQ 341, 356 (TTAB 1978) (thirty-day

interval between each testimony period), aff'd, 685 F.2d 302, 216 USPQ 480 (9th Cir. 1982).

4. See 37 CFR § 2.121(e).

5. See 37 CFR § 2.121(b)(2) and 37 CFR § 2.121(c). Sample trial schedules can be found in the Appendix

of Forms.

6. See 37 CFR § 2.96 and 37 CFR § 2.99(e).

7. 37 CFR § 2.121(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (the Ofﬁce is amending § 2.121(a) to clarify

that evidence must be presented during a party’s testimony period, codifying current Ofﬁce practice.). See

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§ 701TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

also Baseball America Inc. v. Powerplay Sports, 71 USPQ2d 1844, 1846 n.8 (TTAB 2004) (documentary

evidence submitted outside assigned testimony period given no consideration); M-Tek Inc. v. CVP Systems

Inc., 17 USPQ2d 1070, 1072 (TTAB 1990) (untimely deposition stricken); Maytag Co. v. Luskin's, Inc.,

228 USPQ 747, 747 n.4 (TTAB 1986) (opposer's discovery deposition of non-party witness treated as

testimony deposition taken by stipulation prior to trial); Fischer GmbH. v. Molnar & Co., 203 USPQ 861,

867 (TTAB 1979) (discovery deposition of non-party inadmissible as evidence under a notice of reliance

ﬁled by one party without express or implied consent of adverse party; should have taken deposition during

trial period or at least moved to take trial testimony prior to assigned testimony period). Cf. Of Counsel Inc.

v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (where opposer's testimony

deposition was taken two days prior to the opening of opposer's testimony period, but applicant ﬁrst raised

an untimeliness objection in its brief on the case, objection held waived, since the premature taking of the

deposition could have been corrected on seasonable objection).

8. Fed. R. Civ. P. 6(b); 37 CFR § 2.121(a), 37 CFR § 2.121(c) and 37 CFR § 2.121(d). See

MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed.

Reg. 69950, 69963 (October 7, 2016) (“The Ofﬁce is amending § 2.121(c) to add that testimony periods

may be shortened by stipulation of the parties approved by the Board or may be extended on motion granted

by the Board or order of the Board.”). See, e.g., Fairline Boats plc v. New Howmar Boats Corp., 59 USPQ2d

1479, 1480 (TTAB 2000) (motion to extend testimony ﬁled on last day with vague references to settlement

and no detailed information concerning apparent difﬁculty in identifying and scheduling its witnesses for

testimony denied); Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1760 (TTAB 1999) (motion to extend

denied where sparse motion contained insufﬁcient facts on which to ﬁnd good cause); Harjo v. Pro-Football

Inc., 45 USPQ2d 1789, 1790 (TTAB 1998) (motion to reopen to submit new evidence denied); Pumpkin

Ltd v. The Seed Corps, 43 USPQ2d 1582, 1588 (TTAB 1997) (motion to reopen ﬁled over three months

after close of testimony period, due to a docketing error, denied).

9. See 37 CFR § 2.121(d). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND

APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (“The Ofﬁce is amending §

2.121(d) to add that stipulations to reschedule the deadlines for the closing date of discovery, pretrial

disclosures, and testimony periods must be submitted through ESTTA with the relevant dates set forth and

an express statement that all parties agree to the new dates. These amendments codify current Ofﬁce

practice.”).

10. See 37 CFR § 2.121(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND

APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (“The Ofﬁce is amending §

2.121(a) to clarify that evidence must be presented during a party’s testimony period. The Ofﬁce is further

amending § 2.121(a) to add that the resetting of a party’s testimony period will result in the rescheduling

of the remaining pretrial disclosure deadlines without action by any party. These amendments codify current

Ofﬁce practice.”).

11. See 37 CFR § 2.116(e). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND

APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69959 (October 7, 2016) (“The Ofﬁce is amending §

2.116(e) to add that the submission of notices of reliance, declarations, and afﬁdavits, as well as the taking

of depositions, during the testimony period corresponds to the trial in court proceedings. The revision codiﬁes

current Ofﬁce practice and is consistent with amendments relating to declarations and afﬁdavits.”); Yamaha

International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988) (Board

proceedings approximate the proceedings in a courtroom trial); Time Warner Entertainment Company v.

Jones, 65 USPQ2d 1650, 1657 (TTAB 2002) (trial in a Board proceeding takes place during the testimony

periods).

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 701

12. 37 CFR § 2.121(a).

13. 37 CFR § 2.116(f).

14. 37 CFR § 2.132(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69968 (October 7, 2016) (“The Ofﬁce is amending § 2.132(a) to

clarify that, if a plaintiff has not submitted evidence and its time for taking testimony has expired, the Board

may grant judgment for the defendant sua sponte.”).

702 Pretrial Disclosures; Manner of Trial; and Introduction of Evidence

37 CFR § 2.121 Assignment of times for taking testimony and presenting evidence.

(a) ... The resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial

disclosure deadlines without action by any party.

(e) A party need not disclose, prior to its testimony period, any notices of reliance it intends to ﬁle

during its testimony period. However, no later than ﬁfteen days prior to the opening of each testimony

period, or on such alternate schedule as may be provided by order of the Board, the party scheduled to

present evidence must disclose the name and, if not previously provided, the telephone number and address

of each witness from whom it intends to take testimony, or may take testimony if the need arises, general

identifying information about the witness, such as relationship to any party, including job title if employed

by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list

of subjects on which the witness is expected to testify, and a general summary or list of the types of documents

and things which may be introduced as exhibits during the testimony of the witness. The testimony of a

witness may be taken upon oral examination and transcribed, or presented in the form of an afﬁdavit or

declaration, as provided in § 2.123. Pretrial disclosure of a witness under this paragraph (e) does not

substitute for issuance of a proper notice of examination under § 2.123(c) or § 2.124(b). If a party does not

plan to take testimony from any witnesses, it must so state in its pretrial disclosure. When a party fails to

make required pretrial disclosures, any adverse party or parties may have remedy by way of a motion to

the Board to delay or reset any subsequent pretrial disclosure deadlines and/or testimony periods. A party

may move to quash a noticed testimony deposition of a witness not identiﬁed or improperly identiﬁed in

pretrial disclosures before the deposition. When testimony has been presented by afﬁdavit or declaration,

but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt ﬁling

of a motion to strike, as provided in §§ 2.123 and 2.124.

37 CFR § 2.123(e)(3) If pretrial disclosures or the notice of examination of witnesses served pursuant

to paragraph (c) of this section are improper or inadequate with respect to any witness, an adverse party

may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony

in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall

move to strike the testimony from the record, which motion will be decided on the basis of all the relevant

circumstances.

(i) A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may

seek exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that

portion of the testimony that was not adequately disclosed in accordance with § 2.121(e).

(ii) A motion to strike the testimony of a witness for lack of proper or adequate notice of examination

must request the exclusion of the entire testimony of that witness and not only a part of that testimony.

Fed. R. Civ. P. 26(a)(3) Pretrial Disclosures.

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§ 702TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

(A) In General. In addition to the disclosures required by Rule 26(a)(1) and (2), a party must provide

to the other parties and promptly ﬁle the following information about the evidence that it may present at

trial other than solely for impeachment:

(i) the name and, if not previously provided, the address and telephone number of each witness —

separately identifying those the party expects to present and those it may call if the need arises;

(ii) the designation of those witnesses whose testimony the party expects to present by deposition

and, if not taken stenographically, a transcript of the pertinent parts of the deposition; and

(iii) an identiﬁcation of each document or other exhibit, including summaries of other evidence —

separately identifying those items the party expects to offer and those it may offer if the need arises.

702.01 Pretrial Disclosures

Pretrial disclosures are governed by 37 CFR § 2.121(e) and Fed. R. Civ. P. 26(a)(3) with one exception: the

Board does not require pretrial disclosure of each document or other exhibit that a party plans to introduce

at trial as provided by Fed. R. Civ. P. 26(a)(3)(A)(iii). [Note 1.] Disclosures allow parties to know prior to

trial the identity of trial witnesses, thus avoiding surprise witnesses. [Note 2.]

Because the trial schedule in a Board proceeding employs alternating testimony periods with gaps between

them, the due dates for pretrial disclosures will be different for each party and will be speciﬁed in the Board’s

notice instituting the proceeding. [Note 3.] Under 37 CFR § 2.121(e), the party scheduled to present evidence

must make pretrial disclosures no later than ﬁfteen days prior to the opening of each testimony period, or

on such alternate schedule as may be provided by order of the Board. Witnesses who are expected to or may

testify must be disclosed under Fed. R. Civ. P. 26(a)(3)(A). [Note 4.]

In making its pretrial disclosures, the party must disclose the name and, if not previously provided, the

telephone number and address of each witness from whom it intends to take testimony, or may take testimony

if the need arises. [Note 5.] The party must disclose general identifying information about the witness, such

as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a

party, occupation and job title, a general summary or list of subjects on which the witness is expected to

testify, and a general summary or list of the types of documents and things which may be introduced as

exhibits during the testimony of the witness. [Note 6.]

Pretrial disclosure of a witness under 37 CFR § 2.121(e) does not substitute for issuance of a proper notice

of examination under 37 CFR § 2.123(c) or 37 CFR § 2.124(b). [Note 7.]

If a party does not plan to take testimony from any witnesses in any form, it must so state in its pretrial

disclosure. [Note 8.]

When a party fails to make required pretrial disclosures, any adverse party or parties may have remedy by

way of a motion to the Board to delay or reset any subsequent pretrial disclosure deadlines and/or testimony

periods. [Note 9.]

A party may object to improper or inadequate pretrial disclosures. [Note 10.] See TBMP § 533.02(b).

The pretrial disclosure requirement cannot simply be ignored because some information about a testifying

individual may be known by the adverse party or parties. [Note 11.]

A party need not disclose, prior to its testimony period, any notices of reliance it intends to ﬁle during its

testimony period. [Note 12.] Thus, each document or other exhibit that a party plans to introduce at trial

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 702.01

does not need to be disclosed to the other party. [Note 13.] A party planning to introduce an adverse party’s

discovery deposition, or part thereof, need not disclose such plans. [Note 14.] For further information

regarding the submission of discovery depositions under notice of reliance see TBMP § 704.09.

If pretrial disclosures or the notice of examination of witnesses served pursuant to 37 CFR § 2.123(c) are

improper or inadequate with respect to any witness, an adverse party may move to quash a noticed testimony

deposition of that witness before the deposition occurs. [Note 15.] The adverse party may also cross-examine

that witness under protest while reserving the right to object to the receipt of the testimony in evidence.

Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike

the testimony from the record, which motion will be decided on the basis of all relevant circumstances.

[Note 16.] When testimony has been presented by afﬁdavit or declaration, but was not covered by an earlier

pretrial disclosure, the remedy for any adverse party is the prompt ﬁling of a motion to strike. [Note 17.] A

motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek

exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that portion

of the testimony that was not adequately disclosed in accordance with 37 CFR § 2.121(e). [Note 18.] On

the other hand, a motion to strike the testimony of a witness for lack of proper or adequate notice of

examination must request the exclusion of the entire testimony of that witness and not only a part of that

testimony. [Note 19.]

If the deﬁciencies in the pretrial disclosure are technical in nature the parties are encouraged to resolve the

matter between themselves or to bring the matter to the Board's attention promptly for resolution for judicial

economy and before the parties incur the expense associated with taking a testimonial deposition. The Board

allows parties to cure timely, but technically deﬁcient matters. [Note 20.]

A party making a pretrial disclosure is not required to ﬁle routinely a copy of such disclosure with the Board.

In this regard, the Board's practice varies slightly from that set forth in Fed. R. Civ. P. 26(a)(3)(A). Alerting

the Board to a party's witness list is not a purpose of the pretrial disclosure requirement as the Board does

not preside at the taking of testimony or at a pretrial conference. [Note 21.]

Parties may stipulate to waive the requirement for pretrial disclosures in ACR cases. [Note 22.]

The resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure

deadlines without action by any party. [Note 2.]

For information on pretrial disclosure of expert witnesses, see TBMP § 401.03 or for motions to strike the

testimony of an expert witness, see TBMP § 533.02(b).

NOTES:

1. See 37 CFR § 2.121(e).

2. See Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015) (both parties are required to serve

initial disclosures identifying witnesses having discoverable information and to serve pretrial disclosures

naming the witnesses expected to testify at trial); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651,

1655 (TTAB 2014) (identity of trial witnesses may not be designated as conﬁdential), appeal dismissed

per stipulation, No. 14-CV-4463 (D. Minn. January 15, 2016); Carl Karcher Enterprises Inc. v. Carl's Bar

& Delicatessen Inc., 98 USPQ2d 1370, 1372 (TTAB 2011); Jules Jurgensen/Rhapsody Inc. v. Baumberger,

91 USPQ2d 1443, 1444 (TTAB 2009) (citing MISCELLANEOUS CHANGES TO TRADEMARK TRIAL

AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42257-58 (August 1, 2007)). See also Spier Wines

January 2017700-9

§ 702.01TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

(PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (witness ﬁrst identiﬁed in pretrial disclosure

and not previously identiﬁed in initial disclosures, discovery responses or supplements resulted in unfair

surprise and was neither harmless nor substantially justiﬁed); Great Seats Inc. v. Great Seats Ltd., 100

USPQ2d 1323, 1327 (TTAB 2011) (failure to identify witnesses during discovery but named in pretrial

disclosures resulted in unfair surprise to adversary).

3. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72

Fed. Reg. 42242, 42246 (August 1, 2007).

4. 37 CFR § 2.121(e). See Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015); Carl Karcher

Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371-72 n.1 (TTAB 2011) (“A party

is expected to disclose all witnesses it expects to call as well as those that it may call if the need arises“).

5. 37 CFR § 2.121(e). See Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d

1370, 1371 (TTAB 2011) (pretrial disclosure adequate and sufﬁcient); Jules Jurgensen/Rhapsody Inc. v.

Baumberger, 91 USPQ2d 1443, 1444-45 (TTAB 2009) (under Trademark Rules, petitioner is required to

name any witnesses from whom it intended to take testimony, or even might take testimony, if needed; 37

CFR § 2.121(e) contemplates that contact information of a witness may previously have been provided to

the party receiving a disclosure and need not be repeated).

6. 37 CFR § 2.121(e). See Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 (TTAB 2015) (respondent’s

pretrial disclosures defective to the extent that they fail to summarize the types of documents and things

respondent intended to introduce as exhibits to his testimony; all forty-six exhibits attached thereto and all

portions of respondent’s testimony referring to the attached exhibits not considered); Carl Karcher Enterprises

Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371 (TTAB 2011) (pretrial disclosure adequate

and sufﬁcient).

7. 37 CFR § 2.121(e).

8. 37 CFR § 2.121(e).

9. 37 CFR § 2.121(e).

10. See 37 CFR § 2.123(e)(3) and 37 C.F.R §2.123(e)(3). See also Hunter Industries, Inc. v. Toro Co.,

110 USPQ2d 1651, 1655 (TTAB 2014) (identity of trial witnesses may not be designated as conﬁdential),

appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. January 15, 2016); Carl Karcher Enterprises

Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 n.4 (TTAB 2011).

11. See Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009).

12. 37 CFR § 2.121(e). Accord Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 n.4 (TTAB 2015).

13. 37 CFR § 2.121(e).

14. See 37 CFR § 2.120(k)(1) (“The discovery deposition of a party or of anyone who at the time of taking

the deposition was an ofﬁcer, director or managing agent of a party, or a person designated by a party

pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, may be offered in evidence

by an adverse party.”).

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 702.01

15. 37 CFR § 2.121(e). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (“The Ofﬁce is further amending § 2.121(e)

to add that a party may move to quash a noticed testimony deposition of a witness not identiﬁed or improperly

identiﬁed in pretrial disclosures before the deposition. The amendment codiﬁes current Ofﬁce practice.”).

16. 37 CFR § 2.123(e)(3).

17. 37 CFR § 2.121(e). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (“The Ofﬁce is further amending § 2.121(e)

to add that when testimony has been presented by afﬁdavit or declaration, but was not covered by an earlier

pretrial disclosure, the remedy for any adverse party is the prompt ﬁling of a motion to strike…”).

18. 37 CFR § 2.123(e)(3)(i). See Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 (TTAB 2015)

(respondent’s improper service of pretrial disclosures at counsel for petitioner’s former address held harmless

to the extent the disclosure identiﬁed a single witness, respondent himself); Hunter Industries, Inc. v. Toro

Co., 110 USPQ2d 1651, 1655 (TTAB 2014) (identity of trial witnesses may not be designated as conﬁdential),

appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. January 15, 2016); Great Seats Inc. v. Great

Seats Ltd., 100 USPQ2d 1323, 1327-28 (TTAB 2011) (Opposer's failure to name one witness until original

pretrial closures and twenty-six witnesses until supplement to amended pretrial disclosures was neither

harmless nor substantially justiﬁed and motion to quash granted as to twenty-six witnesses but testimony

of one witness, identiﬁed months before in original pretrial disclosure, not excluded provided adverse party

be given an opportunity to take a discovery deposition); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91

USPQ2d 1443, 1444 (TTAB 2009) (failure to disclose testimony witness in initial disclosures considered

as a relevant circumstance in determining whether to strike testimony deposition).

19. 37 CFR § 2.123(e)(3)(ii).

20. See Carl Karcher Enterprise, Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 n.4

(TTAB 2011). Cf. Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011) (applicant

could not cure surprise without moving to quash, or seeking to reopen discovery, or engaging in unplanned

preparation to cross examine witnesses identiﬁed for the ﬁrst time in pretrial disclosures).

21. See Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 (TTAB

2011).

22. Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 n.5 (TTAB 2015) (where neither party

served pretrial disclosures and the parties ACR stipulation did not provide for the exchange of pretrial

disclosures, motion to strike witness declaration denied).

23. 37 CFR § 2.121(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (“The Ofﬁce is further amending § 2.121(a)

to add that the resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial

disclosure deadlines without action by any party. These amendments codify current Ofﬁce practice.”).

702.02 Introduction of Evidence

37 CFR § 2.122(a) Applicable rules. Unless the parties otherwise stipulate, the rules of evidence for

proceedings before the Trademark Trial and Appeal Board are the Federal Rules of Evidence, the relevant

provisions of the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of the United States

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§ 702.02TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

Code, and the provisions of this part. When evidence has been made of record by one party in accordance

with these rules, it may be referred to by any party for any purpose permitted by the Federal Rules of

Evidence.

Unless the parties otherwise stipulate, the introduction of evidence in inter partes proceedings before the

Board is governed by the Federal Rules of Evidence, the relevant portions of the Federal Rules of Civil

Procedure, the relevant provisions of Title 28 of the United States Code, and the rules of practice in trademark

cases (i.e., the provisions of Part 2 of Title 37 of the Code of Federal Regulations). [Note 1.] Cf. TBMP §

101.01 and TBMP § 101.02. When evidence has been made of record by one party in accordance with these

rules, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. [Note

2.]

Within the parameters of these rules, there are a number of ways to introduce evidence into the record in a

proceeding before the Board. Evidence may be introduced either in the form of testimony depositions taken

by a party during its testimony period or in the form of afﬁdavits or declarations subject to the right of the

adverse party to conduct cross-examination. Documents and other exhibits may be made of record with

appropriate identiﬁcation and introduction by the witness during the course of the deposition or in an afﬁdavit

or declaration. See generally TBMP §703.01 regarding afﬁdavits, declarations and oral testimony depositions

and TBMP §703.02 regarding testimony depositions on written questions. See also TBMP § 704.13 regarding

introducing testimony from another proceeding, and TBMP § 530 regarding motions to use testimony from

another proceeding. Certain speciﬁed types of evidence, including ofﬁcial records and printed publications

as described in 37 CFR § 2.122(e) and discovery responses under 37 CFR § 2.120(k), may, but need not,

be introduced in connection with the testimony of a witness. Such evidence may instead be made of record

by ﬁling the materials with the Board under cover of a notice of reliance during the testimony period of the

offering party. [Note 3.] See generally TBMP § 704.02 regarding the types of evidence that may be submitted

by notice of reliance and the requirements for the introduction of such evidence by notice of reliance. In

addition, the parties may enter into a wide variety of stipulations concerning the timing and/or introduction

of speciﬁed matter into evidence. See TBMP § 705 regarding stipulated evidence. For example, the parties

may stipulate that matter otherwise improper for a notice of reliance (such as documents obtained by

production under Fed. R. Civ. P. 34) may be introduced in that manner, that a party may rely on its own

discovery responses or that notices of reliance can be ﬁled after the testimony periods have closed. There

may also be circumstances where improperly offered or otherwise noncomplying evidence may nevertheless

be deemed stipulated into the record where, for example, no objection to the evidence is raised and/or the

nonoffering party treats the evidence as being of record. [Note 4.] See generally TBMP § 704 regarding

the introduction of other evidence.

A discussion of the time and manner of taking testimony depositions, presenting testimony in afﬁdavit or

declaration form, and introducing evidence is presented in the sections that follow.

NOTES:

1. 37 CFR § 2.122(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (“The Ofﬁce is amending § 2.122(a) to

clarify the heading of the paragraph and to specify that parties may stipulate to rules of evidence for

proceedings before the Board.”).

2. 37 CFR § 2.122(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (amended effective January 14, 2017 to

codify current Board practice). See, e.g., Nazon v. Ghiorse, 119 USPQ2d 1178, 1181 n.6 (TTAB 2016)

(“Once evidence is properly of record, it may be relied on by any party for any purpose.”).

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 702.02

3. See Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 n.4 (TTAB 2001)

(notices of reliance must be ﬁled before closing date of party's testimony period).

4. See, e.g., Coach Services Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1603, n.3 (TTAB 2010),

aff’d-in-part, rev’d-in-part and remanded on other grounds, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir.

2012).

702.03 Manner of Trial

Because the Board is an administrative tribunal, its rules and procedures differ in some respects from those

prevailing in the federal district courts. [Note 1.] See TBMP § 102.03 regarding Board proceedings in

general and TBMP § 502.01 regarding motions that may be ﬁled at the Board. For example, in lieu of live

testimony, proceedings before the Board are conducted in writing, and the Board's actions in a particular

case are based on the written record therein. [Note 2.] The Board does not preside at the taking of testimony.

Rather, all testimony is taken out of the presence of the Board, by afﬁdavit or declaration, or on oral

examination or written questions, and the afﬁdavits, declarations and written deposition transcripts, together

with any exhibits thereto, are then submitted to the Board. [Note 3.]

Depositions may be noticed for any reasonable place in the United States. [Note 4.] As a result, parties do

not have to travel to the ofﬁces of the Board, or to the geographic area surrounding the Board's ofﬁces, to

take their testimony. Plaintiffs also have the option of presenting witness testimony in afﬁdavit or declaration

form subject to the right of any adverse party to elect to take and bear the expense of oral cross examination

of that witness. [Note 5.] See TBMP § 703.01(h). A party to a proceeding before the Board need never

come to the ofﬁces of the Board at all, unless the party wishes to argue its case at oral hearing at the ofﬁces

of the Board, or unless otherwise ordered by the Board.

An oral hearing is held only if requested by a party to the proceeding. [Note 6.] See TBMP § 802.02.

Submissions made during the course of an inter partes proceeding are stored in electronic form and are

available for viewing on the Board home page of the USPTO website via TTABVUE

(http://ttabvue.uspto.gov). Filings in Board proceedings are made electronically via ESTTA, and in the

rare circumstances that ﬁling in paper form is permitted under the rules, such paper submissions are scanned

into the electronic record. The electronic record constitutes the ofﬁcial record of the proceeding. See TBMP

§ 120. No document, exhibit, etc., whether submitted electronically or as paper, will be considered as

evidence in the case unless it has been introduced in evidence in accordance with the applicable rules, see

TBMP § 706, [Note 7], or the parties stipulate or otherwise treat the evidence as being of record, see TBMP

§ 702.02.

For a further discussion regarding viewing and obtaining Board records, see TBMP § 121.

If the parties to a proceeding desire to obtain a ﬁnal resolution of a proceeding prior to the scheduled trial

period, they may consider Accelerated Case Resolution (“ACR”). For information on ACR, see TBMP §

528.05(a)(2), TBMP § 702.04 and TBMP § 705.

NOTES:

1. See Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir.

1988); La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm'r 1976). For a general

January 2017700-13

§ 702.03TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

discussion of inter partes proceedings before the Board, see B&B Hardware, Inc. v. Hargis Industries, Inc.,

575 U.S. ___, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015).

2. 37 CFR § 2.191. B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, 135 S. Ct. 1293, 113

USPQ2d 2045, 2049 (2015).

3. See B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, 135 S. Ct. 1293, 113 USPQ2d 2045,

2049 (2015); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1553 (TTAB 1991);

La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm'r 1976).

4. See 37 CFR § 2.123(a)(1) and 37 CFR § 2.123(c).

5. 37 CFR § 2.123(a)(1).

6. See 37 CFR § 2.129(a).

7. See 37 CFR § 2.123(k).

702.04 Accelerated Case Resolution

702.04(a) In General

Accelerated Case Resolution (“ACR”) is an alternative to typical Board inter partes proceedings with full

discovery, trial and brieﬁng, in which parties to a Board proceeding can obtain a determination of the claims

and defenses in their case in a shorter time period than contemplated in the typical Board proceeding. The

form of ACR can vary, but the process generally approximates a summary bench trial or cross-motions for

summary judgment and accompanying evidentiary submissions that the parties agree to submit in lieu of

creating a traditional trial record [Note 1] and traditional briefs at ﬁnal hearing. Other approaches to

accelerating resolution of a case include simplifying proceedings through the use of fact stipulations and

stipulations regarding the admissibility of certain evidence. [Note 2.] Oral hearings generally are available

in ACR cases in accordance with 37 CFR § 2.129(a). See TBMP § 802. If parties agree to conduct the case

as an ACR case and to utilize the bench trial or cross-motions for summary judgment model, and the Board

approves trial of the case by ACR, the Board generally will render a ﬁnal decision within ﬁfty (50) days

following the completion of brieﬁng.

By reducing the complexity of a case and total time expended in litigating a case, ACR is a more efﬁcient

and economical alternative to the typical Board inter partes proceeding. Not all Board cases involve

complicated or disputed facts or require the full discovery and trial periods set out by the Trademark Rules,

to arrive at a ﬁnal determination. Parties may thereby save time and expense by focusing only on those

issues genuinely in dispute, and opting for ACR early in the proceeding. For example, if the parties stipulate

to facts, no time need be spent proving those facts (although there may be some typical costs involved in

preparing and exchanging documents and other materials that illustrate for the involved parties that facts

are not genuinely in dispute and therefore can be stipulated). When the issues in a proceeding are limited,

savings can be even greater, because all aspects of the proceeding, including discovery, trial and brieﬁng,

are focused on such limited matters.

The Board is willing to consider almost any claim under ACR unless the complexity or novelty of the facts

and/or legal theory of the case requires a full trial. However, the most appropriate cases for ACR are those

in which, for example, little discovery is necessary, the parties are able to stipulate to many facts, each party

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 702.04

expects to rely on the testimony of one or two witnesses, or the overall record will not be extensive. [Note

3.] ACR may not be suited to cases that generate a large record, complicated factual or legal issues, or cases

where the parties are unwilling to stipulate to any matters (i.e., limitations on discovery or trial schedules,

the absence of any genuine dispute about particular facts, or entry of evidence into the record).

ACR presently can be implemented only by consent of the parties and agreement by a Board attorney or

judge, and will not be approved by unilateral motion of one party. ACR can also be implemented by all

parties accepting an invitation or suggestion from a Board attorney or judge to participate in the process.

[Note 4.] The parties are required to discuss the possibility of using ACR in their discovery conference and

may seek the assistance of the Board in structuring their case so that it qualiﬁes for ACR and the Board’s

objective to render a decision within ﬁfty days (50) from the completion of brieﬁng. [Note 5.]

Parties seeking to optimize their chances for early determination of their case and savings in their resources

are advised to opt for ACR early in the proceeding. To opt for ACR, the parties may jointly ﬁle a statement

indicating their desire to proceed under ACR along with a proposed modiﬁed schedule which may include

an abbreviated discovery period and/or brieﬁng period under any form of ACR. The assigned attorney may,

and likely will, then convene a conference by telephone to discuss the proceeding with the parties and explore

how they wish to proceed under ACR. The parties may seek Board assistance when contemplating ACR to

determine which form of ACR to follow and/or determine the discovery, trial and brieﬁng schedule. Any

modiﬁed discovery, trial and brieﬁng schedule, including limits on discovery or discovery devices or trial,

must be negotiated by the parties and approved by the Board. If, however, the parties choose to follow the

traditional discovery and trial schedule, but merely wish to stipulate to particular facts or that particular

items of evidence shall be considered by the Board, they may so agree and ﬁle their written agreement with

the Board without need of a conference with a Board attorney. While this approach yields efﬁciency and

savings, since prescribed discovery procedures and discovery and trial schedules are unchanged, a conference

with a Board attorney typically would not be necessary.

The parties may limit discovery in a number of ways. For example, parties may limit the number of

interrogatories, requests for production and requests for admissions as well as the number and duration of

discovery depositions. They may exchange more extensive disclosures in lieu of formal discovery, or stipulate

to facts and the exchange of certain documents, or propound interrogatory requests only on particular issues.

If the parties are unable to agree on discovery limits, they will not have optimized any cost and time savings

available through ACR. When discovery devices (e.g., number of depositions, document requests, or

interrogatory requests) are limited, practice is necessarily more focused and cost efﬁcient.

Parties which agree to conduct the proceeding under ACR and which have stipulated to limited discovery

may still take testimonial depositions or introduce testimony by afﬁdavit or declaration, subject to the right

of the nonoffering party to cross-examine the witness. By limiting the number or duration of testimonial

depositions, they may realize additional savings in cost and time. They may also agree that the offering

party may use discovery depositions at trial.

Parties may also agree under ACR to forego pretrial disclosures. Furthermore, if an ACR stipulation is silent

on the issue of pretrial disclosures and no pretrial disclosures were in fact ﬁled by either party, the Board

will interpret the stipulation as waiving this requirement. [Note 6.]

The standards of proof in an ACR proceeding are the same as the standards of proof in a traditional Board

proceeding. In either an opposition or cancellation, the burden of proof remains with the plaintiff, who must

establish its case by a preponderance of the evidence. [Note 7.]

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§ 702.04(a)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

A ﬁnal decision rendered under ACR may be appealed in the same manner and under the same time frames

as non-ACR decisions by the Board. [Note 8.] For further information regarding appeals of inter partes

decisions, see TBMP Chapter 900.

Please Note: Some of the cases cited in this section established efﬁciencies later codiﬁed in amended 37

CFR § 2.123(a)(1), effective January 14, 2017, which allows parties to present direct testimony by afﬁdavit

or declaration subject to cross-examination by the adverse party.

NOTES:

1. See, e.g., Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Swiss Grill Ltd. v. Wolf Steel Ltd.,

115 USPQ2d 2001, 2002 (TTAB 2015); Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1304

(TTAB 2014); Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2016 (TTAB 2014); Frito-Lay North America,

Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1950 (TTAB 2014), vacated and remanded on other

grounds, Princeton Vanguard , LLC v. Frito-Lay North. America., Inc., 786 F.3d 960, 114 USPQ2d 1827

(Fed. Cir. 2015); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1827-28 (TTAB

2012); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 676 (TTAB 1986). See

also Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 47 USPQ2d 1953, 1954-55 (2d Cir. 1998).

2. See, e.g., Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016) (parties’ stipulated to forgo reply

brieﬁng and that they could rely on the materials submitted in connection with previously ﬁled motions for

summary judgment); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 (TTAB 2015) (parties

ﬁled ACR stipulation to present all testimony by declaration and to submit discovery responses and documents

produced in discovery as exhibits without the need for accompanying testimony); Fiserv, Inc. v. Electronic

Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (parties ﬁled ACR stipulation, agreed

to forego discovery, waived disclosures, stipulated to facts and attached documents, ﬁled briefs with additional

evidence); Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734, 1738 (2014) (parties ﬁled joint

stipulation that testimony could be submitted by declaration or afﬁdavit subject to cross-examination upon

request, and all documents produced in response to a request for production of documents were deemed

authentic business records and were admissible subject to any objections other than authenticity); Hunter

Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 (TTAB 2014) (parties’ stipulation under ACR provided

limitations on discovery, excluded the ﬁling of motions for summary judgment and the use of expert

testimony, streamlined the methods for introduction of evidence during trial, stipulated to fact regarding no

actual confusion), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. January 15, 2016); Board

of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1186 (TTAB

2014) (stipulation to the admission and use of produced documents and waiver of objections based on

authenticity or hearsay); Sheetz of Delaware Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344

(TTAB 2013) (parties stipulated under ACR that they could rely on the materials submitted in support of

and against opposer's previously ﬁled motion for summary judgment, that testimony could be submitted by

declaration, that pretrial disclosures were not required, and that all evidence may be submitted through

declarations or notices of reliance); Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1547 (TTAB

2012) (parties ﬁled a joint stipulation of undisputed facts); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676

(TTAB 2007) (parties stipulated to the entire record: 13 paragraphs of facts, including applicant’s dates of

ﬁrst use, channels of trade for applicant, extent and manner of applicant’s use, recognition by others of

applicant’s use, as well as the dates, nature and extent of descriptive use by the opposer’s parent company;

the admissibility of business records, government documents, marketing materials and Internet printouts

and to forgo trial).

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 702.04(a)

3. See Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Lebanon Seaboard Corp. v. R&R Turf

Supply Inc., 101 USPQ2d 1826, 1828 (TTAB 2012) (claim of likelihood of confusion, stipulated to standing,

priority, pleaded registration, “lawn seed” and “grass seed” legally identical descriptions of goods).

4. Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Hewlett-Packard Development Co. v. Vudu

Inc,, 92 USPQ2d 1630, 1634 n.6 (TTAB 2009) (in granting partial summary judgment, the Board suggested

the parties may seek to use ACR on the remaining disputed issues without the need for a formal trial).

5. See Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (early

election of ACR, no motion practice, utilized conference with Board attorney for dispute re: stipulation,

from notice to brieﬁng less than a year, resulting in clean and concise record); Hunter Industries, Inc. v.

Toro Co., 110 USPQ2d 1651, 1653 n.3 (TTAB 2014) (ACR proceeding experienced delay in issuing decision

due to precedential nature of decision and the number and nature of objections), appeal dismissed per

stipulation, No. 14-CV-4463 (D. Minn. January 15, 2016); Lebanon Seaboard Corp. v. R&R Turf Supply

Inc., 101 USPQ2d 1826, 1829-30 n.9 (TTAB 2012) (although the parties crafted and proceeded with their

own ACR approach, better practice is to contact the assigned Board attorney when the parties elect to pursue

ACR); Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009).

6. Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 n.5 (TTAB 2015) (“While parties are obligated

to identify trial witnesses in their pretrial disclosures, there is no indication in the record that either party

served pretrial disclosures in this ACR case (and the parties’ ACR Stipulation does not provide for the

exchange of pretrial disclosures.” No basis for motion to strike and declaration at issue considered).

7. B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049,

2056 (2015) (party opposing registration bears the burden of proof); Dan Robbins & Associates, Inc. v.

Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979); Bond v. Taylor, 119 USPQ2d 1049,

1051 (TTAB 2016).

8. See 37 CFR § 2.145.

702.04(b) ACR using Summary Judgment Briefs

For a case prosecuted on the summary judgment model of ACR, the trial and brieﬁng periods occur in one

phase. That is, the summary judgment briefs and accompanying evidentiary submissions encompass both

the trial and brieﬁng periods. Because the parties have, in essence, agreed to create the record for the case

by their summary judgment submissions, testimony will be presented by afﬁdavit or declaration, and any

exhibits referenced by the afﬁants or declarants.

In addition to ﬁling summary judgment briefs, the parties should ﬁle a joint stipulation of undisputed facts,

and, as attachments or exhibits to their briefs, any materials that, in a typical trial, could be submitted by

notice of reliance (the notice of reliance itself need not be ﬁled). [Note 1.] The parties are free to enter into

other stipulations regarding the submission of evidence. [Note 2.] For example, they may agree that documents

and things produced in response to requests for production may be submitted as exhibits without the need

for accompanying testimony. The stipulations regarding the submission of evidence remove any question

about the admissibility of the evidence, but the parties may reserve the right to object to the evidence on

substantive grounds such as competency, relevancy or materiality, or the weight to be accorded particular

items of evidence. A party may not raise objections to the admissibility of evidence that it has stipulated

into the record. [Note 3.]

January 2017700-17

§ 702.04(b)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

ACR summary judgment briefs may be presented either as cross motions for summary judgment or as a

single motion for summary judgment. If the parties stipulate to ACR and ﬁle cross motions for summary

judgment, each party is entitled to ﬁle a response to the other’s motion and a reply in support of its own

motion. [Note 4.] If the parties stipulate to ACR and the summary judgment motion is in the form of a single

motion by plaintiff, then defendant may ﬁle a brief in response and only plaintiff is entitled to ﬁle a reply.

[Note 5.] In the absence of a stipulation to the contrary, the parties are limited to 25 pages for the ACR

summary judgment briefs, inclusive of table of contents and cases, index of cases, description of the record,

statement of the issues, recitation of facts, argument and summary. [Note 6.] Reply briefs are limited to 10

pages unless otherwise stipulated [Note 7.] and arguments should be restricted to rebuttal of the adverse

party’s case in chief.

In using the summary judgment form of ACR, the parties must provide a stipulation that the Board may

resolve any genuine disputes of material fact that may be presented by the record or which may be discovered

by the panel considering the case at ﬁnal hearing. [Note 8.]

If the parties decide early in the case to use the ACR motion for summary judgment model, they should ﬁle

a stipulation with the Board selecting the ACR summary judgment model and setting forth the negotiated

schedule for discovery and any limitation on discovery, submission of stipulations, and brieﬁng. [Note 9.]

For more information regarding ACR motions for summary judgment, see TBMP § 528.05(a)(2).

NOTES:

1. See, e.g., Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).

2. See, e.g., Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).

3. See Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1827 (TTAB 2009) (by stipulating to

introduction of afﬁdavit and its exhibits into evidence, applicant waived its right to object to the admissibility

of exhibits attached to afﬁdavit), aff’d on other grounds, Creative Arts by Calloway, LLC v. Brooks, No.

09-cv-10488 (SDNY December 27, 2012), dismissed, No. 13-147 (unpublished) (2d Cir. March 7, 2013) .

4. 37 CFR § 2.127(a) and 37 CFR § 2.127(e)(1).

5. 37 CFR § 2.127(a) and 37 CFR § 2.127(e)(1).

6. 37 CFR § 2.127(a). But see Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775 (TTAB 2013) (parties’

ACR agreement provided that “the page limit for the parties’ briefs shall be the page limit permitted for trial

briefs pursuant to Trademark Rule 2.128(b).”).

7. 37 CFR § 2.127(a). But see Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775 (TTAB 2013) (parties’

ACR agreement provided that “the page limit for the parties’ briefs shall be the page limit permitted for trial

briefs pursuant to Trademark Rule 2.128(b).”).

8. See, e.g., Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).

9. See e.g., Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775 (TTAB 2013) (pursuant to their ACR

stipulation, parties agreed to forgo discovery and reliance on expert testimony).

700-18January 2017

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 702.04(b)

702.04(c) ACR Conversion - Summary Judgment Briefs

In circumstances where the parties have already ﬁled summary judgment briefs, the Board may, in appropriate

cases, invite the parties to agree to the Board’s treatment of the summary judgment briefs and evidence as

the ﬁnal records and briefs. [Note 1.] Alternatively, the parties may stipulate to treating the summary judgment

briefs and evidence as the record and ﬁnal briefs on the case, even in the absence of an invitation to do so

extended by the Board. [Note 2.]

In either case, the parties must stipulate that the Board may resolve any genuine disputes of material fact

that may be presented by the record or which may be discovered by the panel considering the case at ﬁnal

hearing.

For more information regarding ACR motions for summary judgment, see TBMP § 528.05(a)(2).

NOTES:

1. See, e.g., Daniel J. Quirk Inc. v. Village Car Company, 120 USPQ2d 1146, 1147 and 1147 n.5 (TTAB

2016); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1950 (TTAB 2014)

(after suggestion by Board in order denying motion for summary judgment, parties stipulated to forego trial

and rely on evidence submitted in support of the motions for summary judgment, supplemented by expert

declarations, trial briefs and an oral hearing), vacated and remanded on other grounds, Princeton Vanguard

, LLC v. Frito-Lay North America, Inc., 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015).

2. See, e.g., Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Freeman v. National Association of

Realtors, 64 USPQ2d 1700, 1701 (TTAB 2002) (parties stipulated that case would be decided on petitioner’s

motion for summary judgment and respondent’s response); Miller Brewing Co. v. Coy International Corp.,

230 USPQ 675, 676 (TTAB 1986) (parties stipulated that cross motions for summary judgment would be

treated as testimony, evidence and briefs at ﬁnal hearing).

702.04(d) ACR using Stipulated Record and Trial Briefs

Under the stipulated record and trial briefs ACR model, the case proceeds to ﬁnal decision on an evidentiary

record that has been stipulated to, in whole or in substantial part. Thus, the parties must be prepared to

stipulate to the admissibility of most of the record. They may, however, reserve the right to object in trial

briefs on substantive grounds to particular evidence such as on the grounds of competency, relevancy or

materiality. Testimony periods may not be needed for cases prosecuted on the stipulated record model (with

or without stipulated facts), if the evidentiary record has been stipulated to by the parties. [Note 1.] Essentially,

the parties are agreeing to an abbreviated trial on the merits.

Just as with any non-ACR case, the Board will decide disputed facts as part of the ﬁnal decision.

The Board has found that cases that proceed along the ACR stipulated record model, involving many

stipulated facts and stipulated evidence, yield highly effective records because evidentiary submissions are

focused on the disputed facts. Stipulations of fact are useful but are not required in an ACR case prosecuted

on a stipulated record.

Parties which agree to conduct the proceeding under ACR and which have stipulated to limited discovery

may still take testimonial depositions or introduce testimony by afﬁdavit or declaration, subject to the right

of the nonoffering party to cross-examine the witness. However, by limiting the number or duration of

January 2017700-19

§ 702.04(d)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

testimonial depositions or testimony in afﬁdavit or declaration form, they may realize additional savings in

cost and time. They may also agree to use discovery depositions at trial.

Parties using this form of ACR and who agree to forgo the testimony period should ﬁle a stipulation indicating

such an intention, along with their stipulations to the record with respect to facts, evidence and testimony

(e.g., using discovery depositions in lieu of testimonial depositions). [Note 2.]

Stipulations regarding the submission of evidence promote efﬁciency by removing any question about the

admissibility of the evidence, while still allowing the parties to reserve the right to object to the evidence

on substantive grounds such as competency, relevancy or materiality. [Note 3.] A party may not raise

objections to the admissibility of evidence that it has stipulated into the record. [Note 4.]

As with regular trial briefs, the parties are limited to 55 pages for the ACR trial briefs under the stipulated

record model, inclusive of table of contents, index of cases, description of the record, statement of issues,

recitation of the facts, argument and summary. [Note 5.] Unless counterclaims are involved, only the plaintiff

may ﬁle a reply brief, and it is limited to 25 pages consisting solely of a rebuttal of the adverse party’s case

in chief. [Note 6.] See TBMP § 801.

For additional information regarding stipulated evidence and ACR, see TBMP § 705.

NOTES:

1. See, e.g., Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties

selected ACR and agreed to forgo trial by stipulating to use evidence submitted in support of opposer’s

motion for summary judgment as trial evidence and allowing for any additional evidence to be submitted

with their trial briefs on the case); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007)

(parties stipulated to the entirety of the record and agreed to forgo trial).

2. See, e.g., Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015)

(early election of ACR, no motion practice, utilized conference with Board attorney for dispute re stipulation,

from notice to brieﬁng less than a year, resulting in clean and concise record); Hunter Industries, Inc. v.

Toro Co., 110 USPQ2d 1651, 1653 (TTAB 2014) (parties’ stipulation under ACR provided limitations on

discovery, excluded the ﬁling of motions for summary judgment and the use of expert testimony, streamlined

the methods for introduction of evidence during trial, stipulated to fact regarding no actual confusion),

appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. January 15, 2016); Edom Laboratories Inc.

v. Lichter, 102 USPQ2d 1546, 1547 (TTAB 2012) (parties ﬁled a joint stipulation of undisputed facts and

a stipulation to seek a determination through ACR); Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d

1511, 1513 (TTAB 2009) (parties agreed to forgo trial by stipulating to use evidence submitted in support

of opposer’s motion for summary judgment as trial evidence and allowing for any additional evidence to

be submitted with their trial briefs on the case); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678

(TTAB 2007) (parties stipulated to the entirety of the record and stipulated to forgo trial); Zimmerman v.

National Association of Realtors, 70 USPQ2d 1425, 1427 (TTAB 2004) (in addition to reliance on a discovery

deposition of one of the parties, the parties stipulated that the evidentiary record from an earlier Board case

would be considered); Devries v. NCC Corporation, 227 USPQ 705, 708 (TTAB 1985) (parties stipulated

to waive trial periods and stipulated to the following: petitioner's pleaded registration; each party's responses

to certain interrogatories and requests for production of documents served upon it by the other party; and

stipulated facts and afﬁdavit testimony, with attached exhibits).

700-20January 2017

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 702.04(d)

But see Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1830 (TTAB 2012) (parties

who stipulated to certain facts and issues, yet also submitted evidence to prove these points, have gone to

needless effort and expense and the Board unnecessarily must review this evidence).

3. See Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties agreed to reserve the

right to object to facts and documents on the bases of relevance, materiality and weight).

4. See Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1827 (TTAB 2009) (by stipulating

afﬁdavit and exhibits thereto into evidence, applicant waived its right to object to the admissibility of exhibits

attached to afﬁdavit), aff’d on other grounds, Creative Arts by Calloway, LLC v. Brooks, No. 09-cv- 10488

(S.D.N.Y. Dec. 27, 2012), dismissed, No. 13-147 (unpublished) (2d Cir. March 7, 2013).

But see Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, 111 USPQ2d

1559, 1561 (TTAB 2014) (parties’ stipulation provided for the admission into evidence of speciﬁc dated

expert reports and accompanying exhibits and an expert discovery deposition transcript, but did not provide

for the admission into evidence of any supplemental expert reports or additional expert testimony by afﬁdavit

or declaration, in view thereof, supplemental expert report not admissible on this basis).

5. 37 CFR § 2.128(b).

6. 37 CFR § 2.128(b).

702.04(e) Utilizing Stipulations in Non-ACR Board cases

37 CFR § 2.123(b) Stipulations. If the parties so stipulate in writing, depositions may be taken before

any person authorized to administer oaths, at any place, upon any notice, and in any manner, and when so

taken may be used like other depositions. The parties may stipulate in writing what a particular witness

would testify to if called; or any relevant facts in the case may be stipulated in writing.

37 CFR § 2.127(e)(2) . If any motion for summary judgment is denied, the parties may stipulate that the

materials submitted with briefs on the motion be considered at trial as trial evidence, which may be

supplemented by additional evidence during trial.

Parties may utilize stipulations of facts and evidence to realize cost efﬁciencies in non-ACR cases. For

example, they may stipulate to the entire record, to portions of the record, or to particular facts. [Note 1.] If

any motion for summary judgment is denied, the parties may stipulate that the materials submitted with

briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional

evidence during trial. [Note 2.] Parties may stipulate to ACR-type efﬁciencies at any stage of a proceeding

in order to expedite the remainder of the trial schedule.

See TBMP § 705 regarding stipulated evidence.

Please Note: Some of the cases cited in this section established principles later codiﬁed in amended 37 CFR

§ 2.123(a)(1), effective January 14, 2017, which allows parties to unilaterally present direct testimony by

afﬁdavit or declaration subject to cross-examination by the adverse party.

January 2017700-21

§ 702.04(e)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

NOTES:

1. See 37 CFR § 2.123(b) and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) (“The Ofﬁce is amending § 2.123(b) … to

clarify that parties may stipulate to any relevant facts.”). See e.g., Noble House Home Furnishings, LLC v.

Floorco Enterprises, LLC, 118 USPQ2d 1413, 1416 (TTAB 2016) (parties stipulated that testimony may

be introduced by afﬁdavit or declaration in lieu of testimonial depositions and that the documents exchanged

during discovery are authentic and may be made of record by either party); Ayoub, Inc. v. ACS Ayoub Carpet

Services, 118 USPQ2d 1392, 1394 (TTAB 2016) (parties stipulated to submission of testimony by declaration,

to the use of any Fed. R. Civ. P. 30(b)(6) discovery deposition transcripts in their case-in-chief or rebuttal,

and to the authenticity of all documents produced by either party during discovery); N.Y. Yankees Partnership

v. IET Products & Services, Inc., 114 USPQ2d 1497, 1500 (TTAB 2015) (parties stipulated that witness

testimony would be submitted solely by declaration and without cross-examination); Harry Winston, Inc.

v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1426 (TTAB 2014) (stipulation to submission of witness

declarations and discovery depositions, the authenticity of certain documents, retail prices of opposers’

goods, the fact that advertisements and news articles refer to opposers, and press clippings are representative

of the media in which opposers advertise); Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734, 1738

(2014) (parties ﬁled joint stipulation that testimony could be submitted by declaration or afﬁdavit subject

to cross-examination upon request, and all documents produced in response to a request for production of

documents were deemed authentic business records and were admissible subject to any objections other

than authenticity); Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110

USPQ2d 1182, 1186 (TTAB 2014) (stipulation to the admission and use of certain produced documents

and waiver of objections based on authenticity or hearsay as to those documents); Miller v. Miller, 105

USPQ2d 1615, 1617 n.6 (TTAB 2013) (parties stipulated to testimony by afﬁdavit and provided a stipulation

of undisputed facts); Blackhorse v. Pro-Football Inc., 111 USPQ2d 1080, 1084-85 (TTAB 2014) (parties

stipulated that the record of a prior proceeding may be submitted into evidence under notice of reliance

reserving the right to object based on relevance) aff’d 112 F. Supp. 3d 439, 115 USPQ2d 1524 (E.D. Va.

2015), on appeal, No. 15-1874 (4th Cir. Aug. 6, 2015); Hunt Control Systems Inc. v. Koninklijke Philips

Electronics N.V., 98 USPQ2d 1558, 1563 (TTAB 2011) (parties stipulated to authenticity of produced

documents and to the introduction of testimony in afﬁdavit or declaration form, with certain guidelines), on

appeal, No. 11-3684 (D.N.J. June 2016); Kistner Concrete Products Inc. v. Contech Arch Technologies

Inc., 97 USPQ2d 1912, 1915 (TTAB 2011) (parties stipulated to authenticity of produced documents);

Brooks v. Creative Arts by Calloway, LLC, 93 USPQ2d 1823, 1824-25 (TTAB 2010) (parties stipulated to

admission of various testimony declarations and to facts), aff’d on other grounds, Creative Arts by Calloway,

LLC v. Brooks, No. 09-cv- 10488 (S.D.N.Y. Dec. 27, 2012), dismissed, No. 13-147 (unpublished) (2d Cir.

March 7, 2013); UMG Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1044 (TTAB 2009) (parties stipulated

to introduce testimony by declaration and to live cross-examination); Boston Red Sox Baseball Club LP v.

Sherman, 88 USPQ2d 1581, 1585 (TTAB 2008) (parties stipulated to testimony by declaration, with exhibits);

Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844, 1847 n.5 (TTAB 2008)

(stipulation to use discovery depositions as trial testimony); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d

1628, 1629 n.2 (TTAB 1998) (stipulation to use evidence and exhibits submitted in connection with a motion

for summary judgment at trial); Domino's Pizza Inc. v. Little Caesar Enterprises Inc., 7 USPQ2d 1359,

1360 (TTAB 1988) (stipulations to facts by applicant, testimony by afﬁdavit by opposer, and use of certain

testimonial depositions taken in prior civil action); Wilderness Group, Inc. v. Western Recreational Vehicles,

Inc., 222 USPQ 1012, 1013 (TTAB 1984) (stipulated to the ﬁling of facts and exhibits on behalf of each

party during each party’s testimony period); Hayes Microcomputer Products, Inc. v. Business Computer

Corp., 219 USPQ 634, 635 (TTAB 1983) (parties stipulated to facts, legal conclusions and testimony,

including cross-examination and redirect examination with respect to stipulated testimony).

700-22January 2017

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 702.04(e)

2. 37 CFR § 2.123(e)(2). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69967 (October 7, 2016) (“The Ofﬁce is amending § 2.127(e)(2) to

add that if a motion for summary judgment is denied, the parties may stipulate that the materials submitted

with briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional

evidence during trial. The revision codiﬁes an approach used by parties in proceedings incorporating

ACR-type efﬁciencies at trial.”).

702.05 Overly Large Records

The Board notes that in recent years there has been a trend regarding the introduction of irrelevant and/or

cumulative evidence at trial. [Note 1.] The Board views parties who engage in this practice with disfavor.

[Note 2.] The introduction of such evidence impedes the orderly administration of the case, and obscures

the impact of truly relevant evidence. In addition to diminishing the effectiveness of a party’s evidentiary

record, “papering” the Board causes delays in rendering a ﬁnal decision. Parties should submit only relevant,

non-cumulative evidence. [Note 3.] For all evidence submitted under notice of reliance, the notice must

indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding.

Failure to do so, however, is a curable procedural defect. [Note 4.] For a discussion of the requirements for

evidence submitted under notice of reliance, see TBMP § 704.02.

The Board may require the parties to take steps to assist with organizing the evidence such as preparing and

ﬁling tables summarizing testimony and other evidence and specifying 1) the probative value of particular

facts or testimony and 2) the location in the record of such facts or testimony. [Note 5.] Deposition transcripts

must contain a word index, listing the pages where the words appear in the deposition. [Note 6.]

Pursuant to 37 CFR § 2.120(j)(2), the Board may require the parties to meet with the Board for a pretrial

conference where the Board has determined that the case has the potential to become overly contentious

and/or involve the creation by the parties of excessive records. [Note 7.] See TBMP § 502.06(b) for more

information about pretrial conferences.

NOTES:

1. See, e.g., Sheetz of Delaware Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344 n.5 (TTAB 2013)

(“While we commend the parties for agreeing to efﬁciencies intended to facilitate the introduction of evidence

at trial, ideally, [ACR] cases do not merely facilitate introduction of more evidence, but should also limit

the amount of evidence placed before the Board.”); Corporacion Habanos S.A. v. Guantanamera Cigars,

Co., 102 USPQ2d 1085, 1091 (TTAB 2012) (another case which does not warrant a record of this size);

UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1873 (TTAB 2011) (overly large records tax the

resources of the Board and are entirely unnecessary); General Mills Inc. v. Fage Dairy Processing Industry

SA, 100 USPQ2d 1584, 1591-92 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679

(TTAB 2014) (non-precedential) (Board expressed frustration with sizeable record and overzealous litigation);

Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1218 (TTAB 2011) (with

its supplemental notice of reliance, plaintiff resubmitted the ﬁrst 25 items listed in its ﬁrst notice of reliance,

needlessly adding bulk to the record and wasting Board resources); Stuart Spector Designs Ltd. v. Fender

Musical Instruments, Corp., 94 USPQ2d 1549, 1552 (TTAB 2009) (“voluminous” evidence of record);

Careﬁrst of Maryland Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495 (TTAB 2005) (“It

is simply inconceivable to the Board that the issues herein warranted either a record of this size or the large

number of motions relating thereto.”); Blue Man Productions v. Tarmann, 75 USPQ2d 1811, 1814 (TTAB

2005) (“[t]here are literally hundreds of documents”), rev’d on other grounds, slip. op. 05-2037, (D.D.C.

Apr. 3, 2008).

January 2017700-23

§ 702.05TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

2. See, e.g., Sheetz of Delaware Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344 n.5 (TTAB 2013)

(“A larger record is not necessarily a better record.”); General Mills Inc. v. Fage Dairy Processing Industry

SA, 100 USPQ2d 1584, 1591 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679

(TTAB 2014) (non-precedential) (“Even counsel at the oral hearing acknowledged that the present record

is of a magnitude generally reserved for district court litigation.”); Careﬁrst of Maryland Inc. v. FirstHealth

of the Carolinas, Inc., 77 USPQ2d 1492, 1495 (TTAB 2005) (“It is simply inconceivable to the Board that

the issues herein warranted either a record of this size or the large number of motions relating thereto.”).

3. See, e.g., Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1040 n.19 (TTAB 2010) (“It is not

necessary for the parties to introduce every document obtained from an Internet search especially when it

includes duplicative and irrelevant materials.”); Blue Man Productions v. Tarmann, 75 USPQ2d 1811, 1814

(TTAB 2005) (foreign language materials submitted with no translation), rev’d on other grounds, No.

05-2037, slip op. (D.D.C. Apr. 3, 2008).

4. 37 CFR § 2.122(g). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69652, 69964 (October 7, 2016) (“The Ofﬁce is adding new §

2.122(g) detailing the requirement for admission of evidence by notice of reliance. Section 2.122(g) provides

that a notice must indicate generally the relevance of the evidence offered and associate it with one or more

issues in the proceeding, but failure to do so with sufﬁcient speciﬁcity is a procedural defect that can be

cured by the offering party within the time set by Board order. The amendment codiﬁes current case law

and Ofﬁce practice.”).

5. See General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1592 (TTAB 2011),

judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential) (after oral hearing,

Board required parties to submit a joint index and amended briefs with citations to the joint index); Blackhorse

v. Pro-Football Inc., 98 USPQ2d 1633, 1635-36 (TTAB 2011) (tables of evidence required).

6. 37 CFR § 2.123(g)(3). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) (“The Ofﬁce is amending § 2.123(g)(3) to

add that deposition transcripts must contain a word index, listing the pages where the words appear in the

deposition.”).

7. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81

Fed. Reg. 69950, 69951 (October 7, 2016) (“The existing rule for convening a pretrial conference because

of the complexity of issues is amended so that it is limited to exercise only by the Board, upon the Board’s

initiative.”).

703 Taking and Introducing Testimony

703.01 Afﬁdavits, Declarations and Oral Testimony Depositions

703.01(a) In General

In addition to submission of evidence under notices of reliance, parties may introduce evidence in the form

of testimony depositions taken by a party during its assigned testimony period, or in the form of afﬁdavit

or declaration testimony submitted during its testimony period, subject to the right of the adverse party to

conduct cross-examination. The submission of evidence and testimony during the parties’ assigned testimony

periods corresponds to the trial in court proceedings. [Note 1.] For information concerning submission of

evidence by notice of reliance, see TBMP § 704

700-24January 2017

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703

Testimony is taken out of the presence of the Board, by afﬁdavit or declaration, or on oral examination or

written questions, and the afﬁdavits, declarations and written deposition transcripts, together with any

exhibits thereto, are then submitted to the Board. See TBMP § 702. See also TBMP §502.01 . During a

party's testimony period, testimony is taken by or on behalf of the party, of the party himself or herself (if

the party is an individual), or of an ofﬁcial or employee of the party, or of some other witness testifying

(either willingly or under subpoena) on behalf of the party.

Testimony afﬁdavits, declarations and depositions are the means by which a party may introduce into the

record not only the testimony of its witnesses, but also those documents and other exhibits that may not be

made of record by notice of reliance. See generally TBMP § 704 describing types of evidence admissible

by notice of reliance. However, only evidence admissible under the applicable rules of evidence may properly

be adduced during a testimony deposition or presented by afﬁdavit or declaration; inadmissibility is a valid

ground for objection. [Note 2.] See TBMP § 707.03. In addition, once evidence has properly been made

of record, any party may refer to it for any purpose permitted by the Federal Rules of Evidence. [Note 3.]

For a comparison of testimony depositions and discovery depositions, see TBMP § 404.09.

NOTES:

1. 37 CFR § 2.116(e). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69959 (October 7, 2016) (“The Ofﬁce is amending § 2.116(e) to add

that the submission of notices of reliance, declarations, and afﬁdavits, as well as the taking of depositions,

during the testimony period corresponds to the trial in court proceedings. The revision codiﬁes current Ofﬁce

practice and is consistent with amendments relating to declarations and afﬁdavits.”). For a general discussion

of Board inter partes proceedings, see B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, 135

S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015).

2. See 37 CFR § 2.122(a) and 37 CFR § 2.123(l).

3. 37 CFR § 2.122(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (“The Ofﬁce is further amending § 2.122(a)

consistent with § 2.120(k)(7), to add that when evidence has been made of record by one party in accordance

with these rules, it may be referred to by any party for any purpose permitted by the Federal Rules of

Evidence. The amendments codify current Ofﬁce practice.”). See, e.g., Nazon v. Ghiorse, 119 USPQ2d

1178, 1181 n.6 (TTAB 2016) (“Once evidence is properly of record, it may be relied on by any party for

any purpose.”).

703.01(b) Form of Testimony

37 CFR § 2.123

(a)(1) The testimony of witnesses in inter partes cases may be submitted in the form of an afﬁdavit

or a declaration pursuant to § 2.20 and in conformance with the Federal Rules of Evidence, ﬁled during

the proffering party’s testimony period, subject to the right of any adverse party to elect to take and bear

the expense of oral cross-examination of that witness as provided under paragraph (c) of this section if such

witness is within the jurisdiction of the United States, or conduct cross-examination by written questions as

provided in § 2.124 if such witness is outside the jurisdiction of the United States, and the offering party

must make that witness available; or taken by deposition upon oral examination as provided by this section

or by deposition upon written questions as provided by § 2.124.

January 2017700-25

§ 703.01(b)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

(2) Testimony deposition taken in a foreign country shall be taken by deposition upon written

questions as provided by § 2.124, unless the Board, upon motion for good cause, orders that the deposition

be taken by oral examination, or the parties so stipulate; or by afﬁdavit or declaration, subject to the right

of any adverse party to elect to take and bear the expense of cross-examination by written questions of that

witness. If a party serves notice of the taking of a testimonial deposition upon written questions of a witness

who is, or will be at the time of the deposition, present within the United States or any territory which is

under the control and jurisdiction of the United States, any adverse party may, within twenty days from the

date of service of the notice, ﬁle a motion with the Trademark Trial and Appeal Board, for good cause, for

an order that the deposition be taken by oral examination.

(b) Stipulations. If the parties so stipulate in writing, depositions may be taken before any person

authorized to administer oaths, at any place, upon any notice, and in any manner, and when so taken may

be used like other depositions. The parties may stipulate in writing what a particular witness would testify

to if called; or any relevant facts in the case may be stipulated in writing.

Ordinarily, the testimony of a witness may be taken by afﬁdavit, declaration or on oral examination pursuant

to 37 CFR § 2.123, or by deposition on written questions pursuant to 37 CFR § 2.124. [Note 1.] For

information concerning testimony depositions on written questions, see TBMP § 703.02.

A party may unilaterally choose to submit the trial testimony of any witness or witnesses of any party in the

form of an afﬁdavit or declaration pursuant to 37 CFR § 2.20 and in conformance with the Federal Rules

of Evidence, subject to the right of any adverse party to cross-examine the witness orally if the witness is

within the jurisdiction of the United States, or by written questions pursuant to 37 CFR § 2.124 if the witness

is not within the jurisdiction of the United States. [Note 2.] The afﬁdavit or declaration must be under oath

and subject to cross-examination. [Note 3.] In addition, the offering party must make the witness available

for cross-examination if elected. [Note 4.] As with cross-examination at oral testimony depositions, the

party cross-examining the afﬁant or declarant must pay its own travel and attorney expenses. The proffering

party has and continues to bear the expense of producing its witness. However, the party seeking oral

cross-examination of an afﬁant or declarant must cover the expense of the court reporter. Any redirect and

recross is to be taken at the same time as the oral cross-examination, with the party who originally sought

oral cross-examination bearing the cost of the court reporter. [Note 5.]

The testimony of a witness ordinarily may also be taken by deposition on written questions. [Note 6.]

However, testimony taken in a foreign country must be taken: by deposition on written questions, unless

the Board, on motion for good cause, orders that the deposition be taken by oral examination, or the parties

so stipulate; or by afﬁdavit or declaration, subject to the right of any adverse party to elect to take and bear

the expense of cross-examination by written questions of that witness. [Note 7.] See TBMP § 404.03(b),

TBMP § 520, TBMP § 531 and TBMP § 703.02.

In addition, if a party serves notice of the taking of a testimony deposition on written questions of a witness

who is, or will be at the time of the deposition, present within the United States (or any territory that is under

the control and jurisdiction of the United States), any adverse party may, within 20 days from the date of

service of the notice, ﬁle a motion with the Board, for good cause, for an order that the deposition be taken

by oral examination. [Note 8.] What constitutes good cause to take an oral deposition is determined on a

case-by-case basis. [Note 9.] See TBMP § 531.

The parties may also stipulate in writing any relevant facts in the case, or what a particular witness would

testify to if called, or that a party may use a discovery deposition as testimony. [Note 10.]

700-26January 2017

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.01(b)

NOTES:

1. See 37 CFR § 2.123(a)(1) and 37 CFR § 2.123(a)(2). Effective January 14, 2017, the Ofﬁce amended

these rules by allowing a unilateral option for trial testimony by afﬁdavit or declaration subject to the right

of oral cross-examination by the adverse party or parties. See MISCELLANEOUS CHANGES TO

TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69951 (October 7, 2016).

2. 37 CFR § 2.123(a)(1). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) (“The Ofﬁce is amending § 2.123(b) to

remove the requirement for written agreement of the parties to submit testimony in the form of an afﬁdavit,

as provided in amendments to § 2.123(a)(1), and to clarify that parties may stipulate to any relevant facts.”).

3. See 37 CFR § 2.123(a)(1); B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, 135 S. Ct.

1293, 113 USPQ2d 2045 (2015) (Supreme Court focused on fact that Board proceedings require testimony

to be under oath and subject to cross-examination); MISCELLANEOUS CHANGES TO TRADEMARK

TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (concerning the

unilateral option of permitting submission of witness testimony by afﬁdavit or declaration, “The new

procedure retains what the Supreme Court focused on in B&B Hardware, Inc. v. Hargis Industries, Inc.,

135 S. Ct. 1293, 113 USPQ2d 2045 (2015): That testimony be under oath and subject to cross-examination.

The ability to elect cross-examination of the witness in the new unilateral procedure maintains the fairness

and weightiness of Board proceedings.”).

4. 37 CFR § 2.123(a)(1)

5. See 37 CFR § 2.123(a)(1). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND

APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (“Any redirect and recross is to

be taken at the same time, with the party the originally sought cross-examination bearing the cost of the

court reporter. The goal of the ﬁnal rule is to minimize the ability of a party seeking cross-examination to

thwart the other party’s efforts to rein in the cost of litigation by opting for testimony by afﬁdavit or

declaration.”).

6. See 37 CFR § 2.123(a)(1) and 37 CFR § 2.124

7. 37 CFR § 2.123(a)(2). With respect to discovery depositions, see 37 CFR § 2.120(c)(1); Jain v. Ramparts

Inc., 49 USPQ2d 1429, 1431 (TTAB 1998); Orion Group Inc. v. Orion Insurance Co., 12 USPQ2d 1923,

1925-26 (TTAB 1989) (good cause shown to take oral deposition of witness in England under the

circumstances and since fares to England were not that much greater than fares within the United States and

no translation was required).

8. 37 C.F.R §2.123(a)(2). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (“The Ofﬁce is further amending § 2.123(a)(1)

to move to § 2.123(a)(2) a provision permitting a motion for deposition on oral examination of a witness in

the United States whose testimonial deposition on written questions has been noticed.”).

9. See Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 1990),

corrected at 19 USPQ2d 1479 (TTAB 1990) (good cause shown to take oral deposition of expert witness,

during rebuttal testimony period); Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB

1980) (good cause shown where deponents were former employees of respondent and present employees

of petitioner and were being deposed for ﬁrst time during rebuttal period).

January 2017700-27

§ 703.01(b)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

10. 37 CFR § 2.123(b). See Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859,

1862 (TTAB 2009) (discovery deposition may be ﬁled by notice of reliance if parties have stipulated to

introduction of the deposition); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB

1990) (stipulation for use of discovery deposition as testimony deposition); Oxy Metal Industries Corp. v.

Transene Co., 196 USPQ 845, 847 n.20 (TTAB 1977) (litigation expenses can be saved where parties agree

to introduce all uncontroverted facts by afﬁdavit or stipulated facts and provide balance through deposition

testimony).

703.01(c) Time for Taking Trial Testimony

37 CFR § 2.121 Assignment of times for taking testimony and presenting evidence. (a) The Trademark

Trial and appeal Board will issue a trial order … assigning to each party its time for taking testimony and

presenting evidence (“testimony period”). No testimony shall be taken or evidence presented except during

the times assigned, unless by stipulation of the parties approved by the Board, or upon motion granted by

the Board, or upon order of the Board. …

A party may take trial testimony only during its assigned testimony period, except by stipulation of the

parties approved by the Board, or, on motion, by order of the Board. [Note 1.] See TBMP § 701.

For information concerning the assignment of testimony periods, and the rescheduling, extension, and

reopening thereof, see TBMP § 509 and TBMP § 701.

NOTES:

1. See 37 CFR § 2.121(a). See also Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1454 n.1 (TTAB 1998)

(parties stipulated that testimony deposition of applicant's witness could be taken prior to its testimony period

on the same day as opposer's witness to achieve efﬁciencies in time and cost). Cf. Of Counsel Inc. v. Strictly

of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (where opposer's testimony deposition

was taken two days prior to the opening of opposer's testimony period, and applicant ﬁrst raised a timeliness

objection in its brief on the case, objection held waived, since the premature taking of the deposition could

have been corrected on seasonable objection).

703.01(d) Time and Place of Oral Testimony Deposition

37 C.F.R §2.123

(a)(1) The testimony of witnesses in inter partes cases may be submitted in the form of an afﬁdavit

or a declaration pursuant to § 2.20 and in conformance with the Federal Rules of Evidence, ﬁled during

the proffering party’s testimony period, subject to the right of any adverse party to elect to take and bear

the expense of oral cross-examination of that witness as provided under paragraph (c) of this section if such

witness is within the jurisdiction of the United States, or conduct cross-examination by written questions as

provided in § 2.124 if such witness is outside the jurisdiction of the United States, and the offering party

must make that witness available; or taken by deposition upon oral examination as provided by this section;

or by deposition upon written questions as provided by § 2.124.

(2) Testimony taken in a foreign country shall be taken: by deposition upon written questions as

provided by § 2.124, unless the Board, upon motion for good cause, orders that the deposition be taken by

oral examination, or the parties so stipulate;

* * * *

700-28January 2017

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.01(c)

party, due notice in writing shall be given to the adverse party or parties, as provided in § 2.119(b), of the

time when and place where the depositions will be taken, of the cause or matter in which they are to be used,

and the name and address of each witness to be examined. Depositions may be noticed for any reasonable

time and place in the United States. A deposition may not be noticed for a place in a foreign country except

as provided in paragraph (a)(2) of this section. No party shall take depositions in more than one place at

the same time, nor so nearly at the same time that reasonable opportunity for travel from one place of

examination to the other is not available. When a party elects to take oral cross-examination of an afﬁant

or declarant, the notice of such election must be served on the adverse party and a copy ﬁled with the Board

within 20 days from the date of service of the afﬁdavit or declaration and completed within 30 days from

the date of service of the notice of election.

An oral testimony deposition upon direct examination may be noticed for any reasonable time during the

deposing party's testimony period. [Note 1.] When a party elects to take oral cross-examination of an afﬁant

or declarant, the notice of such election must be served on the adverse party and a copy ﬁled with the Board

within 20 days from the date of service of the afﬁdavit or declaration and completed within 30 days from

the date of service of the notice of election. [Note 2.] A testimony deposition may not be taken outside the

deposing party's testimony period except by stipulation of the parties approved by the Board, or, on motion,

by order of the Board. [Note 3.] See TBMP § 701.

An oral testimony deposition to be taken in the United States may be noticed for any reasonable place. [Note

4.] A party may not take oral testimony depositions in more than one place at the same time, nor so nearly

at the same time that reasonable opportunity for travel from one place of examination to the other is not

available. [Note 5.]

A testimony deposition may not be noticed for a place in a foreign country, unless the deposition is to be

taken on written questions as provided by 37 CFR § 2.124, or unless the Board, on motion for good cause,

orders, or the parties stipulate, that the deposition be taken by oral examination. [Note 6.] See TBMP §

703.01(b).

If the parties so stipulate in writing, a testimony deposition may be taken before any person authorized to

administer oaths, at any place, on any notice, and in any manner, and when so taken may be used like any

other deposition. [Note 7.]

NOTES:

1. See 37 CFR § 2.123(a)(1) and 37 CFR § 2.123(c).

2. 37 CFR § 2.123(c).

3. See 37 CFR § 2.121(a) and Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1454 n.1 (TTAB 1998)

(stipulation that testimony deposition of applicant's witness could be taken prior to its testimony period on

the same day as opposer's witness to achieve efﬁciencies in time and cost). Cf. Of Counsel Inc. v. Strictly

of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (where opposer's testimony deposition

was taken two days prior to the opening of opposer's testimony period, and applicant ﬁrst raised a timeliness

objection in its brief on the case, objection held waived, since the premature taking of the deposition could

have been corrected on seasonable objection).

4. See 37 CFR § 2.123(c).

January 2017700-29

§ 703.01(d)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

5. See 37 CFR § 2.123(c).

6. See 37 CFR § 2.123(a), 37 CFR § 2.123(a)(2) and 37 CFR § 2.123(c).

7. 37 CFR § 2.123(b).

703.01(e) Notice of Oral Deposition and Notice of Election of Oral Cross-Examination of

Afﬁant or Declarant

37 CFR §2.123(b) Stipulations. If the parties so stipulate in writing, depositions may be taken before

any person authorized to administer oaths, at any place, upon any notice, and in any manner, and when so

taken may be used like other depositions. The parties may stipulate in writing what a particular witness

would testify to if called; or any relevant facts in the fact may be stipulated in writing.

37 CFR § 2.123 (c) Notice of examination of witnesses. Before the oral depositions of witnesses shall be

taken by a party, due notice in writing shall be given to the adverse party or parties, as provided in § 2.119(b),

of the time when and place where the depositions will be taken, of the cause or matter in which they are to

be used, and the name and address of each witness to be examined. Depositions may be noticed for any

reasonable time and place in the United States. A deposition may not be noticed for a place in a foreign

country except as provided in paragraph (a)(2) of this section. No party shall take depositions in more than

one place at the same time, nor so nearly at the same time that reasonable opportunity for travel from one

place of examination to the other is not available. When a party elects to take oral cross-examination of an

afﬁant or declarant, the notice of such election must be served on the adverse party and a copy ﬁled with

the Board within 20 days from the date of service of the afﬁdavit or declaration and completed within 30

days from the date of service of the notice of election. Upon motion for good cause by any party, or upon

its own initiative, the Board may extend the periods for electing and taking oral cross-examination. When

such election has been made but cannot be completed within that testimony period, the Board, after the

close of that testimony period, shall suspend or reschedule other proceedings in the matter to allow for the

orderly completion of the oral cross-examination(s).

Before a party may take the oral testimony deposition upon direct examination of a witness, the party must

give due (i.e., reasonable) notice in writing to every adverse party. [Note 1.] See TBMP § 533.02(a). Cf.

TBMP § 404.05. In assessing whether a party gave reasonable notice of a deposition, the Board counts

calendar days, not business days. [Note 2.]

The notice must specify the time and place the depositions will be taken, the cause or matter in which they

are to be used, and the name and address of each witness to be examined. [Note 3.] Cf. TBMP § 404.05.

For information concerning the raising of an objection to a testimony deposition on the ground of improper

or inadequate notice, see 37 CFR § 2.123(e)(3), TBMP § 533.02, and TBMP § 707.03(b)(2).

If the parties so stipulate in writing, an oral testimony deposition may be taken before any person authorized

to administer oaths, at any place, on any notice, and in any manner, and when so taken may be used like

any other deposition. [Note 4.]

Unlike a deposition transcript, a notice of oral deposition need not be ﬁled with the Board. [Note 5.] However,

if a certiﬁed copy of the notice of deposition is, for some reason, required for use before a federal district

court, the notice of deposition must be ﬁled with the Board via ESTTA for purposes of certiﬁcation. [Note

6.] See TBMP § 122 and TBMP § 703.01(f)(2).

700-30January 2017

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.01(e)

A party who elects to take oral cross-examination of an afﬁant or declarant must serve the notice of such

election on the adverse party and ﬁle a copy of the notice of election with the Board within 20 days from

the date of service of the afﬁdavit or declaration, and the party must complete the oral cross-examination

within 30 days from the date of service of the notice of election. On motion for good cause, or on its own

initiative, the Board may extend the periods for electing and taking oral cross-examination. When a party

has elected to take oral cross-examination of an afﬁant or declarant, but cannot complete the cross-examination

within that testimony period, the Board, after the close of that testimony period, will suspend or reschedule

proceedings in the matter to allow for the orderly completion of the oral cross-examination(s). [Note 7.] For

information concerning taking depositions in foreign countries, see TBMP § 703.01

NOTES:

1. 37 CFR § 2.123(c). See Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1653 (TTAB 2007) (six calendar

days is reasonable notice); Gaudreau v. American Promotional Events, Inc., 82 USPQ2d 1692, 1696 (TTAB

2007) (two days notice prior to the close of the testimony period was unreasonable); Duke University v.

Haggar Clothing Co., 54 USPQ2d 1443, 1444 (TTAB 2000) (one and two-day notices were not reasonable

without compelling need for such haste; three-day notice was reasonable); Electronic Industries Association

v. Potega, 50 USPQ2d 1775, 1776 (TTAB 1999) (two-day notice was not reasonable); Penguin Books Ltd.

v. Eberhard, 48 USPQ2d 1280, 1284 (TTAB 1998) (one-day notice for deposition of expert witness was

short but not prejudicial where party gave notice “as early as possible” and moreover offered to make witness

again available at a future date); Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1074 (TTAB 1990) (24

hours not sufﬁcient time to prepare for deposition); Hamilton Burr Publishing Co. v. E. W. Communications,

Inc., 216 USPQ 802, 804 n.6 (TTAB 1982) (two-day notice of deposition, although short, was not

unreasonable where deposition was held a short distance from applicant's attorney's ofﬁce and where no

speciﬁc prejudice was shown).

2. Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1653 (TTAB 2007).

3. See 37 CFR § 2.123(c). See also Steiger Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 169 (TTAB

1984) (testimony not considered where notice failed to specify name of party being deposed), different

results reached on reh'g, 3 USPQ2d 1708 (TTAB 1984); O. M. Scott & Sons Co. v. Ferry-Morse Seed Co.,

190 USPQ 352, 353 (TTAB 1976) (testimony stricken where notice identiﬁed one witness and indicated

that “possibly others will testify” and where opposer proceeded to take testimony of unidentiﬁed witness,

applicant objected, did not cross-examine the witness, and moved to strike testimony).

4. 37 CFR § 2.123(a)(1) and 37 CFR § 2.123(b).

5. See 37 CFR § 2.123(f).

6. See 37 CFR § 2.126(a) and 37 CFR § 2.126(b).

7. See 37 CFR § 2.123(c) and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) (“The Ofﬁce is further amending § 2.123(c)

to add that, when a party elects to take oral cross-examination of an afﬁant or declarant, the notice of such

election must be served on the adverse party and a copy ﬁled with the Board within 20 days from the date

of service of the afﬁdavit or declaration and completed within 30 days from the date of service of the notice

of election. The Ofﬁce is further amending § 2.123(c) to add that the Board may extend the periods for

electing and taking oral cross-examination and, when necessary, shall suspend or reschedule proceedings

in the matter to allow for the orderly completion of oral cross-examination(s) that cannot be completed

within a testimony period.”).

January 2017700-31

§ 703.01(e)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

703.01(f) Securing Attendance of Unwilling Adverse Party or Non-party for Testimony

Deposition

Please Note: This section only pertains to testimony depositions, as a party who takes testimony by afﬁdavit

or declaration must make the witness available for cross-examination under 37 CFR § 2.123(a) and 37 CFR

§ 2.123(a)(2). See TBMP § 703.01(b).

703.01(f)(1) In General

Normally, during a party's testimony period, testimony depositions are taken, by or on behalf of the party,

of the party himself or herself (if the party is an individual), or of an ofﬁcial or employee of the party, or of

some other witness who is willing to appear voluntarily to testify on behalf of the party. These testimony

depositions may be taken, at least in the United States, on notice alone.

However, where a party wishes to take the testimony of an adverse party or non-party, or an ofﬁcial or

employee of an adverse party or non-party, and the proposed witness is not willing to appear voluntarily to

testify, the deposition may not be taken on notice alone. Rather, the party that wishes to take the deposition

must take steps, discussed below, to compel the attendance of the witness. [Note 1.] If the witness resides

in a foreign country, the party may not be able to take the deposition. See TBMP § 703.01(f)(2) (securing

attendance of unwilling witness residing in United States), TBMP § 703.01(f)(3) (securing attendance of

unwilling witness residing in foreign country), and TBMP § 703.02 (testimony depositions on written

questions).

NOTES:

1. See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990) (after unsuccessfully

attempting to take testimony deposition on written questions of adverse party's ofﬁcer on notice alone,

opposer obtained subpoena from U.S. district court ordering appearance); Consolidated Foods Corp. v.

Ferro Corp., 189 USPQ 582, 583 (TTAB 1976) (it is incumbent on deposing party to have a subpoena

issued from the U.S. district court where witness is located and have same properly served on witness with

sufﬁcient time to apprise him that he is under order to appear). See also Stockpot, Inc. v. Stock Pot Restaurant,

Inc., 220 USPQ 52, 55 n.7 (TTAB 1983) (no adverse inference can be drawn from adverse party's failure

to appear and produce requested documents at testimony deposition where party attempted to secure attendance

by notice alone), aff'd, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984).

703.01(f)(2) Unwilling Witness Residing in United States

If a party wishes to take the trial testimony of an adverse party or non-party (or an ofﬁcial or employee of

an adverse party or non-party) residing in the United States, and the proposed witness is not willing to appear

voluntarily to testify, the party wishing to take the testimony must secure the attendance of the witness by

subpoena pursuant to 35 U.S.C. § 24 and Fed. R. Civ. P. 45. [Note 1.] Cf. TBMP § 404.03(a)(2) (securing

attendance of non-party residing in U.S. at discovery deposition).

The subpoena must be issued, pursuant to 35 U.S.C. § 24 and Fed. R. Civ. P. 45, from the United States

district court in the federal judicial district where the witness resides or is regularly employed. [Note 2.]

Occasionally district courts may request a “matter number” for the issuance of a subpoena. If that is the

case, the requesting party should obtain one from the court or determine whether the Board’s proceeding

number will satisfy the court. If, for any reason, a certiﬁed copy of the notice of deposition is required in

connection with the subpoena, such as for purposes of a motion to quash the subpoena, or a motion to enforce

700-32January 2017

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.01(f)

the subpoena, the interested party should contact the clerk of the court to determine whether the court will

require a formal certiﬁed copy (i.e., a certiﬁed copy bearing a USPTO seal) of the notice. [Note 3.] A certiﬁed

copy of a notice of deposition is a copy prepared by the party noticing the deposition, and certiﬁed by the

USPTO as being a true copy of the notice of deposition ﬁled in the proceeding before the Board. A copy of

a notice of deposition cannot be certiﬁed by the USPTO unless it has been ﬁled in the Board proceeding.

For information relating to USPTO certiﬁcation of a notice of deposition, see TBMP § 122.

If a person named in a subpoena compelling attendance at a testimony deposition fails to attend the deposition,

or refuses to answer a question propounded at the deposition, the deposing party must seek enforcement

from the United States district court that issued the subpoena. Similarly, any request to quash a subpoena

must be directed to the United States district court that issued the subpoena. The Board has no jurisdiction

over depositions by subpoena. [Note 4.]

NOTES:

1. See Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009);

Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990); Consolidated Foods

Corp. v. Ferro Corp., 189 USPQ 582, 583-84 (TTAB 1976).

2. Cf. 37 CFR § 2.120 (b).

Please Note: To the extent that the 2013 amendments to Fed. R. Civ. P. 45(a)(2) and Fed. R. Civ. P. 45(f)

conﬂict with 35 U.S.C. § 24, § 24 is controlling. See 37 CFR § 2.116 (a) (“Except as otherwise provided,

and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed

by the Federal Rules of Civil Procedure.”).

3. Please Note: The Board no longer provides veriﬁed copies of ﬁlings.

4. See, e.g., In re Johnson & Johnson, 59 F.R.D. 174, 178 USPQ 201, 201 (D.Del. 1973) (no power to grant

protective order with respect to depositions taken by subpoena); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d

1303, 1304 n.3 (TTAB 1987) (no authority to quash subpoena); PRD Electronics Inc. v. Paciﬁc Roller Die

Co., 169 USPQ 318, 319 n.3 (TTAB 1971) (opposer’s allegation in its brief that applicant deﬁed a subpoena

to produce witnesses is a matter opposer should have pursued before the court that issued the subpoena).

Cf. Ate My Heart v. GA GA Jeans, 111 USPQ2d 1564, 1565 n.5 (TTAB 2014) (notice of deposition of

unwilling non-party witness must include subpoena, and related motions must be ﬁled with district court

that issued subpoena, not Board).

703.01(f)(3) Unwilling Witness Residing in Foreign Country

There is no certain procedure for obtaining, in a Board inter partes proceeding, the trial testimony deposition

of a witness who resides in a foreign country, is an adverse party or a non-party (or an ofﬁcial or employee

of an adverse party or non-party), and is not willing to appear voluntarily to testify. However, the deposing

party may be able to obtain the testimony deposition of such a witness through the letter rogatory procedure

or The Hague Convention letter of request procedure. [Note 1.]

For information concerning these procedures, see TBMP § 404.03(c)(2) and TBMP § 703.01(g).

The U.S. Court of Appeals for the Fourth Circuit has held, however, that a district court has the power to

issue a subpoena for a trial deposition noticed under Fed. R. Civ. P. 30(b)(6), requiring a foreign corporate

January 2017700-33

§ 703.01(f)(3)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

applicant to produce an appropriate representative in the United States for testimony on the subjects identiﬁed

in the subpoena, regardless of the domicile of the representative. [Note 2.]

NOTES:

1. See Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009)

(attendance of non-party witness residing outside the United States could not be compelled).

2. Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 511 F.3d 437, 85 USPQ2d 1385 (4th Cir.

2007), cert. denied, 128 S. Ct. 2508 (2008).

703.01(g) Persons Before Whom Depositions May be Taken

37 CFR § 2.123(d) Persons before whom depositions may be taken. Depositions may be taken before

persons designated by Rule 28 of the Federal Rules of Civil Procedure.

Fed. R. Civ. P. 28. Persons Before Whom Depositions May Be Taken.

(a) Within the United States.

(1) In General. Within the United States or a territory or insular possession subject to United States

jurisdiction, a deposition must be taken before:

(A) an ofﬁcer authorized to administer oaths either by federal law or by the law in the place of

examination; or

(B) a person appointed by the court where the action is pending to administer oaths and take

testimony.

(2) Deﬁnition of “Ofﬁcer.” The term “ofﬁcer” in Rules 30, 31 and 32 includes a person appointed

by the court under this rule or designated by the parties under Rule 29(a).

(b) In a Foreign Country.

(1) In General. A deposition may be taken in a foreign country:

(A) under an applicable treaty or convention;

(B) under a letter of request, whether or not captioned a “letter rogatory”;

law in the place of examination; or

(D) before a person commissioned by the court to administer any necessary oath and take

testimony.

(2) Issuing a Letter of Request or a Commission. A letter of request, a commission, or both may

be issued:

(A) on appropriate terms after an application and notice of it; and

(B) without a showing that taking the deposition in another manner is impracticable or

inconvenient.

(3) Form of a Request, Notice, or Commission. When a letter of request or any other device is

used according to a treaty or convention, it must be captioned in the form prescribed by that treaty or

convention. A letter of request may be addressed “To the Appropriate Authority in [name of country].” A

deposition notice or a commission must designate by name or descriptive title the person before whom the

deposition is to be taken.

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.01(g)

(4) Letter of Request--Admitting Evidence. Evidence obtained in response to a letter of request

need not be excluded merely because it is not a verbatim transcript, because the testimony was not taken

under oath, or because of any similar departure from the requirements for depositions taken within the

United States.

employee, or attorney; who is related to or employed by any party's attorney; or who is ﬁnancially interested

in the action.

Depositions in Board inter partes proceedings may be taken before the persons described in Fed. R. Civ. P.

28. [Note 1.]

Thus, in the United States (or in any territory or insular possession subject to the jurisdiction of the United

States) a testimony deposition in a Board proceeding “must be taken before an ofﬁcer authorized to administer

oaths either by federal law or by the law in the place of examination; or before a person appointed by the

court where the action is pending to administer oaths and take testimony.” [Note 2.] As a practical matter,

Board proceeding depositions taken in the United States are usually taken before a court reporter who is

authorized to administer oaths in the jurisdiction where the deposition is taken.

In a foreign country, a testimony deposition in a Board proceeding may be taken pursuant to Fed. R. Civ.

P. 28(b). This means, for example, that a testimony deposition in a Board proceeding taken of a willing

witness in a foreign country usually may be taken on notice before a U.S. consular ofﬁcial, or before anyone

authorized by the law of the foreign country to administer oaths therein. Some countries, however, may

prohibit the taking of testimony within their boundaries for use in any other country, including the United

States, even though the witness is willing; or may permit the taking of testimony only if certain procedures

are followed. [Note 3.] A party which wishes to take a testimony deposition in a foreign country should ﬁrst

consult with local counsel in the foreign country, and/or with the Ofﬁce of American Citizen Services, U.S.

Department of State, in order to determine whether the taking of the deposition will be permitted by the

foreign country, and, if so, what procedure must be followed. The testimony of an unwilling adverse party

or non-party witness may be taken in a foreign country, if at all, only by the letter rogatory procedure, or

by the letter of request procedure provided under the Hague Convention on the Taking of Evidence Abroad

in Civil or Commercial Matters, or by any other procedure provided for the purpose by any future treaty

into which the United States may enter. [Note 4.] Cf. TBMP § 404.03(c) (concerning discovery deposition

of non-party residing in foreign country) and TBMP § 703.01(f)(3) (securing attendance of unwilling witness

residing in foreign country). If the parties so stipulate in writing (and if permitted by the laws of the foreign

country, in the case of a deposition to be taken in a foreign country), a deposition may be taken before any

person authorized to administer oaths, at any place, on any notice, and in any manner, and when so taken

may be used like any other deposition. [Note 5.]

NOTES:

1. 37 CFR § 2.123(d).

2. See Fed. R. Civ. P. 28(a).

3. See 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil

3d § 2083 (2016).

4. Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 n.5 (TTAB 2009).

January 2017700-35

§ 703.01(g)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

5. 37 CFR § 2.123(b).

703.01(h) Examination of Witnesses

37 CFR § 2.123 (e) Examination of witnesses.

(1) Each witness before providing oral testimony shall be duly sworn according to law by the ofﬁcer

before whom the deposition is to be taken. Where oral depositions are taken, every adverse party shall have

a full opportunity to cross-examine each witness. When testimony is proffered by afﬁdavit or declaration,

every adverse party will have the right to elect oral cross-examination of any witness within the jurisdiction

of the United States. For examination of witnesses outside the jurisdiction of the United States, see § 2.124.

(2) The deposition shall be taken in answer to questions, with the questions and answers recorded in

their regular order by the ofﬁcer, or by some other person (who shall be subject to the provisions of Rule

28 of the Federal Rules of Civil Procedure) in the presence of the ofﬁcer except when the ofﬁcer's presence

is waived on the record by agreement of the parties. The testimony shall be recorded and transcribed, unless

the parties present agree otherwise. Exhibits which are marked and identiﬁed at the deposition will be

deemed to have been offered into evidence, without any formal offer thereof, unless the intention of the party

marking the exhibits is clearly to the contrary.

(3) If pretrial disclosures or the notice of examination of witnesses served pursuant to paragraph (c)

of this section are improper or inadequate with respect to any witness, an adverse party may cross-examine

that witness under protest while reserving the right to object to the receipt of the testimony in evidence.

Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike

the testimony from the record, which motion will be decided on the basis of all the relevant circumstances.

i A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure

may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with

2.121(e).

ii A motion to strike the testimony of a witness for lack of proper or adequate notice of examination

must request the exclusion of the entire testimony of that witness and not only a part of that testimony.

(4) All objections made at the time of an oral examination to the qualiﬁcations of the ofﬁcer taking

the deposition, or to the manner of taking it, or to the evidence presented, or to the conduct of any party,

and any other objection to the proceedings, shall be noted by the ofﬁcer upon the deposition. Evidence

objected to shall be taken subject to the objections.

37 CFR § 2.123(g) Form of deposition.. (1) The pages of each deposition must be numbered consecutively,

and the name of the witness plainly and conspicuously written at the top of each page. The deposition must

be in written form. The questions propounded to each witness must be consecutively numbered unless the

pages have numbered lines. Each question must be followed by its answer. The deposition transcript must

be submitted in full-sized format (one page per sheet), not condensed (multiple pages per sheet).

Fed. R. Civ. P. 30(b)(4) The parties may stipulate — or the court may on motion order — that a deposition

be taken by telephone or other remote means. For the purpose of this rule and Rules 28(a), 37(a)(2), and

37(b)(1), the deposition takes place where the deponent answers the questions.

Before providing oral testimony, a witness whose testimony deposition is being taken for use in a Board

inter partes proceeding must be duly sworn, according to law, by the ofﬁcer before whom the deposition is

to be taken. [Note 1.] See TBMP § 703.01(g).

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.01(h)

Testimony by afﬁdavit or declaration pursuant to 37 CFR § 2.20 must be made in conformance with the

Federal Rules of Evidence. The testimony afﬁdavit is a sworn statement, while the declaration permits a

comparable alternative unsworn statement. Both options are under penalty of perjury, and statements in

Board proceedings are subject to 18 U.S.C. § 1001. [Note 2.]

The deposition is taken in answer to questions, and the questions and answers are recorded in order by the

ofﬁcer, or by some other person (who is subject to the provisions of Fed. R. Civ. P. 28) in the presence of

the ofﬁcer, except when the ofﬁcer's presence is waived on the record by agreement of the parties. The

deposition testimony is recorded and transcribed, unless the parties present agree otherwise. [Note 3.]

The Board does not accept videotape testimony. [Note 4.] An afﬁdavit, declaration or testimony deposition

must be submitted to the Board in written form via ESTTA, unless ESTTA is unavailable due to technical

problems, or under extraordinary circumstances. [Note 5.]

On stipulation of the parties, or on motion granted by the Board, a deposition may be taken or attended by

telephone or other remote means. [Note 6.] A deposition taken by telephone or other remote means is taken

in the district and at the place where the witness is to answer the questions propounded to him or her. [Note

7.]

Exhibits which are marked and identiﬁed at the deposition will be deemed to have been offered in evidence,

even if no formal offer thereof is made, unless the intention of the party marking the exhibits is clearly to

the contrary. [Note 8.]

Regardless of the form of the direct testimony, every adverse party must be given an opportunity to

cross-examine the witness. [Note 9.] For information concerning cross-examination of witnesses on written

questions, see TBMP § 703.02. If pretrial disclosures or the notice of deposition served by a party is improper

or inadequate with respect to the witness, an adverse party may ﬁle a motion to quash before the deposition

is scheduled to take place, or alternatively, cross-examine the witness under protest while reserving the right

to object to the receipt of the testimony in evidence. [Note 10.] When testimony has been presented by

afﬁdavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse

party is the prompt ﬁling of a motion to strike. [Note 11.] For information concerning the raising of an

objection to a testimony deposition on the ground of improper or inadequate pretrial disclosures or notice,

see 37 CFR § 2.121(e), 37 CFR § 2.123(e)(3), TBMP § 533.02, TBMP § 707.03(b)(2) and TBMP §

707.03(b)(3).

All objections made at the time of the taking of a testimony deposition as to the qualiﬁcations of the ofﬁcer

taking the deposition, the manner of taking the deposition, the evidence presented, the conduct of any party,

or any other objection to the proceedings, are noted by the ofﬁcer upon the deposition. Evidence objected

to is taken subject to the objections. [Note 12.] See TBMP § 707.03.

Questions to which an objection is made ordinarily should be answered subject to the objection, but a witness

may properly refuse to answer a question asking for information that is, for example, privileged, trade secret

or otherwise protected from disclosure by the protective order in place for the case. See TBMP § 404.09.

For information concerning the propounding party's recourse if a witness not only objects to, but also refuses

to answer, a particular question, see TBMP § 404.09 and TBMP § 707.03(d).

For further information concerning the raising of objections to testimony depositions, afﬁdavits and

declarations see TBMP § 533 and TBMP § 707.03.

January 2017700-37

§ 703.01(h)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

If the parties so stipulate in writing, a deposition may be taken before any person authorized to administer

oaths, at any place, on any notice, and in any manner, and when so taken may be used like any other

deposition. [Note 13.]

For information concerning depositions of witnesses in foreign countries, see TBMP § 703.01(g)

NOTES:

1. 37 CFR § 2.123(e)(1). See Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382, 1384 (TTAB

2000) (objection to deposition taken in Honduras that ofﬁcer designated in notice did not take deposition

and that the transcript did not show due administration of the oath overruled where the person who conducted

the deposition had authority to do so under Honduran law and the oath was administered in standard manner

under Honduran law).

2. See28 U.S.C. 1746. See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (in response to a comment, “the Ofﬁce has

adopted language in the ﬁnal rule directed to the concerns expressed regarding afﬁdavit testimony by

explicitly requiring that the afﬁdavit or declaration pursuant to § 2.20 be made in conformance with the

Federal Rules of Evidence. Regarding the concern raised about afﬁdavit or declaration testimony being

‘duly sworn’ and under penalty of perjury, the testimony afﬁdavit is a sworn statement, while the declaration

permits a comparable alternative unsworn statement. See28 U.S.C. § 1746. Either option is under penalty

of perjury, and statements in Board proceedings are subject to 18 U.S.C. § 1001.”).

3. 37 CFR § 2.123(e)(2).

4. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81

Fed. Reg. 69950, 69964 (October 7, 2016) (Board considered but rejected suggestion of allowing videotape

depositions: “The Board has never accepted video testimony …. The current online ﬁling system is not able

to accept video testimony however, this possibility may be considered in subsequent rulemakings as TTAB’s

online systems are enhanced.”).

5. 37 CFR § 2.123(g) and 37 CFR § 2.126.

6. See Fed. R. Civ. P. 30(b)(4); Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1654 (TTAB 2007) (noting

parties may resolve conﬂict concerning the scheduling of deposition where travel for one party is involved,

by conducting deposition by telephone or other electronic means); Hewlett-Packard Co. v. Healthcare

Personnel Inc., 21 USPQ2d 1552, 1552-53 (TTAB 1991) (Board granted request to attend deposition by

telephone, noting that trademark rules do not speciﬁcally provide for or prohibit depositions by telephone

and that federal court practice favors use of technological beneﬁts).

7. Fed. R. Civ. P. 30(b)(4).

8. 37 CFR § 2.123(e)(2). Cf. Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d 1835, 1838 n.4

(TTAB 1989) (decided prior to the rule change which eliminated “formal” introduction of exhibits, but

exhibits still not excluded).

9. See 37 CFR § 2.123(a)(1). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND

APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (concerning the unilateral option

to submit testimony by afﬁdavit or declaration, “The new procedure retains what the Supreme Court focused

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.01(h)

on in B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, 113 USPQ2d 2045 (2015): That

testimony be under oath and subject to cross examination. The ability to elect cross-examination of the

witness in the new unilateral procedure maintains the fairness and weightiness of Board proceedings.”).

10. 37 CFR § 2.121(e) and 37 CFR § 2.123(e)(3). See MISCELLANEOUS CHANGES TO TRADEMARK

TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (“The Ofﬁce is

further amending § 2.121(e) to add that a party may move to quash a noticed testimony deposition of a

witness not identiﬁed or improperly identiﬁed in pretrial disclosures before the deposition. The amendment

codiﬁes current Ofﬁce practice.”).

11. 37 CFR § 2.121(e).

12. 37 CFR § 2.123(e)(4).

13. 37 CFR § 2.123(a)(1) and 37 CFR § 2.123(b).

703.01(i) Form of Deposition and Exhibits

37 CFR § 2.123 Trial testimony in inter partes cases.

(f)(2) Certiﬁcation and ﬁling of deposition. If any of the foregoing requirements of paragraph (f)(1) of

this section are waived, the certiﬁcate shall so state. The ofﬁcer shall sign the certiﬁcate and afﬁx thereto

his or her seal of ofﬁce, if he or she has such a seal. The party taking the deposition, or its attorney or other

authorized representative, shall then promptly ﬁle the transcript and exhibits in electronic form using ESTTA.

If the nature of an exhibit precludes electronic transmission via ESTTA, it shall be submitted by mail by the

party taking the deposition, or its attorney or other authorized representative.

(g) Form of deposition.

(1) The pages of each deposition must be numbered consecutively, and the name of the witness plainly

and conspicuously written at the top of each page. The deposition must be in written form. The questions

propounded to each witness must be consecutively numbered unless the pages have numbered lines. Each

question must be followed by its answer. The deposition transcript must be submitted in full-sized format

(one page per sheet), not condensed (multiple pages per sheet).

(2) Exhibits must be numbered or lettered consecutively and each must be marked with the number and

title of the case and the name of the party offering the exhibit. Entry and consideration may be refused to

improperly marked exhibits.

(3) Each deposition must contain a word index and an index of the names of the witnesses, giving the

pages where the words appear in the deposition and where witness examination and cross-examination

begin, and an index of the exhibits, brieﬂy describing their nature and giving the pages at which they are

introduced and offered in evidence.

37 CFR § 2.125(e) Each transcript shall comply with § 2.123(g) with respect to arrangement, indexing

and form.

37 CFR § 2.126 Form of submissions to the Trademark Trial and Appeal Board.

(a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.

(1) Text in an electronic submission must be ﬁled in at least 11-point type and double-spaced.

January 2017700-39

§ 703.01(i)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

(2) Exhibits pertaining to an electronic submission must be made electronically as an attachment

to the submission and must be clear and legible.

(b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary

circumstances are present, submissions may be ﬁled in paper form. All submissions in paper form, except

the extensions of time to ﬁle a notice of opposition, the notice of opposition, the petition to cancel, or answers

thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written

explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet

the showing required under this paragraph (b) will not be considered. A paper submission, including exhibits

and depositions, must meet the following requirements:

(1) A paper submission must be printed in at least 11-point type and double-spaced, with text on

one side only of each sheet;

(2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9

to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;

(3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other

devices, and must be on the same size and weight paper as the submission;

(4) A paper submission must not be stapled or bound;

(5) All pages of a paper submission must be numbered and exhibits shall be identiﬁed in the manner

prescribed in § 2.123(g)(2);

(6) Exhibits pertaining to a paper submission must be ﬁled on paper and comply with the requirements

for a paper submission.

* * * *

Please Note: As with all submissions to the Board, all forms of testimony and exhibits thereto must be ﬁled

via ESTTA except if ESTTA is unavailable due to technical problems, or under extraordinary circumstances.

[Note 1.] Although the USPTO has not speciﬁed requirements for the form of exhibits attached to afﬁdavit

or declaration testimony, parties are encouraged to use as a guide the form requirements set out for exhibits

to depositions in 37 CFR § 2.123(g)(2) and the mailing requirements for certain exhibits set out in 37 CFR

§ 2.123(f)(2). In addition, parties are reminded that documents submitted under afﬁdavit or declaration but

not identiﬁed therein cannot be considered as exhibits. [Note 2.]

A deposition must be submitted to the Board in written form. [Note 3.] The Board does not accept videotape

depositions. [Note 4]

Parties must ﬁle depositions and exhibits thereto electronically through ESTTA unless ESTTA is unavailable

due to technical problems, or under extraordinary circumstances. [Note 5.] See TBMP § 106.03, TBMP §

106.09 and TBMP § 110 for further information about ESTTA. Exhibits pertaining to an electronic submission

must be made electronically as an attachment to the submission and must be clear and legible. [Note 6.]

Exhibits pertaining to a paper submission must be ﬁled on paper and must comply with the requirements

for a paper submission. [Note 7.]

The pages of a deposition must be numbered consecutively and the name of the witness must be written

plainly and conspicuously at the top of each page. Unless the pages have numbered lines, the questions

asked of each witness must be numbered consecutively. Each question must be followed by its answer.

Deposition transcripts must be submitted through ESTTA in an electronic format (e.g., PDF) that displays

the document in full-size with one page per sheet, rather than in condensed format with multiple pages per

sheet, [Note 8] and in at least 11-point type and double-spaced. [Note 9.]

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.01(i)

Deposition exhibits must be numbered or lettered consecutively, and each exhibit must be marked with the

number and title of the case, and the name of the party who is offering the exhibit. The Board may not

consider exhibits that are not properly marked. [Note 10.]

Deposition transcripts also must contain a word index listing the pages where the words appear in the

deposition, an index of the names of the witnesses listing the pages where witness examination and

cross-examination begin, and an index of exhibits with a brief description of the exhibit and the pages where

they are introduced and offered in evidence. [Note 11.]

ESTTA exhibits may be in PDF, TIFF or TXT format. PDF is preferred, and should be used, if possible.

Files should be formatted in letter size (8.5” x 11”), and should be rendered at 300 dpi resolution. ESTTA

will accept either color or black and white PDF documents for uploading.

Exhibits that are large, bulky, valuable, or breakable may be photographed or otherwise reproduced so that

an appropriate paper or digitized image of the exhibits can be ﬁled with the Board in lieu of the originals.

The originals should, of course, be shown to every adverse party. Exhibits consisting of videotapes or

audiotapes of commercials, demonstrations, etc., may be transferred to an appropriate electronic format

such as a DVD or CD for submission to the Board. [Note 12.]

Each party is responsible for ensuring that its submissions are clear and legible. [Note 13.] Problems with

image quality sometimes arise when poor quality documents are scanned or when the quality of legible

documents is degraded in the scanning process; these problems typically arise in documents (or parts of

documents) featuring graphical material, as opposed to text. Quality can sometimes be signiﬁcantly degraded

when color documents are scanned in black and white or when contrast settings used in scanning are not

appropriate for graphical material. If legibility of material in color or grayscale is important, the party is

urged to scan the ﬁle in color or adjust the scanner’s contrast settings to achieve acceptable results prior to

ﬁling. Users can check the quality of their submission in TTABVUE after ﬁling. TTABVUE contains the

same images that the Board will use in considering the submission. If the TTABVUE image is not of

acceptable quality, the user should not assume that the Board will be able to view and consider it appropriately.

Conﬁdential portions of the deposition and conﬁdential exhibits must be submitted in accordance with 37

CFR § 2.126(c). Conﬁdential materials must be ﬁled through ESTTA using the “CONFIDENTIAL” option

or, where appropriate, under separate paper cover. For further information concerning the submission of

conﬁdential information, see TBMP § 703.01(p) and TBMP § 703.02(l).

In the unlikely event that a party must ﬁle a testimony deposition or exhibits on paper, the party is to follow

the requirements set out in 37 CFR § 2.126(b), reproduced at the beginning of this subsection.

For information concerning deposition objections based on errors or irregularities in form , see TBMP §

707.03(c).

NOTES:

1. See 37 CFR § 2.126(a) and 37 CFR § 2.126(b).

2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed.

Reg. 69950, 69965 (October 7, 2016) (“The Ofﬁce has not set out in the ﬁnal rule any speciﬁc requirements

regarding the form of exhibits. The Board and the parties have experience with such submissions in connection

with summary judgment motions and ACR procedures as described in the TBMP at sections 528.05(b) and

January 2017700-41

§ 703.01(i)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

702.04, which do not specify requirements for the form of exhibits, and this has not created problems.

Notably, documents submitted under an afﬁdavit or declaration but not identiﬁed therein cannot be considered

as exhibits. The parties are encouraged to be guided by the form requirements set out for exhibits to

depositions in § 2.123(g)(2) and the mailing requirements for certain exhibits set out in § 2.123(f)(2).”).

3. 37 CFR § 2.123(g)(1).

4. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81

Fed. Reg. 69950, 69964 (October 7, 2016) (Board considered but rejected suggestion of allowing videotape

depositions: “The Board has never accepted video testimony …. The current online ﬁling system is not able

to accept video testimony however, this possibility may be considered in subsequent rulemakings as TTAB’s

online systems are enhanced.”).

5. See 37 CFR § 2.126(a), 37 CFR § 2.126(a)(1), and 37 CFR § 2.126(b).

6. 37 CFR § 2.126(a)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016) (“The Ofﬁce is adding new § 2.126(a)(2)

to require that exhibits pertaining to an electronic submission must be made electronically as an attachment

to the submission and must be clear and legible. The amendment codiﬁes the use of electronic ﬁling.”).

See Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013)

(citing Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) (“It is reasonable

to assume that it is opposer’s responsibility to review the documents it submits as evidence to ensure that

such submissions meet certain basic requirements, such as that they are legible….”)), aff’d, 565 F. App’x

900 (Fed. Cir. 2014) (mem.); Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347,

1351-52 (TTAB 2014) (duty of the party making submissions to the Board via ESTTA to ensure that they

have been entered into the trial record), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. Oct. 10,

2014). See also Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1563

n.7 (TTAB 2011) (opposer ﬁled exhibits separately under a notice of reliance but the proper procedure is

to attach exhibits to the copy of the transcript being ﬁled), on appeal, No. 11-3684 (D.N.J. June 2016);

Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 n.9 (TTAB 2011) (same).

7. 37 C.F.R §2.123(g)(2). See Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d

1558, 1563 n.7 (TTAB 2011) (opposer ﬁled exhibits separately under a notice of reliance but the proper

procedure is to attach exhibits to the copy of the transcript being ﬁled), on appeal, No. 11-3684 (D.N.J.

June 2016); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 n.9 (TTAB 2011) (same).

8. 37 CFR § 2.123(g)(1).

9. 37 CFR § 2.126(a)(1).

10. 37 CFR § 2.123(g)(2). Cf. Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382, 1384 (TTAB

2000) (these requirements are for the convenience of the Board; improperly marked exhibits considered);

Pass & Seymour, Inc. v. Syrelec, 224 USPQ 845, 847 (TTAB 1984) (the Board has discretion to consider

improperly marked exhibits).

11. 37 CFR § 2.123(g)(3).

12. See Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1654-55 (TTAB 2014) (parties may not

override Trademark Rule 2.126 provisions for form of submissions by agreement; however, video and audio

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.01(i)

recordings of evidence such as commercials may be submitted on CD-ROM), appeal dismissed per stipulation,

No. 14-CV-4463 (D. Minn. January 15, 2016).

13. See 37 CFR § 2.126(a)(2) and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND

APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016) (“The Ofﬁce is adding new §

2.126(a)(2) to require that exhibits pertaining to an electronic submission must be made electronically as

an attachment to the submission and must be clear and legible. The amendment codiﬁes the use of electronic

ﬁling.”). See also Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 n.6

(TTAB 2013) (citing Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) (“It

is reasonable to assume that it is opposer’s responsibility to review the documents it submits as evidence to

ensure that such submissions meet certain basic requirements, such as that they are legible….”)), aff’d, 565

F. App’x 900 (Fed. Cir. 2014) (mem.); Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d

1347, 1351-52 (TTAB 2014) (duty of the party making submissions to the Board via ESTTA to ensure that

they have been entered into the trial record), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. Oct.

10, 2014).

703.01(j) Signature of Deposition by Witness

37 CFR § 2.123(e)(5) When the oral deposition has been transcribed, the deposition transcript shall be

carefully read over by the witness or by the ofﬁcer to witness, and shall then be signed by the witness in the

presence of any ofﬁcer authorized to administer oaths unless the reading and the signature be waived on

the record by agreement of all parties.

The signing of an oral deposition transcript by the witness is governed by 37 CFR § 2.123(e)(5). The

deposition transcript does not have to be signed in the presence of the ofﬁcer before whom the oral deposition

was taken. It may be signed in the presence of any ofﬁcer authorized to administer oaths.

Reading and signature cannot be waived by mere agreement of the witness; the agreement of every party is

required. [Note 1.]

NOTES:

1. See 37 CFR § 2.123(e)(5). See also Tampa Rico Inc. v. Puros Indios Cigars Inc., 5 USPQ2d 1382, 1383

(TTAB 2000) (where witness did not sign his deposition, the defect was curable and party allowed time to

ﬁle and serve a signed copy). Cf. Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782,

1787 (TTAB 2001) (depositions which were not signed and included no waiver were nevertheless considered

where no objections were made).

703.01(k) Certiﬁcation and Filing of Trial Testimony

37 CFR § 2.123(f) Certiﬁcation and ﬁling of deposition.

(1) The ofﬁcer shall annex to the deposition his or her certiﬁcate showing:

(i) Due administration of the oath by the ofﬁcer to the witness before the commencement of his or

her deposition;

(ii) The name of the person by whom the deposition was taken down, and whether, if not taken down

by the ofﬁcer, it was taken down in his or her presence;

(iii) The presence or absence of the adverse party;

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§ 703.01(k)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

(iv) The place, day, and hour of commencing and taking the deposition;

(v) The fact that the ofﬁcer was not disqualiﬁed as speciﬁed in Rule 28 of the Federal Rules of Civil

Procedure.

(2) If any of the foregoing requirements in paragraph (f)(1) are waived, the certiﬁcate shall so state.

The ofﬁcer shall sign the certiﬁcate and afﬁx thereto his or her seal of ofﬁce, if he has such a seal. The party

taking the deposition, or its attorney or other authorized representative, shall then promptly ﬁle the transcript

and exhibits in electronic form using ESTTA. If the nature of an exhibit precludes electronic transmission

via ESTTA, it shall be submitted by mail by the party taking the deposition, or its attorney or other authorized

representative.

37 CFR § 2.125 Filing and service of testimony.

(a) One copy of the declaration or afﬁdavit prepared in accordance with § 2.123, together with copies

of documentary exhibits and duplicates or photographs of physical exhibits, shall be served on each adverse

party at the time the declaration or afﬁdavit is submitted to the Trademark Trial and Appeal Board during

the assigned testimony period.

(b) One copy of the transcript of each testimony deposition taken in accordance with § 2.123, or §

2.124 together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall

be served on each adverse party within thirty days after completion of the taking of that testimony. If the

transcript with exhibits is not served on each adverse party within thirty days or within an extension of time

for the purpose, any adverse party which was not served may have remedy by way of a motion to the

Trademark Trial and Appeal Board to reset such adverse party's testimony and/or brieﬁng periods, as may

be appropriate. If the deposing party fails to serve a copy of the transcript with exhibits on an adverse party

after having been ordered to do so by the Board, the Board, in its discretion, may strike the deposition, or

enter judgment as by default against the deposing party, or take any such other action as may be deemed

appropriate.

* * * *

(d) One certiﬁed transcript and exhibits shall be ﬁled with the Trademark Trial and Appeal Board.

Notice of such ﬁling shall be served on each adverse party and a copy of each notice shall be ﬁled with the

Board.

The certiﬁcation and ﬁling of a deposition are governed by 37 CFR § 2.123(f). The certiﬁed transcript, with

exhibits, must be ﬁled promptly with the Board via ESTTA. [Note 1.] See TBMP § 106 and TBMP § 110

for more information about using ESTTA. However, if the nature of the exhibit, such as CDs or DVDs,

precludes electronic transmission via ESTTA, the party (or its attorney or other authorized representative)

shall mail the exhibit to the Board at its mailing address, i.e., Trademark Trial and Appeal Board, U.S. Patent

and Trademark Ofﬁce, P.O. Box 1451, Alexandria, Virginia 22313-1451. [Note 2.]

The Board interprets “promptly ﬁle,” in 37 CFR § 2.123(f)(2) which concerns the ﬁling of transcripts and

exhibits, as meaning ﬁled at any time prior to the submission of the case for ﬁnal decision. [Note 3.] Therefore,

the Board will accept transcripts of testimony depositions ﬁled at any time prior to the submission of the

case for ﬁnal decision. [Note 4.] In addition, a notice of reliance on the deposition transcript need not (and

should not) be ﬁled. [Note 5.] However, notice of the ﬁling of the certiﬁed transcript, and accompanying

exhibits, with the Board must be served on each adverse party. A copy of each such notice must also be

ﬁled with the Board. [Note 6.] In addition, one copy of the deposition transcript, together with copies,

duplicates, or photographs of the exhibits thereto, must be served on each adverse party within 30 days after

completion of the taking of the testimony, or within an extension of time for the purpose. [Note 7.]

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.01(k)

The ﬁling of an afﬁdavit or declaration prepared in accordance with 37 CFR § 2.123 is governed by 37 CFR

§ 2.125(a). A party who takes testimony by afﬁdavit or declaration must serve a copy of the declaration or

afﬁdavit along with copies of exhibits on each adverse party at the same time the party submits the declaration

or afﬁdavit to the Board during the party’s assigned testimony period. [Note 8.]

For information concerning the service of trial testimony and the remedy that an adverse party may have if

it is not timely served with a copy of the afﬁdavit, declaration or deposition and exhibits, see TBMP §

703.01(m).

NOTES:

1. See 37 CFR § 2.123(f)(2) and 37 CFR § 2.125(d) (formerly 37 CFR § 2.125(c)).

Please Note: Although the USPTO has not speciﬁed requirements for the form of exhibits attached to

afﬁdavit or declaration testimony, parties are encouraged to use as a guide the form requirements set out

for exhibits to depositions in 37 CFR § 2.123(g)(2) and the mailing requirements for certain exhibits set out

in 37 CFR § 2.123(f)(2). In addition, parties are reminded that documents submitted under afﬁdavit or

declaration but not identiﬁed therein cannot be considered as exhibits. See MISCELLANEOUS CHANGES

TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016).

2. See 37 CFR § 2.123(f)(2). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND

APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) (“If the nature of an exhibit, such

as CDs or DVDs, precludes electronic transmission via ESTTA, it shall be submitted by mail.”).

3. See NOTICE OF FINAL RULEMAKING, 63 Fed. Reg. 48081 (September 9, 1998), and comments and

responses published in the Notice in regard to amendment of 37 CFR § 2.123(f) and 37 CFR § 2.125(c)

and (now 37 CFR § 2.125(d)).

4. See NOTICE OF FINAL RULEMAKING, 63 Fed. Reg. 48081 (September 9, 1998), and comments and

responses published in the notice in regard to amendment of 37 CFR § 2.123(f) and 37 CFR § 2.125(c) (now

37 CFR § 2.125(d)). See also Syngenta Crop Protection Inc. v. Bio-Chek LLC , 90 USPQ2d 1112, 1115

(TTAB 2009) (testimony must be taken during the offering party’s testimony period, but need not be

submitted during the party’s testimony period; transcript must be served within thirty days after completion

of the taking of that testimony); Hewlett-Packard Co. v. Human Performance Measurement, Inc. , 23

USPQ2d 1390, 1392 n.6 (TTAB 1991) (the wording “promptly ﬁled” in an earlier version of 37 CFR §

2.125(d) (formerly 37 CFR § 2.125(c)) was construed as meaning ﬁled at any time prior to ﬁnal hearing).

5. See, e.g., Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (not

appropriate to submit testimony under a notice of reliance); Paramount Pictures Corp. v. Romulan Invasions,

7 USPQ2d 1897, 1898 n.2 (TTAB 1988); Entex Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116,

1117 n.1 (TTAB 1982) (notice of reliance on exhibits introduced in connection with testimony superﬂuous).

6. See 37 CFR § 2.125(d) (formerly 37 CFR § 2.125(c)). See also Sports Authority Michigan Inc. v. PC

Authority Inc., 63 USPQ2d 1782, 1786 n.4 (TTAB 2001) (testimony depositions are not ﬁled by notice of

reliance but instead are ﬁled under cover of notice of ﬁling which must also be served on each adverse

party).

7. See 37 CFR § 2.125(b) (formerly 37 CFR § 2.125(a)).

January 2017700-45

§ 703.01(k)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

8. See 37 CFR § 2.123(a)(1) and 37 CFR § 2.125(a). See also MISCELLANEOUS CHANGES TO

TRADEMARK TRIAL AND APPEAL BOARD, 81 Fed. Reg. 69950, 69965 (October 7, 2016) (“The

Ofﬁce is amending §2.125 to renumber paragraphs (a) through (e) as (b) through (f) and to add new §

2.125(a) to require that one copy of a declaration or afﬁdavit prepared in accordance with § 2.123, with

exhibits, shall be served on each adverse party at the time the declaration or afﬁdavit is submitted to the

Board during the assigned testimony period.”).

703.01(l) Trial Testimony Must be Filed

37 CFR § 2.123 (h) Depositions must be ﬁled. All depositions which are taken must be duly ﬁled in the

Ofﬁce. On refusal to ﬁle, the Ofﬁce at its discretion will not further hear or consider the contestant with

whom the refusal lies; and the Ofﬁce may, at its discretion, receive and consider a copy of the withheld

deposition, attested by such evidence as is procurable.

37 CFR § 2.125 Filing and service of testimony.

(a) One copy of the declaration or afﬁdavit prepared in accordance with § 2.123, together with copies of

documentary exhibits and duplicates or photographs of physical exhibits, shall be served on each adverse

party at the time the declaration or afﬁdavit is submitted to the Trademark Trial and Appeal Board during

the assigned testimony period.

All trial testimony depositions that are taken in a Board inter partes proceeding must be ﬁled with the Board,

and, when ﬁled, automatically constitute part of the evidentiary record in the proceeding. [Note 1.] If a party

which took a testimony deposition refuses to ﬁle it, the Board, in its discretion, may refuse to further hear

or consider the party’s case, or may receive and consider a copy of the withheld deposition, attested by such

evidence as is procurable. [Note 2.]

A party who takes testimony by afﬁdavit or declaration must serve a copy of the declaration or afﬁdavit

along with copies of exhibits on each adverse party at the same time the party submits the declaration or

afﬁdavit to the Board during the party’s assigned testimony period. [Note 3].

For information concerning the procedure to ﬁle trial testimony, see TBMP § 703.01(k).

NOTES:

1. See 37 CFR § 2.123(h). See also e.g., Order Sons of Italy in America v. Memphis Maﬁa, Inc., 52 USPQ2d

1364, 1366 n.4 (TTAB 1999); Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d

1390, 1392 n.6 (TTAB 1991) (opposer was not prejudiced by transcript of testimony deposition ﬁled for

ﬁrst time with applicant's brief on the case because opposer should have assumed it would become part of

the record); Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984).

Cf. An Evening at the Trotters, Inc. v. A Nite at the Races, Inc., 214 USPQ 737, 738 n.2 (TTAB 1982)

(deposition which had not been ﬁled but was not completed and was not referred to by either party was

considered terminated and omitted by stipulation).

2. 37 CFR § 2.123(h). See Motion Picture Association of America Inc. v. Respect Sportswear Inc., 83

USPQ2d 1555, 1558 (TTAB 2007) (because opposer did not argue that testimony and exhibits which

applicant failed to ﬁle were adverse to applicant, and case was fully briefed and ready for decision, Board

decided case without testimony or exhibits).

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.01(l)

3. See 37 CFR § 2.123 and 37 CFR § 2.125(a). See also MISCELLANEOUS CHANGES TO TRADEMARK

TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) (“The Ofﬁce is

amending § 2.125 to renumber paragraphs (a) through (e) as (b) through (f) and to add new § 2.125(a) to

require that one copy of a declaration or afﬁdavit prepared in accordance with § 2.123, with exhibits, shall

be served on each adverse party at the time the declaration or afﬁdavit is submitted to the Board during the

assigned testimony period.”).

703.01(m) Service of Trial Testimony

37 CFR § 2.125 Filing and service of testimony.

(a) One copy of the declaration or afﬁdavit prepared in accordance with § 2.123, together with copies

of documentary exhibits and duplicates or photographs of physical exhibits, shall be served on each adverse

party at the time the declaration or afﬁdavit is submitted to the Trademark Trial and Appeal Board during

the assigned testimony period.

(b) One copy of the transcript of each testimony deposition taken in accordance with § 2.123 or § 2.124,

together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be

served on each adverse party within thirty days after completion of the taking of that testimony. If the

transcript with exhibits is not served on each adverse party within thirty days or within an extension of time

for the purpose, any adverse party which was not served may have remedy by way of a motion to the

Trademark Trial and Appeal Board to reset such adverse party’s testimony and/or brieﬁng periods, as may

be appropriate. If the deposing party fails to serve a copy of the transcript with exhibits on an adverse party

after having been ordered to do so by the Board, the Board, in its discretion, may strike the deposition, or

enter judgment as by default against the deposing party, or take any such other action as may be deemed

appropriate.

A party who takes testimony by afﬁdavit or declaration must serve a copy of the declaration or afﬁdavit

along with copies of exhibits on each adverse party at the same time the party submits the declaration or

afﬁdavit to the Board during the party’s assigned testimony period. [Note 1].

One copy of the transcript of a testimony deposition, together with copies of documentary exhibits and

duplicates or photographs of physical exhibits, must be served on each adverse party within 30 days after

completion of the taking of the testimony, or within an extension of time for the purpose. [Note 2.]

The requirement that a copy of the testimony afﬁdavit, declaration or depositiont transcript, with exhibits,

be served on every adverse party within the time speciﬁed in 37 CFR § 2.125(a) and 37 CFR § 2.125(b)is

intended to ensure that each adverse party will have the testimony before it has to offer its own evidence,

or, if the testimony in question is rebuttal testimony, to ensure that each adverse party will have the testimony

before it has to prepare its brief on the case. [Note 3.] If a copy of the testimony afﬁdavit, declaration or

deposition transcript, with exhibits, is not served on each adverse party within that time, any adverse party

that was not served may have remedy by way of a motion to the Board to reset its testimony and/or brieﬁng

periods, as may be appropriate, or to compel service of the testimony afﬁdavit, declaration or deposition

transcript, with exhibits. [Note 4.]

If a party that took a deposition fails to serve a copy of the transcript, with exhibits, on an adverse party

after having been ordered to do so by the Board, the Board, in its discretion, may take any of the actions

mentioned in 37 CFR § 2.125(b). [Note 5.]

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§ 703.01(m)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

NOTES:

1. See 37 CFR § 2.123(a)(1) and 37 CFR § 2.125(a). See also MISCELLANEOUS CHANGES TO

TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016)

(“The Ofﬁce is amending § 2.125 to renumber paragraphs (a) through (e) as (b) through (f) and to add new

§ 2.125(a) to require that one copy of a declaration or afﬁdavit prepared in accordance with § 2.123, with

exhibits, shall be served on each adverse party at the time the declaration or afﬁdavit is submitted to the

Board during the assigned testimony period.”).

2. 37 CFR § 2.125(b)(formerly 37 CFR § 2.125(a)). See Syngenta Crop Protection Inc. v. Bio-Chek LLC,

90 USPQ2d 1112, 1115 (TTAB 2009).

3. See Techex, Ltd. v. Dvorkovitz, 220 USPQ 81, 82 n.2 (TTAB 1983) (opposer's objection to introduction

of deposition overruled where opposer had been given time to request additional time for rebuttal in light

of late-served copy of transcript but failed to do so); S. S. Kresge Co. v. J-Mart Industries, Inc., 178 USPQ

124, 125 n.3 (TTAB 1973) (applicant's objection in its brief to opposer's introduction of exhibits which were

allegedly missing from service copy of deposition transcript was untimely).

4. 37 CFR § 2.125(b) (formerly 37 CFR § 2.125(a)); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90

USPQ2d 1112, 1115 (TTAB 2009) (resetting adverse party’s testimony and/or brieﬁng periods, or compelling

service of transcript); Techex, Ltd. v. Dvorkovitz, 220 USPQ 81, 83 (TTAB 1983).

5. Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009) (striking of

testimony). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD

RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) (“The Ofﬁce is amending renumbered § 2.125(b) to

add a cross-reference to § 2.124 and to clarify that the paragraph applies to testimony depositions, including

depositions on written questions.”).

703.01(n) Correction of Errors in Trial Testimony Deposition

37 CFR § 2.125(c) The party who takes testimony is responsible for having all typographical errors in

the transcript and all errors of arrangement, indexing and form of the transcript corrected, on notice to

each adverse party, prior to the ﬁling of one certiﬁed transcript with the Trademark Trial and Appeal Board.

The party who takes testimony is responsible for serving on each adverse party one copy of the corrected

transcript or, if reasonably feasible, corrected pages to be inserted into the transcript previously served.

A party that takes testimony is responsible for having any errors in the transcript corrected, on notice to

each adverse party, prior to the ﬁling of the certiﬁed transcript with the Board. [Note 1.]

If the witness, upon reading the transcript, discovers that typographical or transcription errors need to be

corrected, or that other corrections are necessary to make the transcript an accurate record of what the witness

actually said during the taking of his or her testimony, the witness should make a list of all such corrections

and forward the list to the ofﬁcer before whom the deposition was taken. The ofﬁcer, in turn, should correct

the transcript by redoing the involved pages. Alternatively, if there are not many corrections to be made,

the witness may correct the transcript by writing each correction above the original text that it corrects, and

initialing the correction. Although parties sometimes attempt to correct errors in transcripts by simply

inserting a list of corrections at the end of the transcript, this is not an effective method of correction. The

Board does not enter corrections for litigants, and the list of corrections is likely to be overlooked and/or

disregarded. While corrections may be made in a transcript, to make the transcript an accurate record of

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.01(n)

what the witness said during the taking of his or her testimony, material changes in the text are not permitted

-- the transcript may not be altered to change the testimony of the witness after the fact. [Note 2.]

If corrections are necessary, the party that took the deposition must serve on every adverse party a copy of

the corrected transcript or, if reasonably feasible, corrected pages to be inserted into the transcript previously

served. [Note 3.]

If errors are discovered after the transcript has been ﬁled with the Board, a list of corrections, signed by the

witness, should be submitted to the Board (and served on every adverse party), together with a request for

leave to correct the errors. Alternatively, the parties may stipulate that speciﬁed corrections may be made.

If the request is granted, or if the parties so stipulate, the party that took the deposition should ﬁle a substitute,

corrected transcript with the Board.

NOTES:

1. 37 CFR § 2.125(c) (formerly 37 CFR § 2.125(b); Hewlett-Packard Co. v. Human Performance

Measurement, Inc., 23 USPQ2d 1390, 1392 n.6 (TTAB 1991) (objection to corrections served four days

after ﬁling and less than two weeks prior to due date for reply brief overruled since remedy lies in requesting

extension of brieﬁng period rather than having Board exclude the evidence).

2. See Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1325 (TTAB 1992) (any substantive

changes made to testimony deposition on written questions would not be considered); Cadence Industries

Corp. v. Kerr, 225 USPQ 331, 333 n.4 (TTAB 1985) (Board gave no consideration to response or corrected

response when the correction, which changed the percentage of opposer's business income derived from

licensing, was substantive); and Entex Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116, 1117 n.2

(TTAB 1982) (change in testimony from “...designing that type of game...” to “...designing that Simon Says

type of game...” was substantive in nature and not permitted). Cf. Hollywood Casino LLC v. Chateau Celeste,

Inc., 116 USPQ2d 1988, 1996 (TTAB 2015) (on summary judgment, Board gave no consideration to a Fed.

R. Civ. P. 30(b)(6) discovery deposition errata sheet because it resulted in substantive changes to witness’

testimony).

3. See 37 CFR § 2.125(c) (formerly 37 CFR § 2.125(b). See also Hewlett-Packard Co. v. Human

Performance Measurement, Inc., 23 USPQ2d 1390, 1392 n.6 (TTAB 1991).

703.01(o) Objections to Testimony Afﬁdavits, Declarations and Depositions

For information concerning objections to testimony afﬁdavits, declarations and depositions, see TBMP §

707.03 and TBMP § 533.

703.01(p) Conﬁdential or Trade Secret Material

37 CFR § 2.116 (g) The Trademark Trial and Appeal Board’s standard protective order is automatically

imposed in all inter partes proceedings unless the parties, by stipulation approved by the Board, agree to

an alternative order, or a motion by a party to use an alternative order is granted by the Board. The standard

protective order is available at the Ofﬁce’s web site. No material disclosed or produced by a party, presented

at trial, or ﬁled with the Board, including motions or briefs which discuss such material, shall be treated

as conﬁdential or shielded from public view unless designated as protected under the Board’s standard

protective order, or under an alternative order stipulated to by the parties and approved by the Board, or

under an order submitted by motion of a party granted by the Board. The Board may treat as not conﬁdential

January 2017700-49

§ 703.01(p)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

that material which cannot reasonably be considered conﬁdential, notwithstanding a designation as such

by a party.

37 C.F.R §2.125(f) Upon motion by any party, for good cause, the Trademark Trial and Appeal Board

may order that any part of an afﬁdavit or declaration or a deposition transcript or any exhibits that directly

disclose any trade secret or other conﬁdential research, development, or commercial information may be

ﬁled under seal and kept conﬁdential under the provisions of § 2.27(e). If any party or any attorney or agent

of a party fails to comply with an order made under this paragraph, the Board may impose any of the

sanctions authorized by § 2.120(h).

37 CFR § 2.126(c) To be handled as conﬁdential, submissions to the Trademark Trial and Appeal Board

that are conﬁdential in whole or part pursuant to § 2.125(f) must be submitted using the “Conﬁdential”

selection available in ESTTA, or, where appropriate, under a separate paper cover. Both the submission

and its cover must be marked conﬁdential and must identify the case number and the parties. A copy of the

submission for public viewing with the conﬁdential portions redacted must be submitted concurrently.

Except for materials ﬁled under seal pursuant to a protective order, the ﬁles of proceedings before the Board,

including all ﬁlings by the parties and exhibits thereto are available for public viewing on the USPTO website

via TTABVUE at http://ttabvue.uspto.gov/. In addition, a link to TSDR, in which reside the records of the

ﬁles of subject applications and registrations, is available from TTABVUE. [Note 1.] See TBMP § 122.02

and TBMP § 412.05. Therefore, only the particular exhibits or deposition transcript pages of the testimony

afﬁdavit, declaration or deposition that disclose conﬁdential information should be ﬁled under seal pursuant

to a protective order. If a party over-designates material as conﬁdential, the Board will not be bound by the

party’s designation, and will treat as conﬁdential only testimony and evidence that is truly conﬁdential and

commercially sensitivetrade secrets). [Note 2.] Cf. TBMP § 801.03. In addition, upon motion by any party,

for good cause, the Board may order that any part of an afﬁdavit or declaration or a testimony transcript or

any exhibits that directly discloses any trade secret or other conﬁdential research, development, or commercial

information may be ﬁled under seal and kept conﬁdential under the provisions of 37 CFR § 2.27(e). Failure

to comply with this order may result in imposition of any of the sanctions authorized by 37 CFR § 2.120(h).

[Note 3.] See TBMP § 502.02.

In accordance with 37 CFR § 2.126(c), a party who submits testimony or associated exhibits containing

conﬁdential information under seal or designated as conﬁdential in ESTTA, must submit the testimony or

associated exhibits using the “Conﬁdential” selection in ESTTA or, where appropriate, under separate paper

cover. The party must mark both the submission and its cover “conﬁdential,” and must identify the case

number and parties. The party also must concurrently submit for the public record a redacted version of the

testimony or associated exhibit. [Note 4.] A rule of reasonableness dictates what information should be

redacted, and only in very rare instances should an entire submission be deemed conﬁdential. [Note 5]. In

cases where a redacted version has not been provided, the conﬁdentiality of the information may be deemed

waived. [Note 6.] For material or testimony that has been designated conﬁdential and which cannot be

viewed on TTABVUE, the parties should include TTABVUE entry and page numbers for both the redacted

and conﬁdential versions of the submission when referencing such material in a brief. [Note 7.] See TBMP

§ 801.03.

In addition, in the conﬁdential submission, parties are strongly encouraged to enclose conﬁdential information

in brackets to better mark the speciﬁc information to be kept conﬁdential. This facilitates a better comparison

between the public and conﬁdential versions of the submissions when the Board is preparing a ﬁnal decision,

and will reduce the likelihood that the Board inadvertently may include conﬁdential matter in a ﬁnal decision

or an order on a motion. For further information regarding the ﬁling of conﬁdential matter and information

regarding ESTTA, see TBMP § 110 and TBMP § 412.04.

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.01(p)

If ESTTA is unavailable due to technical problems, or extraordinary circumstances exist, a party may ﬁle

an afﬁdavit, declaration or testimony, and associated exhibits, in paper form. A submission made in paper

form must include a written explanation of such technical problems or extraordinary circumstances, or it

will not be considered. [Note 8.] Paper submissions are scanned into TTABVUE and designated

“conﬁdential.” After scanning and designating as “conﬁdential,” the Board retains the conﬁdential paper

submissions for a short period of time before disposing of the conﬁdential paper submissions in an appropriate

manner. Conﬁdential testimony and exhibits submitted in paper are disposed of shortly after the proceeding

is terminated.

If a party submits conﬁdential material using ESTTA, the ﬁler should select “CONFIDENTIAL Opposition,

Cancellation or Concurrent Use” under “File Documents in a Board Proceeding.” Filings made using this

option will not be made available for public viewing, although an entry will be made on the publicly-available

docket sheet in TTABVUE. Electronic ﬁling using ESTTA is preferred for submissions containing conﬁdential

material. See TBMP § 120.02 and TBMP § 412.04.

The Board’s standard protective order is automatically applicable throughout all inter partes proceedings,

subject to speciﬁed exceptions, unless modiﬁed by the parties and approved by the Board. [Note 9.] For

further information on protective orders, see TBMP § 412.

For further information regarding conﬁdential materials, see TBMP § 120.02 and TBMP § 412.

NOTES:

1. 37 CFR §2.27(d)(“the ofﬁcial records of applications and all proceedings relating thereto are available

for public inspection”) and 37 CFR §2.27(e) (ﬁling and handling of conﬁdential matter). See, e.g., Ayoub,

Inc. and Ayoub Supply, LLC v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1398 n.39 (TTAB 2016)

(party allowed time to ﬁle redacted version of material marked as “conﬁdential” but not submitted under

seal because “it is the general policy of the Board that all papers in a proceeding be public”); Harjo v.

Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999) (Board agreed to hold exhibits marked conﬁdential for

thirty days pending receipt of a motion for a protective order but cautioned that in the absence of such

motion, the exhibits would be placed in the proceeding ﬁle), rev’d on other grounds, 284 F. Supp. 2d 96,

68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff’d,

565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009).

2. 37 CFR § 2.116(g) and 37 CFR § 2.126(c). See MISCELLANEOUS CHANGES TO TRADEMARK

TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69959 (October 7, 2016) (“The purpose of

the rule is to codify existing practice to treat improperly designated material that is public information as

public. This is narrowly applied and only done when necessary to articulate the Board decision.”). See,

e.g., Couch/Braunsdorf Afﬁnity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014).”);

Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1635 (TTAB 2011) (in pretrial order, parties reminded

to refrain from improperly designating evidence or a show cause order may issue); Edwards Lifesciences

Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010); Bass Pro Trademarks LLC v. Sportsman’s

Warehouse Inc., 89 USPQ2d 1844, 1848 (TTAB 2008). See also General Motors Corp. v. Aristide & Co.,

Antiquaire de Marques, 87 USPQ2d 1179, 1181 (TTAB 2008) (although entire deposition was marked

conﬁdential, the Board’s decision referred to selective portions that appeared to not be truly conﬁdential ).

3. See 37 C.F.R §2.125(f) (formerly 37 CFR § 2.125(e)). Cf. ProMark Brands Inc. v. GFA Brands, Inc.,

114 USPQ2d 1232, 1237-1238 n. 24 (TTAB 2015) (party that submitted entire discovery deposition designated

as conﬁdential was ordered to resubmit separate public and conﬁdential copies), on appeal sub nom Kraft

Heinz Foods Co. v. Boulder Brands USA, Inc. ﬁled, No. 15-0681 (W.D. Pa. May 26, 2015).

January 2017700-51

§ 703.01(p)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

4. 37 CFR § 2.126(c). See Ayoub, Inc. and Ayoub Supply, LLC v. ACS Ayoub Carpet Service, 118 USPQ2d

1392, 1398 n.39 (TTAB 2016) (party allowed time to ﬁle redacted version of material marked as “conﬁdential”

but not submitted under seal); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014); Duke

University v. Haggar Clothing Inc., 54 USPQ2d 1443, 1445 (TTAB 2000) (redacted copy deleting conﬁdential

matters must be ﬁled). See also Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913

(TTAB 2015) (entry of conﬁdential exhibits and briefs in ACR case).

5. General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.4 (TTAB 2011),

judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential) (excessive markings

of various information as conﬁdential complicates record and often indicates that matter is improperly

designated or not useful to case).

6. See, e.g., Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1633 n.6 (TTAB 2007).

7. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1468 n.6 (TTAB 2016).

8. See 37 CFR § 2.126(b). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND

APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69966 (October 7, 2016) (discussing the procedure for

paper ﬁlings)

9. 37 CFR § 2.116(g)

703.02 Testimony Depositions on Written Questions

703.02(a) Depositions on Written Questions: When Available

37 CFR § 2.123

(a)(1) The testimony of witnesses in inter partes cases may be submitted in the form of an afﬁdavit

or a declaration pursuant to § 2.20 and in conformance with the Federal Rules of Evidence, ﬁled during

the proffering party’s testimony period, subject to the right of any adverse party to elect to take and bear

the expense of oral cross-examination of that witness as provided under paragraph (c) of this section if such

witness is within the jurisdiction of the United States, or conduct cross-examination by written questions as

provided in § 2.124 if such witness is outside the jurisdiction of the United States, and the offering party

must make that witness available; or taken by depositions upon oral examination as provided by this section

or by depositions upon written questions as provided by § 2.124.

(2) Testimony taken in a foreign country shall be taken by deposition upon written questions as

provided by § 2.124, unless the Board, upon motion for good cause, orders that the deposition be taken by

oral examination, or the parties so stipulate; or by afﬁdavit or declaration, subject to the right of any adverse

party to elect to take and bear the expense of cross-examination by written questions of that witness, If a

party serves notice of the taking of a testimonial deposition upon written questions of a witness who is, or

will be at the time of the deposition, present within the United States or any territory which is under the

control and jurisdiction of the United States, any adverse party may, within twenty days from the date of

service of the notice, ﬁle a motion with the Trademark Trial and Appeal Board, for good cause, for an order

that the deposition be taken by oral examination.

(b) Stipulations. If the parties so stipulate in writing, depositions may be taken before any person

authorized to administer oaths, at any place, upon any notice, and in any manner, and when so taken may

be used like other depositions. The parties may stipulate in writing what a particular witness would testify

to if called; or any relevant facts in the case may be stipulated in writing.

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.02

Ordinarily, the testimony of a witness may be taken by afﬁdavit, declaration or on oral examination pursuant

to 37 CFR § 2.123, or by deposition on written questions pursuant to 37 CFR § 2.124. [Note 1.] For

information concerning testimony by afﬁdavit, declaration or oral depositions, see TBMP § 703.01. However,

testimony taken in a foreign country must be taken: by deposition on written questions, unless the Board,

on motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate;

or by afﬁdavit or declaration, subject to the right of any adverse party to elect to take and bear the expense

of cross-examination by written questions of that witness. [Note 2.] See TBMP § 703.01(b).

In addition, if a party serves notice of the taking of a testimony deposition on written questions of a witness

who is, or will be at the time of the deposition, present within the United States (or any territory which is

under the control and jurisdiction of the United States), any adverse party may, within 20 days from the date

of service of the notice, ﬁle a motion with the Board, for good cause, for an order that the deposition be

taken by oral examination. [Note 3.] See TBMP § 703.01(b). What constitutes good cause to take an oral

deposition is determined on a case-by-case basis. [Note 4.] See TBMP § 531.

NOTES:

1. 37 CFR § 2.123(a)(1) and 37 CFR § 2.123(a)(2).

2. See 37 CFR § 2.123(a)(2). With respect to discovery depositions, see 37 CFR § 2.120(c)(1); Jain v.

Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998); Orion Group Inc. v. Orion Insurance Co., 12 USPQ2d

1923, 1925-26 (TTAB 1989) (good cause shown to take oral deposition of witness in England under the

circumstances and since fares to England were not that much greater than fares within the United States and

no translation was required).

3. See 37 CFR § 2.123(a)(2) (formerly 37 CFR § 2.123(a)(1)). See MISCELLANEOUS CHANGES TO

TRADEMARK TRIAL AND APPEAL BOARD, 81 Fed. Reg. 69950, 69964 (October 7, 2016) (“The

Ofﬁce is further amending § 2.123(a)(1) to move to § 2.123(a)(2) a provision permitting a motion for

deposition on oral examination of a witness in the United States whose testimonial deposition on written

questions has been noticed.”). See also Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d

1079, 1080 (TTAB 1990), corrected at 19 USPQ2d 1479 (TTAB 1990) (good cause shown to take oral

deposition of expert witness during rebuttal testimony period); Feed Flavors Inc. v. Kemin Industries, Inc.,

209 USPQ 589, 591 (TTAB 1980) (good cause shown where deponents were former employees of respondent

and present employees of petitioner and were being deposed for ﬁrst time during rebuttal period).

4. See Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980).

703.02(b) Depositions on Written Questions: Before Whom Taken

37 CFR § 2.142 (a) A deposition upon written questions may be taken before any person before whom

depositions may be taken as provided by Rule 28 of the Federal Rules of Civil Procedure.

A deposition on written questions, like a deposition on oral examination, may be taken before the persons

described in Fed. R. Civ. P. 28. [Note 1.] For further information, see TBMP § 703.01(g).

NOTES:

1. See 37 CFR § 2.124(a). See, e.g., Corporacion Habanos S.A. v. Anncas, Inc., 88 USPQ2d 1785, 1789

(TTAB 2008) (testimony deposition of opposer’s vice president taken upon written questions).

January 2017700-53

§ 703.02(b)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

703.02(c) Depositions on Written Questions: When Taken

37 CFR § 2.121 Assignment of times for taking testimony and presenting evidence. (a) The Trademark

Trial and Appeal Board will issue a trial order setting a deadline for each party’s required pretrial disclosures

and assigning to each party the time for taking testimony and presenting evidence (“testimony period”).

No testimony shall be taken or evidence presented except during the times assigned, unless by stipulation

of the parties approved by the Board, or, upon motion, by order of the Board. The deadlines for pretrial

disclosures and the testimony periods may be rescheduled by stipulation of the parties approved by the

Board, or upon motion granted by the Board, or by order of the Board. ...

37 CFR § 2.124 (b) (1) A party desiring to take a testimonial deposition upon written questions shall

serve notice thereof upon each adverse party within ten days from the opening date of the testimony period

of the party who serves the notice. The notice shall state the name and address of the witness. A copy of the

notice, but not copies of the questions, shall be ﬁled with the Trademark Trial and Appeal Board.

37 C.F.R §2.124(b)(3) A party desiring to take cross-examination, by written questions, of a witness who

has provided testimony by afﬁdavit or declaration shall serve notice thereof upon each adverse party and

shall ﬁle a copy of the notice, but not copies of the questions, with the Board.

* * * *

37 CFR §2.124(d)(1) … Within twenty days from the date of service of the notice of taking direct

examination or service of a testimony afﬁdavit or declaration, any adverse party may serve cross-questions

upon the party who proposes to take the deposition. …

37 CFR § 2.124(d)(2) ... Upon receipt of written notice that one or more testimonial depositions are to be

taken upon written questions, the Trademark Trial and Appeal Board shall suspend or reschedule other

proceedings in the matter to allow for the orderly completion of the depositions upon written question.

A party may take trial testimony only during its assigned testimony period, except by stipulation of the

parties approved by the Board, or, on motion, by order of the Board. [Note 1.] See TBMP § 701. For

information concerning the assignment of testimony periods, and the rescheduling, extension, and reopening

thereof, see TBMP § 509 and TBMP § 701.

A party that desires to take a testimony deposition on written questions must serve notice thereof on each

adverse party within 10 days from the opening date of the deposing party's testimony period, as originally

set or as reset. [Note 2.]

A party that desires to take cross-examination, by written questions, of a witness who has provided afﬁdavit

or declaration testimony must serve notice thereof on each adverse party, and ﬁle a copy of the notice (but

not a copy of the questions) with the Board, within twenty days from the date of service of the afﬁdavit or

declaration . [Note 3.]

On receipt of written notice that one or more testimony depositions are to be taken on written questions, the

Board will generally suspend or reschedule other proceedings in the case to allow for the orderly completion

of the depositions on written questions. [Note 4.]

For information concerning the time for taking a discovery deposition, see TBMP § 404.01.

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.02(c)

NOTES:

1. 37 C.F.R §2.121(a). See Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1454 n.1 (TTAB 1998) (parties

stipulated that testimony deposition of applicant’s witness could be taken prior to its testimony period on

the same day as opposer’s witness to achieve efﬁciencies in time and cost). Cf. Of Counsel Inc. v. Strictly

of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (where opposer’s testimony deposition

was taken two days prior to the opening of opposer’s testimony period, and applicant ﬁrst raised a timeliness

objection in its brief on the case, objection held waived, since the premature taking of the deposition could

have been corrected on seasonable objection).

2. 37 CFR § 2.124(b)(1). See Marshall Field & Co. v. Mrs. Field's Cookies, 17 USPQ2d 1652, 1652 (TTAB

1990) (notice of testimony depositions on written questions, while served eight months after testimony

period originally opened, were nonetheless timely, having been served within 10 days of “opening” of

testimony period as last reset).

3. 37 C.F.R §2.124(b)(3) and 37 CFR § 2.124(d)(1). See MISCELLANEOUS CHANGES TO TRADEMARK

TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) (“The Ofﬁce is

adding new § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of

a witness who has provided testimony by afﬁdavit or declaration shall serve notice on each adverse party

and ﬁle a copy of the notice with the Board.”) and MISCELLANEOUS CHANGES TO TRADEMARK

TRIAL AND APPEAL BOARD RULES: CORRECTION, 81 Fed. Reg. 89382 (further clariﬁcation necessary

to “clearly incorporate the timing for cross-examination upon written questions of testimony by afﬁdavit or

declaration.”).

4. 37 CFR § 2.124(d)(2). See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB

1990); Marshall Field & Co. v. Mrs. Field's Cookies, 17 USPQ2d 1652 (TTAB 1990).

703.02(d) Depositions on Written Questions: Place of Deposition

A testimony deposition on written questions may be taken at any reasonable place. [Note 1.] Cf. TBMP §

703.01(d). An adverse party may attend the taking of the deposition and the party who proffered afﬁdavit

or declaration testimony may attend the cross-examination on written questions if it so desires, not for the

purpose of participating (its participation will have occurred previously, through its service of cross questions,

redirect questions, recross questions, and objections, if any, pursuant to 37 CFR § 2.124(d)(1)), but rather

merely for the purpose of observing.

For information concerning the place where a discovery deposition upon written questions is taken, see

TBMP § 404.03(b), TBMP § 404.03(c), and TBMP § 404.04.

NOTES:

1. Cf. 37 CFR § 2.123(c). Cf. also 37 CFR § 2.123(b) regarding stipulations as to place, manner and notice

of depositions.

703.02(e) Depositions on Written Questions: Notice of Deposition

37 CFR § 2.124 (b) (1) A party desiring to take a testimonial deposition upon written questions shall

serve notice thereof upon each adverse party within ten days from the opening date of the testimony period

January 2017700-55

§ 703.02(e)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

of the party who serves the notice. The notice shall state the name and address of the witness. A copy of the

notice, but not copies of the questions, shall be ﬁled with the Trademark Trial and Appeal Board.

* * * *

(b)(3) A party desiring to take cross-examination, by written questions, of a witness who has provided

testimony by afﬁdavit or declaration shall serve notice thereof upon each adverse party and shall ﬁle a copy

of the notice, but not copies of the questions, with the Board.

the name or descriptive title of the ofﬁcer before whom the deposition is to be taken.

(d)(1) Every notice served on any adverse party under the provisions of paragraphs (b))(1) and (2)

of this section for the taking of direct examination shall be accompanied by the written questions to be

propounded on behalf of the party who proposes to take the deposition. Every notice served on any adverse

party under the provisions of paragraph (b)(3) of this section, for the taking of cross-examination, shall be

accompanied by the written questions to be propounded on behalf of the party who proposes to take the

cross-examination. Within twenty days from the date of service of the notice of taking direct examination

or service of a testimony afﬁdavit or declaration, any adverse party may serve cross questions upon the

party who proposes to take the deposition.. ...

To take a testimony deposition on written questions a party must serve notice thereof on each adverse party

within 10 days from the opening date of its testimony period, as originally set or as reset. [Note 1.] The

notice must state the name and address of the witness; it must be accompanied by the name or descriptive

title of the ofﬁcer before whom the deposition is to be taken, and by the written questions to be propounded

on behalf of the deposing party. [Note 2.] A copy of the notice, but not of the questions, must be ﬁled with

the Board. [Note 3.]

A party desiring to take cross-examination, by written questions, of an afﬁant or declarant must serve on

each adverse party notice of the cross-examination within 20 days from date of service of the afﬁdavit or

declaration. [Note 4.] The notice must state the name or descriptive title of the ofﬁcer before whom the

deposition will be taken, and must include a copy of the written questions to be propounded at

cross-examination. [Note 5.] The party must ﬁle a copy of the notice, but not the questions, with the Board.

[Note 6.]

If the parties so stipulate in writing, a deposition may be taken before any person authorized to administer

oaths, at any place, on any notice, and in any manner, and when so taken may be used like any other

deposition. [Note 7.]

For information concerning the notice of deposition in the case of a discovery deposition on written questions,

see TBMP § 404.07(d).

NOTES:

1. 37 CFR § 2.124(b)(1). See Marshall Field & Co. v. Mrs. Field's Cookies, 17 USPQ2d 1652 (TTAB

1990).

2. 37 CFR § 2.124(b)(1), 37 CFR § 2.124(c), and 37 CFR § 2.124(d)(1).

3. 37 CFR § 2.124(b)(1).

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.02(e)

4. 37 C.F.R §2.124(b)(3) and 37 CFR §2.124(d)(1). See MISCELLANEOUS CHANGES TO TRADEMARK

TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) (“The Ofﬁce is

amending § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a

witness who has provided testimony by afﬁdavit or declaration shall serve notice on each adverse party and

ﬁle a copy of the notice with the Board.”), and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL

AND APPEAL BOARD RULES: CORRECTION, 81 Fed. Reg. 89382 (further clariﬁcation necessary to

“clearly incorporate the timing for cross-examination upon written questions of testimony by afﬁdavit or

declaration.”).

5. 37 CFR §2.124(c) and 37 CFR §2.124(d)(1).

6. 37 CFR §2.124(b)(3). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) (“The Ofﬁce is amending § 2.124(b)(3) to

provide that a party desiring to take cross-examination by written questions of a witness who has provided

testimony by afﬁdavit or declaration shall serve notice on each adverse party and ﬁle a copy of the notice

with the Board.”).

7. 37 CFR § 2.123(b).

703.02(f) Depositions on Written Questions: Securing Attendance of Unwilling Witness

A party who takes testimony by afﬁdavit or declaration must make the witness available for cross-examination

under 37 CFR §2.123(a)(1) and 37 CFR §2.123(a)(2). See TBMP §703.01(b).

For information concerning securing the attendance of an unwilling witness, see TBMP § 703.01(f) (for a

testimony deposition) and TBMP § 404.03 (for a discovery deposition).

703.02(g) Depositions on Written Questions: Examination of Witness

37 C.F.R §2.124(b)(1) A party desiring to take a testimonial deposition upon written questions shall serve

notice thereof upon each adverse party within ten days from the opening date of the testimony period of the

party who serves the notice. The notice shall state the name and address of the witness. A copy of the notice,

but not copies of the questions, shall be ﬁled with the Trademark Trial and Appeal Board.

* * * *

(b)(3 A party desiring to take cross-examination, by written questions, of a witness who has provided

testimony by afﬁdavit or declaration shall serve notice thereof upon each adverse party and shall ﬁle a copy

of the notice, but not copies of the questions, with the Board.

the name or descriptive title of the ofﬁcer before whom the deposition is to be taken.

(d)(1) Every notice served on any adverse party under the provisions of paragraphs (b)(1) and (2)

of this section, for the taking of direct examination, shall be accompanied by the written questions to be

propounded on behalf of the party who proposes to take the deposition. Every notice served on any adverse

party under the provisions of paragraph (b)(3) of this section, for the taking of cross-examination, shall be

accompanied by the written questions to be propounded on behalf of the party who proposes to take the

cross-examination. Within twenty days from the date of service of the notice of taking direct examination

or service of a testimony afﬁdavit or declaration, any adverse party may serve cross questions upon the

party who proposes to take the deposition.; Any party who serves cross questions, whether in response to

direct examination questions or under paragraph (b)(3) of this section, shall also serve every other adverse

January 2017700-57

§ 703.02(g)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

party. Within ten days from the date of service of the cross questions, the party who proposes to take the

deposition, or who earlier offered testimony of the witness by afﬁdavit or declaration may serve redirect

questions on every adverse party. Within ten days from the date of service of the redirect questions, any

party who served cross questions may serve recross questions upon the party who proposes to take the

deposition or who earlier offered testimony of the witness by afﬁdavit or declaration ; any party who serves

recross questions shall also serve every other adverse party. Written objections to questions may be served

on a party propounding questions; any party who objects shall serve a copy of the objections on every other

adverse party. In response to objections, substitute questions may be served on the objecting party within

ten days of the date of service of the objections; substitute questions shall be served on every other adverse

party.

(2) Upon motion for good cause by any party, or upon its own initiative, the Trademark Trial and

Appeal Board may extend any of the time periods provided by paragraph (d)(1) of this section. Upon receipt

of written notice that one or more testimonial depositions are to be taken upon written questions, the

Trademark Trial and Appeal Board shall suspend or reschedule other proceedings in the matter to allow

for the orderly completion of the depositions upon written questions.

(3) Service of written questions, responses, and cross-examination questions shall be in accordance

with § 2.119(b).

(e) Within ten days after the last date when questions, objections, or substitute questions may be served,

the party who proposes to take the deposition shall mail a copy of the notice and copies of all the questions

to the ofﬁcer designated in the notice; a copy of the notice and of all the questions mailed to the ofﬁcer shall

be served on every adverse party. The ofﬁcer designated in the notice shall take the testimony of the witness

in response to the questions and shall record each answer immediately after the corresponding question.

The ofﬁcer shall then certify the transcript and mail the transcript and exhibits to the party who took the

deposition.

A party which desires to take a testimony deposition on written questions must, within 10 days from the

opening date of its testimony period, as originally set or as reset, serve notice thereof on each adverse party.

[Note 1.] See TBMP § 703.02(e).

The notice must be accompanied by the written questions to be propounded on behalf of the deposing party.

[Note 2.] A copy of the notice, but not of the questions, must be ﬁled with the Board. [Note 3.]

Within 20 days from the date of service of the notice of taking direct examination on written questions, any

adverse party may serve cross questions on the deposing party. Likewise, a party desiring to take

cross-examination, by written questions, of an afﬁant or declarant must serve on each adverse party notice

of the cross-examination within 20 days from the date of service of the testimony afﬁdavit or declaration.

[Note 4.] The notice of cross-examination by written questions must state the name or descriptive title of

the ofﬁcer before whom the deposition will be taken, and must include a copy of the written questions to

be propounded at cross-examination. [Note 5.] The party must ﬁle a copy of the notice, but not the questions,

with the Board. [Note 6.]

Any party who serves cross questions, whether in response to direct examination questions, or on

cross-examination of a witness who has provided afﬁdavit or declaration testimony, must also serve copies

of them on every other adverse party. Within 10 days from the date of service of the cross questions, the

deposing party, or the party who had offered afﬁdavit or declaration testimony, may serve redirect questions

on every adverse party. Within 10 days from the date of service of the redirect questions, any party that

served cross questions may serve recross questions on the deposing party or the party who earlier provided

afﬁdavit or declaration testimony. A party that serves recross questions on the deposing party must also

serve copies thereof on every other adverse party. [Note 7.]

700-58January 2017

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.02(g)

Written objections to questions may be served on the party that propounded the questions. A party that

serves objections on a propounding party must also serve a copy of the objections on every other adverse

party. In response to objections, substitute questions may be served on the objecting party within 10 days

from the date of service of the objections . The substitute questions must also be served on every other

adverse party. [Note 8.]

On motion for good cause ﬁled by any party, or on its own initiative, the Board may extend any of the time

periods speciﬁed in 37 CFR § 2.124(d)(1), that is, the time periods for serving cross questions, redirect

questions, recross questions, objections, and substitute questions. Further, on receipt of written notice that

one or more testimony depositions are to be taken on written questions, the Board will suspend or reschedule

other proceedings in the matter to allow for the orderly completion of the depositions on written questions.

[Note 9.] See TBMP § 703.02(c).

Within 10 days after the last date when questions, objections, or substitute questions may be served, the

deposing party must mail a copy of the notice and copies of all the questions to the ofﬁcer designated in the

notice. A copy of the notice and of all the questions mailed to the ofﬁcer must also be served on every

adverse party. The ofﬁcer designated in the notice shall take the testimony of the witness in response to the

questions, and shall record each answer immediately after the corresponding question. [Note 10.]

Service of written questions, responses, and cross-examination questions must be by email unless the parties

stipulate to another method, or under certain other limited circumstances. [Note 11.] For information

concerning alternative methods of service under those limited circumstances, see 37 CFR §2.119(b) and

TBMP §113.04.

An adverse party may attend the taking of the deposition and the party who proffered afﬁdavit or declaration

testimony may attend the cross-examination on written questions if it so desires, not for the purpose of

participating (its participation will have occurred previously, through its service of cross questions, redirect

questions,, recross questions, and objections, if any, pursuant to 37 CFR § 2.124(d)(1)), but rather merely

for the purpose of observing. Any attempt to engage the witness during the deposition or cross-examination

may constitute sanctionable conduct.

If the parties so stipulate in writing, a deposition may be taken before any person authorized to administer

oaths, at any place, on any notice, and in any manner. When so taken, the deposition may be used like any

other deposition. [Note 12.]

NOTES:

1. 37 CFR § 2.124(b)(1).

2. 37 CFR § 2.124(d)(1).

3. 37 CFR § 2.124(b)(1).

4. 37 C.F.R §2.124(b)(3) and 37 CFR § 2.124(d)(1). See MISCELLANEOUS CHANGES TO TRADEMARK

TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) (“The Ofﬁce is

amending § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a

witness who has provided testimony by afﬁdavit or declaration shall serve notice on each adverse party and

ﬁle a copy of the notice with the Board.”), and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL

AND APPEAL BOARD RULES OF PRACTICE; CORRECTION, 81 Fed. Reg. 89382 (further clariﬁcation

January 2017700-59

§ 703.02(g)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

necessary to “clearly incorporate the timing for cross-examination upon written questions of testimony by

afﬁdavit or declaration.”).

5. 37 CFR § 2.124(c) and 37 CFR § 2.124(d)(1).

6. 37 CFR § 2.124(b)(3) See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) (“The Ofﬁce is amending § 2.124(b)(3) to

provide that a party desiring to take cross-examination by written questions of a witness who has provided

testimony by afﬁdavit or declaration shall serve notice on each adverse party and ﬁle a copy of the notice

with the Board.”).

7. 37 CFR § 2.124(d)(1). See Fischer GmbH. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979). See

also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF

PRACTICE; CORRECTION, 81 Fed. Reg. 89382 (further clariﬁcation necessary to “clearly incorporate

the timing for cross-examination upon written questions of testimony by afﬁdavit or declaration.”).

8. 37 CFR § 2.124(d)(1). See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB

1990).

9. 37 CFR § 2.124(d)(2).

10. 37 CFR § 2.124(e).

11. See 37 CFR § 2.119(b) and 37 CFR § 2.124(d)(3). See also MISCELLANEOUS CHANGES TO

TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016)

(“The Ofﬁce is adding new § 2.124(d)(3) to provide that service of written questions, responses, and

cross-examination questions shall be in accordance with § 2.119(b).”).

12. See 37 CFR § 2.123(b).

703.02(h) Depositions on Written Questions: Form, Signature and Certiﬁcation of Deposition

37 CFR § 2.124 (e) Within ten days after the last date when questions, objections, or substitute questions

may be served, the party who proposes to take the deposition shall mail a copy of the notice and copies of

all the questions to the ofﬁcer designated in the notice; a copy of the notice and of all the questions mailed

to the ofﬁcer shall be served on every adverse party. The ofﬁcer designated in the notice shall take the

testimony of the witness in response to the questions and shall record each answer immediately after the

corresponding question. The ofﬁcer shall then certify the transcript and mail the transcript and exhibits to

the party who took the deposition.

The ofﬁcer before whom a deposition on written questions is taken shall record each answer immediately

after the corresponding question. [Note 1.]

For further information on the form for a deposition taken in an inter partes proceeding before the Board,

see 37 CFR § 2.123(g) and 37 CFR § 2.126, and TBMP § 703.01(i).

For information concerning signature of a deposition taken in an inter partes proceeding before the Board,

see 37 CFR § 2.123(e)(5) and TBMP § 703.01(j).

700-60January 2017

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.02(h)

After the ofﬁcer designated in the notice of deposition has taken a deposition on written questions, the ofﬁcer

must certify the transcript of the deposition. See 37 CFR § 2.124(e). For information concerning certiﬁcation

of a deposition taken in an inter partes proceeding before the Board, see 37 CFR § 2.123(f), and TBMP §

703.01(k).

When the transcript has been certiﬁed, the ofﬁcer should mail the transcript and exhibits to the party that

took the deposition. [Note 2.]

NOTES:

1. See 37 CFR § 2.124(e).

2. See 37 CFR § 2.124(e).

703.02(i) Depositions on Written Questions: Service, Correction and Filing of Deposition

37 CFR § 2.124 (f) The party who took the deposition shall promptly serve a copy of the transcript, copies

of documentary exhibits, and duplicates or photographs of physical exhibits on every adverse party. It is

the responsibility of the party who takes the deposition to assure that the transcript is correct (see § 2.125(c)).

If the deposition is a discovery deposition, it may be made of record as provided by § 2.120(k). If the

deposition is a testimonial deposition, the original, together with copies of documentary exhibits and

duplicates or photographs of physical exhibits, shall be ﬁled promptly with the Trademark Trial and Appeal

Board.

The party that took the deposition on written questions must promptly serve a copy of the transcript, with

exhibits, on every adverse party. [Note 1.] See TBMP § 703.01(m). The party that took the deposition must

also assure that the transcript is correct. [Note 2.] For information concerning correction of errors in a

deposition taken in a Board inter partes proceeding, see TBMP § 703.01(n).

If the deposition is a testimony deposition upon written questions, the original, with exhibits, must be ﬁled

promptly with the Board. [Note 3.] By “promptly” the Board means that the transcript, with exhibits, may

be ﬁled at any time prior to submission of the case for ﬁnal decision. See TBMP § 703.01(k).

NOTES:

1. 37 CFR § 2.124(f). Cf. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) (“The Ofﬁce has not set out in the ﬁnal

rule any speciﬁc requirements regarding the form of exhibits. The Board and the parties have experience

with such submissions in connection with summary judgment motions and ACR procedures as described

in the TBMP at sections 528.05(b) and 702.04, which do not specify requirements for the form of exhibits,

and this has not created problems. Notably, documents submitted under an afﬁdavit or declaration but not

identiﬁed therein cannot be considered as exhibits. The parties are encouraged to be guided by the form

requirements set out for exhibits to depositions in § 2.123(g)(2) and the mailing requirements for certain

exhibits set out in § 2.123(f)(2).”).

2. 37 CFR § 2.124(f) and 37 CFR § 2.125(c) (formerly 37 CFR § 2.125(b)).

3. See 37 CFR § 2.124(f).

January 2017700-61

§ 703.02(i)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

703.02(j) Testimony Depositions on Written Questions Must be Filed

37 CFR § 2.123(h) Depositions must be ﬁled. All depositions which are taken must be duly ﬁled in the

Ofﬁce. On refusal to ﬁle, the Ofﬁce at its discretion will not further hear or consider the contestant with

whom the refusal lies; and the Ofﬁce may, at its discretion, receive and consider a copy of the withheld

deposition, attested by such evidence as is procurable.

While the offering of a discovery deposition in evidence is voluntary, all trial testimony depositions that are

taken in a Board inter partes proceeding must be ﬁled with the Board, and, when ﬁled, automatically constitute

part of the evidentiary record in the proceeding. [Note 1.] See TBMP § 703.01(l).

See, with respect to making a discovery deposition of record, 37 CFR § 2.120(j) and TBMP § 704.09.

NOTES:

1. See 37 CFR § 2.123(h).

703.02(k) Depositions on Written Questions: Objections to Deposition

37 CFR § 2.124(d)(1) ... Written objections to questions may be served on a party propounding questions;

any party who objects shall serve a copy of the objections on every other adverse party. In response to

objections, substitute questions may be served on the objecting party within ten days of the date of service

of the objections; substitute questions shall be served on every other adverse party.

* * * *

(g) Objections to questions and answers in depositions upon written questions may be considered at

ﬁnal hearing.

Written objections to questions propounded for a deposition on written questions may be served on the party

that propounded the questions. Any party that serves written objections on a propounding party must also

serve a copy of the objections on every other adverse party. [Note 1.] See TBMP § 703.02(g).

Unless waived, objections to questions and answers in depositions on written questions, as in oral depositions,

generally are considered by the Board at ﬁnal hearing. [Note 2.]

For further information concerning the raising of objections to oral trial testimony depositions, see TBMP

§ 707.03 and TBMP § 533.

For information concerning the raising of objections to discovery depositions, see TBMP § 404.08. For

information concerning the raising of objections to a notice of reliance on a discovery deposition, see TBMP

§ 707.02 and TBMP § 532.

NOTES:

1. 37 CFR § 2.124(d)(1).

2. 37 CFR § 2.124(g). See Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623, 1628 (TTAB

2014) (objections to written cross-examination questions sustained on ground they exceed scope of direct

testimony on written questions), rev’d on other grounds, 84 F. Supp. 3d 490 (E.D. Va. 2015), vacated and

700-62January 2017

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 703.02(j)

remanded 819 F.3d 697 (4th Cir. 2016); Nahshin v. Product Source International LLC, 107 USPQ2d 1257,

1259 (TTAB 2013) (objections to portions of depositions on written questions deemed waived), aff’d 112

F. Supp. 3d 383 (E.D. Va. 2015); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB

1990) (objections to questions based on relevancy and materiality will be deferred until ﬁnal hearing).

703.02(l) Depositions on Written Questions: Conﬁdential or Trade Secret Material

For information concerning the protection of conﬁdential or trade secret material forming part of a testimony

afﬁdavit or declaration or oral deposition transcript or exhibits thereto, see 37 CFR § 2.125(f) and 37 CFR

§ 2.126(c); TBMP § 703.01(p). The Board’s standard protective order is automatically applicable throughout

all inter partes proceedings, subject to speciﬁed exceptions, unless modiﬁed by the parties and approved by

the Board. [Note 1.] For further information on protective orders, see TBMP § 412.

NOTES:

1. 37 CFR § 2.116(g).

703.02(m) Depositions on Written Questions: Utility

A deposition on written questions is a cumbersome, time-consuming procedure. It requires that cross

questions, redirect questions, recross questions, and objections all be framed and served before the questions

on direct examination have even been answered. Moreover, it deprives an adverse party of the right to

confront the witness and ask follow-up questions on cross examination. [Note 1.] See TBMP § 703.02(g).

Nevertheless, depositions on written questions have some utility. They may be the only means by which a

deposition may be taken in a foreign country. [Note 2.] See TBMP § 404.03(c) (discovery deposition of

non-party residing in foreign country), TBMP § 703.01(b) (Form of Testimony), TBMP § 703.01(f)(3)

(Unwilling Witness Residing in a Foreign Country), and TBMP § 703.02(a) (Depositions on Written

Questions – When Available). Moreover, the deposition on written questions is generally less expensive

than the deposition on oral examination and is usually more convenient for the witness.

NOTES:

1. See 37 CFR § 2.124(d)(1). See also Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d

1079, 1080 (TTAB 1990), corrected, 19 USPQ2d 1479 (TTAB 1990); Feed Flavors Inc. v. Kemin Industries,

Inc., 209 USPQ 589, 591 (TTAB 1980); Fischer GmbH v. Molnar & Co., 203 USPQ 861, 866 (TTAB

1979); Orion Group Inc. v. Orion Insurance Co., 12 USPQ2d 1923, 1926 (TTAB 1989) (motion to take

discovery deposition in foreign country orally).

2. See 37 CFR § 2.120(c)(1), 37 CFR § 2.123(a)(1) and 37 CFR § 2.123(a)(2). Cf. Rosenruist-Gestao E

Servicos LDA v. Virgin Enterprises Ltd., 511 F.3d 437, 85 USPQ2d 1385 (4th Cir. 2007), cert. denied, 128

S. Ct. 2508 (2008) (district court has the power to issue a subpoena for a trial deposition noticed under Fed.

R. Civ. P. 30(b)(6), requiring a foreign corporate applicant to produce an appropriate representative in the

United States for testimony on the subjects identiﬁed in the subpoena, regardless of the domicile of the

representative).

January 2017700-63

§ 703.02(m)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

704 Introducing Other Evidence

704.01 In General

As noted earlier in this chapter, evidence in an inter partes proceeding before the Board can be introduced

in a number of ways. The ﬁrst part of this chapter discusses the introduction of testimony with accompanying

exhibits. The following sections discuss other forms of evidence and the methods available for their

introduction. Parties are cautioned, however, not to submit cumulative evidence in support of their pleaded

claims. See TBMP § 702.05 (Overly Large Records).

704.02 Notice of Reliance – Generally

37 CFR § 2.122(g) Notices of reliance. The types of evidence admissible by notice of reliance are identiﬁed

in paragraphs (d)(2) and (e)(1) and (2) of this section and § 2.120(k). A notice of reliance shall be ﬁled

during the testimony period of the party that ﬁles the notice. For all evidence offered by notice of reliance,

the notice must indicate generally the relevance of the evidence and associate it with one or more issues in

the proceeding. Failure to identify the relevance of the evidence, or associate it with issues in the proceeding,

with sufﬁcient speciﬁcity is a procedural defect that can be cured by the offering party within the time set

by Board order.

Certain types of evidence, such as ofﬁcial records and printed publications as described in 37 CFR § 2.122(e),

need not be introduced in connection with the testimony of a witness but may instead be made of record by

ﬁling the materials with the Board under cover of one or more notices of reliance during the testimony

period of the offering party. A notice of reliance is essentially a cover sheet for the materials sought to be

introduced. As the title suggests, the notice of reliance serves to notify opposing parties that the offering

party intends to rely on the materials submitted thereunder in support of its case. A party needs not disclose

the evidence it intends to submit under notice of reliance in its pretrial disclosures. [Note 1.] Under 37 CFR

§ 2.122(g), the notice of reliance must include a description and the general relevance of the proffered

materials, and it must associate the materials with one or more issues in the case. [Note 2.] For example, if

the claim is likelihood of confusion, the propounding party should associate the materials with a relevant

likelihood of confusion factor. Further, if the same document is submitted to support more than one element

of a claim or defense, the propounding party should indicate the speciﬁc element or fact supported by the

document in a group of documents. Failure to do so with sufﬁcient speciﬁcity is a procedural defect that

can be cured by the offering party within the time set by Board order. [Note 3.] Even if an adverse party

fails to lodge a timely objection, the Board may sua sponte decline to consider the proffered evidence if the

notice of reliance does not specify the relevance of the materials and identify the issues. [Note 4.]

A discussion of the types of evidence that may be submitted by notice of reliance and the requirements for

introduction of such evidence by notice of reliance can be found in the sections that follow.

NOTES:

1. 37 CFR § 2.121(e). Accord Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 n.4 (TTAB 2015).

2. 37 CFR § 2.122(g). Effective January 14, 2017, the Board added new subsection (g) to 37 CFR § 2.122

detailing the requirements for admission of evidence by notice of reliance. This amendment effectively

overruled any prior case law stating that an offering party is not required to specify the general relevance

of certain types of evidence submitted under notice of reliance such as discovery deposition excerpts and

answers to interrogatories. See, e.g., Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881, 883

700-64January 2017

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 704

(TTAB 1979) (not required to set forth the relevance of interrogatory answers). See also MISCELLANEOUS

CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69952

(October 7, 2016) (“To alleviate any uncertainty, this ﬁnal rule adds a paragraph to the requirements for a

notice of reliance, speciﬁcally, to require that the notice indicate generally the relevance of the evidence

and associate it with one or more issues in the proceeding. In an effort to curtail motion practice on this

point, the rule explicitly states any failure of a notice of reliance to meet this requirement will be considered

a curable procedural defect. This codiﬁes the holding in FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd.,

111 USPQ2d 1234, 1237 (TTAB 2014).”).

3. 37 CFR § 2.122(g). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD

RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016) (“To alleviate any uncertainty, this ﬁnal rule adds a

paragraph to the requirements for a notice of reliance, speciﬁcally, to require that the notice indicate generally

the relevance of the evidence and associate it with one or more issues in the proceeding. In an effort to curtail

motion practice on this point, the rule explicitly states any failure of a notice of reliance to meet this

requirement will be considered a curable procedural defect. This codiﬁes the holding in FUJIFILM SonoSite,

Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1237 (TTAB 2014).”).

4. See, e.g., Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1040 (TTAB 2010).

704.03 Applications and Registrations

704.03(a) Subject of Proceeding

37 CFR § 2.122

(b) Application and registration ﬁles.

(1) The ﬁle of each application or registration speciﬁed in a notice of interference, of each

application or registration speciﬁed in the notice of a concurrent use registration proceeding, of the

application against which a notice of opposition is ﬁled, or of each registration against which a petition or

counterclaim for cancellation is ﬁled forms part of the record of the proceeding without any action by the

parties and reference may be made to the ﬁle for any relevant and competent purpose in accordance with

paragraph (b)(2) of this section.

(2) The allegation in an application for registration, or in a registration, of a date of use is not

evidence on behalf of the applicant or registrant; a date of use of a mark must be established by competent

evidence. Specimens in the ﬁle of an application for registration, or in the ﬁle of a registration, are not

evidence on behalf of the applicant or registrant unless identiﬁed and introduced in evidence as exhibits

during the period for the taking of testimony. Statements made in an afﬁdavit or declaration in the ﬁle of

an application for registration, or in the ﬁle of a registration, are not testimony on behalf of the applicant

or registrant. Establishing the truth of these or any other matters asserted in the ﬁles of these applications

and registrations shall be governed by the Federal Rules of Evidence, the relevant provisions of the Federal

Rules of Civil Procedure, the relevant provisions of Title 28 of the United States Code, and the provisions

of this part.

The ﬁle of an application or registration that is the subject of a Board inter partes proceeding forms part of

the record of the proceeding without any action by the parties, and reference may be made to the ﬁle by any

party for any relevant and competent purpose. [Note 1.] The Board discourages ﬁling a copy of the subject

application or subject registration because it is of record. [Note 2.]

January 2017700-65

§ 704.03(a)TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

However, the fact that the subject application or registration ﬁle is automatically part of the record in a

proceeding does not mean that an allegation of a date of use or that the specimens ﬁled therein are evidence

on behalf of the applicant or registrant in the inter partes proceeding. The alleged date of use of the mark

and the specimens in an application or registration ﬁle are not evidence in an inter partes proceeding, on

behalf of the applicant or registrant, unless the alleged date of use is established by competent evidence and

the specimens are identiﬁed and introduced in evidence as exhibits during the testimony period. [Note 3.]

See TBMP § 704.04.

Likewise, statements made in an afﬁdavit or declaration in the ﬁle of an application or registration are not

testimony. [Note 4.] Although part of the record of the proceeding, such statements constitute hearsay (except

for statements falling under Fed. R. Evid. 801(d)). [Note 5.] However, self-authenticating exhibits (e.g.,

printed publications, Internet printouts with the URL and date) attached to afﬁdavits or declarations in

applications or registrations may have evidentiary value for what they show on their face. [Note 6.]

Evidence submitted during the prosecution of an application with respect to the acquired distinctiveness of

a mark under Trademark Act § 2(f), 15 U.S.C. § 1052(f), is evidence on behalf of the applicant or registrant

without any action by the parties. [Note 7.] Nonetheless, such evidence is subject to the Federal Rules of

Evidence, the Federal Rules of Civil Procedure, and the relevant provisions of Title 28 of the United States

Code and the provisions of title 37 of the Code of Federal Regulation. [Note 8.]

For further information concerning the probative value of applications and registrations, see TBMP §

704.03(b).

NOTES:

1. 37 CFR § 2.122(b)(1). See The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352,

92 USPQ2d 1626 (Fed. Cir. 2009); Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669,

223 USPQ 1281, 1283 (Fed. Cir. 1984); Cleveland-Detroit Corp. v. Comco (Machinery) Ltd., 277 F.2d

958, 125 USPQ 586, 586-87 (CCPA 1960) (application ﬁle automatically forms part of record on appeal);

Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1923 (TTAB

2011) (record includes pleadings and registration ﬁle for respondent's mark), on appeal, No.

1:11-cv-01623-RC (D.D.C.); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d

1558, 1563 (TTAB 2011) (same), on appeal, No. 11-3684 (D.N.J. June 2016); Rocket Trademarks Pty.

Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 (TTAB 2010) (same); Venture Out Properties LLC v. Wynn

Resorts Holdings LLC, 81 USPQ2d 1887, 1889 n.8 (TTAB 2007) (applications automatically of record);

Jansen Enterprises, Inc. v. Rind, 85 USPQ2d 1104, 1106 n.4 (TTAB 2007) (respondent's introduction of

a certiﬁed copy of his registration sought to be cancelled is superﬂuous); Uncle Ben’s Inc. v. Studenberg

International Inc., 47 USPQ2d 1310, 1311 n.2 (TTAB 1998) (notice of reliance on application ﬁle not

necessary as it is automatically of record); Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545,

1547 n.6 (TTAB 1990) (submission of portions of application unnecessary since ﬁle is automatically of

record), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). See also Orange Bang, Inc. v. Ole Mexican

Foods, Inc., 116 USPQ2d 1102, 1107 (TTAB 2015) (plaintiff’s pleaded registration is of record by operation

of Trademark Rule 2.122(b)(1) and defendant’s objection thereto is overruled).

2. Anthony's Pizza & Pasta International Inc. v. Anthony's Pizza Holding Co., 95 USPQ2d 1271, 1274 n.6

(TTAB 2009) (not necessary for respondent to ﬁle a status and title copy of its registration because registration

is automatically of record), aff’d, 415 Fed. Appx. (Fed. Cir. 2010); Hiraga v. Arena, 90 USPQ2d 1102,

1105 (TTAB 2009) (respondent's registration ﬁle is automatically part of the record of the proceeding and

need not be introduced under a notice of reliance); Jansen Enterprises, Inc. v. Rind, 85 USPQ2d 1104, 1106

n.4 (TTAB 2007) (respondent's introduction of a certiﬁed copy of his registration sought to be cancelled is

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 704.03(a)

superﬂuous); Venture Out Properties LLC v. Wynn Resorts Holdings LLC, 81 USPQ2d 1887, 1889 n.8

(TTAB 2007) (applications automatically of record and need not be introduced again).

3. 37 CFR § 2.122(b)(2). See UMG Recordings, Inc. v. O'Rourke, 92 USPQ2d 1042, 1047 (TTAB 2009)

(dates of use not evidence); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1960 (TTAB 2008)

(alleged date of use in application not evidence); Baseball America, Inc. v. Powerplay Sports, Ltd., 71

USPQ2d 1844, 1848 n.10 (TTAB 2004) (dates of use and specimens not evidence); Levi Strauss & Co. v.

R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1467 (TTAB 1993) (without proof of use, application ﬁling

date, not dates of use alleged in the application, is the earliest use date on which the applicant may rely),

recon. denied, 36 USPQ2d 1328 (TTAB 1994).

4. 37 CFR § 2.122(b)(2). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016) (“In response to Cold War Museum Inc.

v. Cold War Air Museum Inc., 56 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009), this ﬁnal rule makes

clear that while the ﬁle history of the subject application or registration is of record, statements in afﬁdavits

or declarations in the ﬁle are not testimony.”).

5. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed.

Reg. 69950, 69963 (October 7, 2016) (“Now that testimony by afﬁdavit or declaration is unilaterally available,

it is necessary to clearly distinguish material residing in an application or registration from testimony

introduced in the proceeding.”). See Daniel J. Quirk Inc. v. Village Car Company, 120 USPQ2d 1146, 1149

n.14 (TTAB 2016) (statements made in afﬁdavit ﬁled in connection with respondent’s ofﬁce action response

constitute admissions against interest and fall within hearsay exception under Fed. R. Evid. 801(d)(2)). See

also EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 213 USPQ 597, 599 (TTAB 1982) (statements

made in an application constitute admissions and may be considered as evidence, albeit not conclusive

evidence, of the truth of the assertions therein), aff’d, 706 F.2d 1213, 217 USPQ 986 (Fed. Cir. 1983) (citing

Bakers Franchise Corp. v. Royal Crown Cola Co., 404 F.2d 985, 160 USPQ 192 (CCPA 1969)); Maremont

Corp. v. Airlift Corp., 463 F.2d 1114, 174 USPQ 395, 396 (CCPA 1972)).

6. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed.

Reg. 69950, 69963 (October 7, 2016).

7. The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed.

Cir. 2009).

8. 37 CFR § 2.122(b)(2). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016).

704.03(b) Not Subject of Proceeding – In General

The ﬁle of a particular application or registration that is not the subject of a proceeding may be made of

record either in connection with testimony or by notice of reliance as described below.

704.03(b)(1) Registration Not Subject of Proceeding

704.03(b)(1)(A) Registration Owned by Party

37 CFR § 2.122

(d) Registrations.

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704.03(b)(1)(A)

TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

(1) A registration of the opposer or petitioner pleaded in an opposition or petition to cancel will

be received in evidence and made part of the record if the opposition or petition is accompanied by an

original or photocopy of the registration prepared and issued by the Ofﬁce showing both the current status

of and current title to the registration, or by a current copy of information from the electronic database

records of the Ofﬁce showing the current status and title of the registration. For the cost of a copy of a

registration showing status and title, see § 2.6(b)(4).

(2) A registration owned by any party to a proceeding may be made of record in the proceeding

by that party by appropriate identiﬁcation and introduction during the taking of testimony or by ﬁling a

notice of reliance in accordance with paragraph (g) of this section, which shall be accompanied by a copy

(original or photocopy) of the registration prepared and issued by the Ofﬁce showing both the current status

of and current title to the registration, or by a current copy of information from the electronic database

records of the Ofﬁce showing the current status and title of the registration. The notice of reliance shall be

ﬁled during the testimony period of the party that ﬁles the notice.

A party that wishes to rely on its ownership of a federal registration of its mark that is not the subject of a

proceeding before the Board may make the registration of record by offering evidence sufﬁcient to establish

that the registration is still subsisting, and that it is owned by the party which seeks to rely on it. [Note 1.]

This may be done in a number of different ways.

A federal registration owned by the plaintiff in an opposition or cancellation proceeding, and pleaded by

the plaintiff in its complaint, will be received in evidence and made part of the record in the proceeding if

the complaint (either as originally ﬁled or as amended) is accompanied by (a) an original or a photocopy of

the registration prepared and issued by the Ofﬁce showing both the current status of and current title to the

registration; or (b) a current copy of information from the electronic database records of the Ofﬁce such as

(i) TSDR (Trademark Status and Document Retrieval) showing the current status and title (owner) of the

registration and, if TSDR does not reﬂect the current owner of the registration, a copy of information from

the Ofﬁce’s Assignment Recordation Branch database demonstrating an assignment to the current owner

of the registration; or (ii) TESS (Trademark Electronic Search System) along with a copy of any records

from the Assignment database showing an assignment to the current owner of the registration. [Note 2.]

The Board does not take judicial notice of a party’s registration. [Note 3.] A plaintiff which pleads ownership

of an application in its complaint must, in order to rely on the subsequently issued registration, make the

registration of record. However, the plaintiff does not have to amend its pleading to assert the registration.

The pleading of the application is viewed as providing sufﬁcient notice to the defendant of the plaintiff’s

intention to rely on any registration that issues from the pleaded application. [Note 4.] However, if the

registration issues after the plaintiff’s testimony period closes, even if the defendant has admitted that the

plaintiff is the owner of the application and the plaintiff has introduced a copy of the application into evidence,

the Board will not consider the registration. [Note 5.]

Please Note: Except under limited circumstances, requests to record an assignment of a Trademark Act §

66(a), 15 U.S.C. § 1141f(a) registration must be ﬁled directly with the International Bureau. [Note 6.] The

International Bureau will notify the USPTO of any changes in ownership recorded in the International

been recorded in the International Register. [Note 7.]

A federal registration owned by any party to a Board inter partes proceeding will be received in evidence

and made part of the record in the proceeding if that party ﬁles, during its testimony period, a notice of

reliance on the registration, accompanied by (a) a copy of the registration prepared and issued by the Ofﬁce

showing both the current status of and current title to the registration; or (b) a current printout or copy of

information from the electronic database records of the Ofﬁce such as (i) TSDR (Trademark Status and

Document Retrieval) showing the current status and title (owner) of the registration and, if TSDR does not

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 704.03(b)(1)(A)

reﬂect the current owner of the registration, a printout or copy of the information from the Ofﬁce’s Assignment

Recordation Branch database demonstrating an assignment to the current owner of the registration; or (ii)

TESS (Trademark Electronic Search System) along with a copy of any records from the Assignment database

showing an assignment to the current owner of the registration. [Note 8.]

If a party chooses to make its registration of record by submitting a status and title copy prepared by the

Ofﬁce, the party's submission, with a notice of reliance on its registration, of an order for status and title

copies of the registration is not sufﬁcient to make the registration of record. Although that procedure was

once permitted, it is no longer allowed. [Note 9.] The status and title copies themselves must accompany

the notice of reliance. [Note 10.] However, the status and title copies need not be certiﬁed. [Note 11.]

Additionally, a party need not submit the original status and title copy; a photocopy is sufﬁcient. [Note 12.]

The registration copies “prepared and issued by the United States Patent and Trademark Ofﬁce showing

both the current status of and current title to the registration,” as contemplated by 37 CFR § 2.122(d), are

printed copies of the registration on which the Ofﬁce has entered the information it has in its records, at the

time it prepares and issues the status and title copies, about the current status and title of the registration.

That information includes information about the renewal, cancellation, publication under Trademark Act §

12(c), 15 U.S.C. § 1062(c); afﬁdavits or declarations under Trademark Act § 8, Trademark Act § 15, and

Trademark Act § 71, 15 U.S.C. § 1058, 15 U.S.C. § 1065 and 15 U.S.C. § 1141; and recorded documents

transferring title. [Note 13.] Plain copies of the registration are not sufﬁcient. [Note 14.]

The issuance date of status and title copies ﬁled with a complaint must be reasonably contemporaneous with

the ﬁling date of the complaint. Status and title copies ﬁled under a notice of reliance during the offering

party's testimony period must have been issued at a time reasonably contemporaneous with the ﬁling of the

complaint, or thereafter. [Note 15.]

When it comes to the attention of the Board that there has been an Ofﬁce error in the preparation of a

registration status and title copy made of record in an inter partes proceeding, that is, that the status and title

copy does not accurately reﬂect the status and title information which the Ofﬁce has in its records, the Board

will take judicial notice of the correct facts as shown by the records of the Ofﬁce. [Note 16.] Further, when

a federal registration owned by a party has been properly made of record in an inter partes proceeding, and

the status of the registration changes between the time it was made of record and the time the case is decided,

the Board, in deciding the case, will take judicial notice of, and rely on, the current status of the registration,

as shown by the records of the Ofﬁce. [Note 17.]

As an alternative to submitting status and title copies of registrations, 37 CFR § 2.122(d) allows a party to

submit copies of its registrations taken from the Ofﬁce’s electronic database records such as TSDR or TESS.

A federal registration owned by any party to a Board inter partes proceeding may be made of record by that

party by appropriate identiﬁcation and introduction during the taking of testimony, that is, by introducing

a copy of the registration as an exhibit to testimony, made by a witness having knowledge of the current

status and title of the registration, establishing that the registration is still subsisting, and is owned by the

offering party. [Note 18.]

A federal registration owned by a plaintiff (including a counterclaimant) will be deemed by the Board to

be of record in an inter partes proceeding if the defendant's answer to the complaint contains admissions

sufﬁcient for the purpose, i.e., admission to the current existence of the registration and the plaintiff’s

ownership of the registration. [Note 19.]

January 2017700-69

704.03(b)(1)(A)

TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

Similarly, a registration owned by any party to the proceeding may be deemed by the Board to be of record

in the proceeding, even though the registration was not properly introduced in accordance with the applicable

rules, if the adverse party in its brief, or otherwise, treats the registration as being of record. [Note 20.]

Finally, a registration owned by any party to the proceeding may be made of record in the proceeding by

stipulation of the parties. [Note 21.]

When a subsisting registration on the Principal Register has been properly made of record by its owner in

a Board inter partes proceeding, the certiﬁcate of registration is entitled to certain statutory evidentiary

presumptions. [Note 22.]

In contrast, a subsisting registration on the Supplemental Register, even when properly made of record by

its owner, is not entitled to any statutory presumptions, and is not evidence of anything except that the

registration issued. [Note 23.]

Expired or Cancelled Registrations. Although an expired or cancelled registration may be made of record

by any of the methods described above, such a registration is not evidence of anything except that the

registration issued; it is not evidence of any presently existing rights in the mark shown in the registration,

or that the mark was ever used. [Note 24.]

State Registrations. A state registration owned by a party to a Board inter partes proceeding may be made

of record therein by notice of reliance under 37 CFR § 2.122(e), or by appropriate identiﬁcation and

introduction during the taking of testimony, or by stipulation of the parties. See TBMP § 704.07.

However, a state registration (whether owned by a party, or not) is incompetent to establish that the mark

shown therein has ever been used, or that the mark is entitled to federal registration. [Note 25.]

Foreign Registrations. A foreign registration owned by a party to a Board inter partes proceeding may be

made of record in the same manner as a state registration, but a foreign registration is not evidence of the

use, registrability, or ownership of the subject mark in the United States. [Note 26.]

Making the ﬁle history of the registration of record. If a party owns a registration that is not the subject

of the proceeding and wishes to make of record the registration ﬁle history (rather than just the certiﬁcate

of registration), or a portion thereof, it may do so by: (1) ﬁling, during its testimony period, a copy of the

ﬁle history, or the portion it wishes to introduce, together with a notice of reliance thereon as an ofﬁcial

record pursuant to 37 CFR § 2.122(e) (see TBMP § 704.07; or (2) appropriate identiﬁcation and introduction

of a copy of the ﬁle history, or portion thereof, during the taking of testimony; or (3) stipulation of the

parties, accompanied by a copy of the ﬁle history, or portion thereof. The registration ﬁle or a portion thereof

may be taken from the Ofﬁce’s electronic database records.

The ﬁle history of a registration owned by another party, but not the subject of the proceeding, may be made

of record in the same manner. [Note 27.] Copies of ofﬁcial records of the USPTO need not be certiﬁed.

[Note 28.]

NOTES:

1. See Alcan Aluminum Corp. v. Alcar Metals Inc., 200 USPQ 742, 744 n.5 (TTAB 1978) (plain copies of

registrations introduced through testimony which established ownership of the registrations but failed to

establish that they were currently subsisting were not considered); Maybelline Co. v. Matney, 194 USPQ

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 704.03(b)(1)(A)

438, 440 (TTAB 1977) (pleaded registration was not considered of record where testimony introduced

original certiﬁcate of registration into evidence but failed to establish current status and title); Peters

Sportswear Co. v. Peter's Bag Corp., 187 USPQ 647, 647 (TTAB 1975) (mere fact that copies show that

registration originally issued to opposer does not establish that title still resides in opposer). Compare United

Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1043 (TTAB 2014) (non-status and title copies of

pleaded registration attached to notice of opposition considered of record when issue date “reasonably

contemporaneous” with ﬁling date of notice of opposition; two others originally attached to notice of

opposition considered of record when printed from USPTO electronic database records showing current

status and title and submitted under notice of reliance), with id. at 1041-42 (non-status and title copies of

four pleaded registrations attached to notice of opposition insufﬁcient to make of them record when issue

dates “are not substantially contemporaneous with ﬁling of notice of opposition,” and opposer did not

otherwise establish current status and title such as by testimony or notice of reliance on copies of registration

taken from USPTO electronic database records showing current status and title; applicant’s admission in

answer that opposer is the owner of the pleaded registrations does not establish their status, as opposer did

not plead validity of registrations in notice of opposition).

2. 37 CFR § 2.122(d)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL

BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (effective January 14, 2017, “[t]he Board

amended § 2.122(d) by replacing the word ‘printout’ with the word ‘copy’ to broaden the manner in which

a registration may be attached to include, for example, printouts or downloads. The Ofﬁce has retained the

slightly different wording in § 2.122(d)(1) and (2) but the wording does not have different meanings.”).

See Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991) (not

of record where opposer’s copies of registrations submitted with notice of opposition did not show current

status or title); Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1601 (TTAB 2014) (opposer

failed to comply with “‘simple and clear’ directives of Trademark Rule 2.122(d)” by submitting plain copy

of registration attached to notice of opposition – registration not of record); Vital Pharmaceuticals Inc. v.

Kronholm, 99 USPQ2d 1708, 1709 (TTAB 2011) (pleaded registrations of record because copies from

USPTO databases were submitted with notice of opposition); Melwani v. Allegiance Corp., 97 USPQ2d

1537, (pleaded registrations not of record where registration numbers were inputted in the ESTTA protocol

but copies of registrations were not attached as exhibits); Citigroup Inc. v. Capital City Bank Group Inc.,

94 USPQ2d 1645, 1654 (TTAB 2010) (opposer may ﬁle a notice of reliance on a registration prepared by

the Ofﬁce showing both the current status and current title to the registration or a current printout of

information from Ofﬁce electronic database records showing the current status and title of the registrations),

aff'd, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Research In Motion Ltd. v. NBOR Corp., 92

USPQ2d 1926, 1928 (TTAB 2009) (printouts from TSDR (formerly TARR) database of pleaded registrations

submitted with notice of reliance sufﬁcient to enter registrations in evidence; Board noted that “To the extent

that there may appear to be a discrepancy between Trademark Rule 2.122(d)(1) and Trademark Rule

2.122(d)(2) in that the former allows for proof of a pleaded registration by the submission of USPTO records

with a pleading while the latter appears to preclude use of such records during trial, there is no sound basis

for the distinction.”); Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487, 1488

n.3 (TTAB 1990); Floralife, Inc. v. Floraline International Inc., 225 USPQ 683, 684 n.6 (TTAB 1984);

Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 947 (TTAB 1983) (photocopy of registration did

not contain status and title information); Acme Boot Co. v. Tony and Susan Alamo Foundation, Inc., 213

USPQ 591, 592 (TTAB 1980) (handwritten notations on registration certiﬁcate insufﬁcient to show status

of registration); Royal Hawaiian Perfumes, Ltd. v. Diamond Head Products of Hawaii, Inc., 204 USPQ

144, 146 (TTAB 1979). Cf. FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1236

(TTAB 2014) (registration resulting from opposer’s unpleaded application akin to third-party registration,

and may be made of record through notice of reliance for purposes other than the basis of the opposition,

i.e., for “whatever probative value” it may have). Compare United Global Media Group, Inc. v. Tseng, 112

USPQ2d 1039, 1043 (TTAB 2014) (non-status and title copy of pleaded registration attached to notice of

January 2017700-71

704.03(b)(1)(A)

TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

opposition considered of record when issue date “reasonably contemporaneous” with ﬁling date of notice

of opposition; two others originally attached to notice of opposition considered of record when printed from

USPTO electronic database records showing current status and title and submitted under notice of reliance),

with id. at 1041-42 (non-status and title copies of four pleaded registrations attached to notice of opposition

insufﬁcient to make of them record when issue dates “are not substantially contemporaneous with ﬁling of

notice of opposition,” and opposer did not otherwise establish current status and title such as by testimony

or notice of reliance on copies of registration taken from USPTO electronic database records showing current

status and title; applicant’s admission in answer that opposer is the owner of the pleaded registrations does

not establish their status, as opposer did not plead validity of registrations in notice of opposition).

3. See UMG Recordings Inc. v. O'Rourke, 92 USPQ2d 1042, 1046 (TTAB 2009) (“The Board does not

take judicial notice of registrations that reside in the Patent and Trademark Ofﬁce.”) (citing Corporate

Fitness Programs Inc. v. Weider Health and Fitness Inc., 2 USPQ2d 1682, 1683-84, n.3 (TTAB 1987));

Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1485 n.4 (TTAB 2007).

The Federal Circuit, in In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed. Cir. 2010)

exercised its discretion to take judicial notice of a third party’s registrations. Although the court took judicial

notice of a third-party registration in that case, the Board does not take judicial notice of either third-party

registrations or a party’s own registration[s] insofar as the Trademark Rules of Practice specify, as discussed

above, how to make such registrations of record in an inter partes proceeding.

4. See United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1040 n.3 (TTAB 2014) (when an

opposer pleads ownership of an underlying application, opposer may make of record subsequently issued

registration of that application without amending pleading); Hunt Control Systems Inc. v. Koninklijke Philips

Electronics N.V., 98 USPQ2d 1558, 1563 n.6 (TTAB 2011) (an applicant is on notice that an opposer intends

to rely on a registration that matured from a pleaded application), on appeal, No. 11-3684 (D.N.J. June

2016); UMG Recordings Inc. v. O'Rourke, 92 USPQ2d 1042, 1045 n. 12 (TTAB 2009); Standard Knitting

Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1920 (TTAB 2006); DC Comics v. Pan

American Grain Manufacturing Co., 77 USPQ2d 1220, 1223 n.6 (TTAB 2005); M & T Chemicals Inc. v.

Stepan Chemical Co., 150 USPQ 570, 571 (TTAB 1966).

5. See UMG Recordings Inc. v. O'Rourke, 92 USPQ2d 1042, 1045 (TTAB 2009).

6. 37 CFR § 7.22 and 37 CFR § 7.23.

7. See TMEP § 1906.01(a) and TMEP § 1906.01(a)(i).

8. 37 CFR § 2.122(d)(2). See Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710,

1713 (Fed. Cir. 1991); Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1654 (TTAB

2010) (opposer may ﬁle a notice of reliance on a registration prepared by the Ofﬁce showing both the current

status and current title to the registration or a current printout of information from Ofﬁce electronic database

records showing the current status and title of the registrations), aff'd, 637 F.3d 1344, 98 USPQ2d 1253

(Fed. Cir. 2011); United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1041-43 (TTAB 2014)

(non-status and title copies of two pleaded registrations originally attached to notice of opposition considered

of record when printed from USPTO electronic database records showing current status and title and submitted

under notice of reliance, but four others not considered of record when issue dates “are not substantially

contemporaneous with ﬁling of notice of opposition,” and opposer did not otherwise establish current status

and title such as by testimony or notice of reliance on copies of registration taken from USPTO electronic

database records showing current status and title; applicant’s admission in answer that opposer is the owner

of the pleaded registrations does not establish their status, as opposer did not plead validity of registrations

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 704.03(b)(1)(A)

in notice of opposition); Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1601 (TTAB 2014)

(opposer failed to comply with “‘simple and clear’ directives of Trademark Rule 2.122(d)” by submitting

plain copy of registration attached to notice of opposition – registration not of record); Research In Motion

Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1928 (TTAB 2009) (printouts from TSDR (formerly TARR) database

of pleaded registrations submitted with notice of reliance sufﬁcient to enter registrations in evidence; Board

noted that “To the extent that there may appear to be a discrepancy between Trademark Rule 2.122(d)(1)

and Trademark Rule 2.122(d)(2) in that the former allows for proof of a pleaded registration by the submission

of USPTO records with a pleading while the latter appears to preclude use of such records during trial, there

is no sound basis for the distinction.”); UMG Recordings, Inc. v. O’Rourke, 92 USPQ2d 1042, 1045 (TTAB

2009) (notice of reliance on registration certiﬁcate which issued after applicant ﬁled its brief untimely; that

applicant also admitted opposer owned the application that matured into the registration did not dictate that

the resulting registration would be of record whenever it issued); Jean Patou Inc. v. Theon Inc., 18 USPQ2d

1072, 1075 (TTAB 1990) (untimely notice of reliance on status and title copy of registration ﬁled after close

of testimony period); Edison Brothers Stores, Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ

530, 531 n.3 (TTAB 1986).

See also Sheller-Globe Co. v. Scott Paper Co., 204 USPQ 329, 331 (TTAB 1979); Volkswagenwerk AG

v. Clement Wheel Co., 204 USPQ 76, 80-81 (TTAB 1979); W. R. Grace & Co. v. Red Owl Stores, Inc., 181

USPQ 118, 120 (TTAB 1973).

Cf. FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1236 (TTAB 2014) (registration

resulting from opposer’s unpleaded application akin to third-party registration, and may be made of record

through notice of reliance for purposes other than the basis of the opposition, i.e., for “whatever probative

value” it may have).

9. See 37 CFR § 2.122 (d); Notice of Final Rulemaking, 48 Fed. Reg. 23122 (May 23, 1983); In re

Inter-State Oil Co., 219 USPQ 1229, 1230 n.1 (TTAB 1983).

10. See Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1461 n.4 (TTAB 1992).

11. 37 CFR § 2.122(e). Although status and title copies need not be certiﬁed (see 37 CFR § 2.122(e)), at

present all status and title copies prepared and issued by the Ofﬁce are certiﬁed. See Industrial Adhesive

Co. v. Borden, Inc. , 218 USPQ 945, 947 (TTAB 1983) (copies do not have to be certiﬁed but must contain

status and title information). For the cost of a copy of a registration showing status and title, see 37 CFR §

2.6(b)(4).

12. 37 CFR § 2.122(d).

13. See Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 947 (TTAB 1983); Acme Boot Co. v. Tony

and Susan Alamo Foundation, Inc., 213 USPQ 591, 592 (TTAB 1980) (handwritten notations on registration

certiﬁcate not sufﬁcient); Peters Sportswear Co. v. Peter's Bag Corp., 187 USPQ 647, 647 (TTAB 1975)

(constitutes prima facie showing of status and title).

14. See Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1601 (TTAB 2014) (opposer failed

to comply with “‘simple and clear’ directives of Trademark Rule 2.122(d)” by submitting plain copy of

registration attached to notice of opposition – registration not of record); Research In Motion Ltd. v. NBOR

Corp., 92 USPQ2d 1926, 1928 (TTAB 2009) (printouts from TSDR (fomerly TARR) database of pleaded

registrations submitted with notice of reliance sufﬁcient to make registrations of record; Board noted that

“To the extent that there may appear to be a discrepancy between Trademark Rule 2.122(d)(1) and Trademark

Rule 2.122(d)(2) in that the former allows for proof of a pleaded registration by the submission of USPTO

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records with a pleading while the latter appears to preclude use of such records during trial, there is no sound

basis for the distinction.”). See also Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d

1710, 1713 (Fed. Cir. 1991); Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 947-48 (photocopy

of registration without status and title information insufﬁcient to establish prima facie showing); Syngenta

Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1116-17 (TTAB 2009) (copy of registration

certiﬁcate insufﬁcient). Compare United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1043

(TTAB 2014) (non-status and title copies of pleaded registration attached to notice of opposition considered

of record when issue date “reasonably contemporaneous” with ﬁling date of notice of opposition; two others

considered of record when printed from USPTO electronic database records showing current status and title

and submitted under notice of reliance), with id. at 1041-42 (non-status and title copies of four pleaded

registrations attached to notice of opposition insufﬁcient to make of them record when issue dates “are not

substantially contemporaneous with ﬁling of notice of opposition,” and opposer did not otherwise establish

current status and title such as by testimony or notice of reliance on copies of registration taken from USPTO

electronic database records showing current status and title; applicant’s admission in answer that opposer

is the owner of the pleaded registrations does not establish their status, as opposer did not plead validity of

registrations in notice of opposition).

15. See Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1601 n.2 (TTAB 2014) (plain copy

of registration attached to notice of opposition indicating issuance ﬁve years before such ﬁling not “reasonably

contemporaneous”); Hard Rock Café International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1511 (TTAB

2000) (status and title copies prepared three years prior to opposition not reasonably contemporaneous);

Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460 (TTAB 1992); Jean Patou Inc. v.

Theon Inc., 18 USPQ2d 1072, 1075 (TTAB 1990) (whether notice of reliance on status and title copy of

registration prepared four years earlier is sufﬁciently recent goes to the competency, not the admissibility,

of the registration); Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487, 1488 n.3

(TTAB 1990) (status and title copies from 1963 not reasonably contemporaneous with ﬁling of opposition

in 1986); Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 947 (TTAB 1983); Royal Hawaiian

Perfumes, Ltd. v. Diamond Head Products of Hawaii, Inc., 204 USPQ 144, 146 (TTAB 1979) (status and

title copy of registration prepared two months prior to ﬁling of opposition is reasonably contemporaneous);

Volkswagenwerk AG v. Clement Wheel Co., 204 USPQ 76, 81-82 (TTAB 1979); Marriott Corp. v. Pappy's

Enterprises, Inc., 192 USPQ 735, 736 (TTAB 1976). Compare United Global Media Group, Inc. v. Tseng,

112 USPQ2d 1039, 1043 (TTAB 2014) (non-status and title copy of pleaded registration attached to notice

of opposition considered of record when issue date approximately four months prior to ﬁling date of notice

of opposition; two others originally attached to notice of opposition considered of record when printed from

USPTO electronic database records showing current status and title and submitted under notice of reliance),

with id. at 1041-42 (non-status and title copies of four pleaded registrations attached to notice of opposition

insufﬁcient to make of them record when issue dates were “years earlier” and opposer did not otherwise

establish current status and title such as by testimony or notice of reliance on copies of registration taken

from USPTO electronic database records showing current status and title).

16. See Duffy-Mott Co. v. Borden, Inc., 201 USPQ 846, 847 n.5 (TTAB 1978) (USPTO error in identiﬁcation

of owner).

17. See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1425 n.19 (TTAB 2014)

(judicial notice taken of changes in title and status of pleaded and proven registrations); Couch/Braunsdorf

Afﬁnity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1460 n.4 (TTAB 2014) (judicial notice taken of

status of pleaded registration made of record, but no further consideration because registration had been

cancelled); Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1192 n.9 (TTAB 2007) (judicial notice

taken of current status of a registration owned by a party properly made of record, when status of registration

changed between the time it was made of record and time case decided); Black & Decker Corp. v. Emerson

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 704.03(b)(1)(A)

Electric Co., 84 USPQ2d 1482, 1487-88 n.10-12 (TTAB 2007) (Board conﬁrmed Trademark Act §§ 8 and

15 afﬁdavits that were ﬁled after submission of opposer's registrations during testimony period); Parfums

de Coeur, Ltd. v. Lazarus, 83 USPQ2d 1012, 1014 n. 4 (TTAB 2007) (Board conﬁrmed ﬁling of Trademark

Act §§ 8 and 15 afﬁdavits that occurred subsequent to submission of registrations); Tea Board of India v.

Republic of Tea, Inc., 80 USPQ2d 1881, 1896 n.25 (TTAB 2006) (judicial notice taken of renewal of

registration); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002) (review of Ofﬁce

automated records subsequent to ﬁling of status and title copy of registration revealed that Trademark Act

§§ 8 and 15 afﬁdavits had been accepted and acknowledged); Ultratan Suntanning Centers Inc. v. Ultra

Tan International AB, 49 USPQ2d 1313, 1314, n.6 (TTAB 1998) (same); Royal Hawaiian Perfumes, Ltd.

v. Diamond Head Products of Hawaii, Inc., 204 USPQ 144, 147 (TTAB 1979) (status and title copy need

not be updated after it is submitted; judicial notice of ﬁling of Trademark Act §§ 8 and 15 afﬁdavits);

Duffy-Mott Co. v. Borden, Inc., 201 USPQ 846, 847 n.5 (TTAB 1978); Volkswagenwerk AG v. Clement

Wheel Co., 204 USPQ 76, 80 n.3 (TTAB 1979).

18. 37 CFR § 2.122(d)(2). See Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710,

1713 (Fed. Cir. 1991); Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1654 (TTAB

2010) (opposer may introduce registrations through witness testifying that registrations are still subsisting

and are owned by opposer), aff'd, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Cadence Industries

Corp. v. Kerr, 225 USPQ 331, 332 n.2 (TTAB 1985) (no probative value where testimony established

opposer’s ownership of registration, but not current status); Floralife, Inc. v. Floraline International Inc.,

225 USPQ 683, 684 n.6 (TTAB 1984) (identiﬁcation by witness as having come from opposer’s ﬁles

insufﬁcient to establish ownership and status); Acme Boot Co. v. Tony and Susan Alamo Foundation Inc.,

213 USPQ 591, 592 (TTAB 1980).

See also Sheller-Globe Co. v. Scott Paper Co., 204 USPQ 329, 331 n.2 (TTAB 1979); Alcan Aluminum

Corp. v. Alcar Metals Inc., 200 USPQ 742, 744 n.5 (TTAB 1978); Groveton Papers Co. v. Anaconda Co.,

197 USPQ 576, 577 n.2 (TTAB 1977); Maybelline Co. v. Matney, 194 USPQ 438, 440 (TTAB 1977); GAF

Corp. v. Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB 1976); American Manufacturing

Co., v. Phase Industries, Inc., 192 USPQ 498, 500 (TTAB 1976); West Point-Pepperell, Inc. v. Borlan

Industries Inc., 191 USPQ 53, 54 (TTAB 1976).

19. See Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991)

(admission only of ownership and not validity was not sufﬁcient); Tiffany & Co. v. Columbia Industries,

Inc., 455 F.2d 582, 173 USPQ 6, 8 (CCPA 1972) (Board erred in refusing to consider registrations of record

when applicant admitted “the registrations referred to in the notice of opposition” in its answer); Hard Rock

Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) (applicant effectively admitted active

status and ownership of certain speciﬁcally identiﬁed registrations); Philip Morris Inc. v. Reemtsma

Cigarettenfabriken GmbH, 14 USPQ2d 1487, 1488 n.3 (TTAB 1990) (not of record where although applicant

admitted that copies attached to opposition were “true copies” applicant did not admit to status and title of

those registrations). Cf. United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1041-42 (TTAB

2014) (non-status and title copies of four registrations attached to notice of opposition not of record despite

applicant’s admission in answer that opposer is the owner of them, as opposer did not plead validity of

registrations in notice of opposition); Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1602

(TTAB 2014) (applicant’s admission that opposer “is listed” as the owner insufﬁcient to establish opposer’s

current ownership of pleaded registration); UMG Recordings Inc. v. O'Rourke, 92 USPQ2d 1042, 1045

(TTAB 2009) (applicant admitted opposer’s ownership of pleaded application; admission did not make

resulting registration automatically of record and registration still had to be introduced); Demon International

LC v. Lynch, 86 USPQ2d 1058, 1060 (TTAB 2008) (applicant’s statement in answer that he “does not

dispute the ﬁling” of opposer’s application not an admission of opposer’s ownership of subsequently issued

registration and registration’s validity).

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20. See Crown Radio Corp. v. Soundscriber Corp., 506 F.2d 1392, 184 USPQ 221, 222 (CCPA 1974) (after

ﬁling its answer, respondent ﬁled a “paper” in which respondent admitted existence of petitioner’s registration;

admission was sufﬁcient to overcome respondent's 37 CFR § 2.132 motion for default judgment); Local

Trademarks Inc. v. Handy Boys Inc., 16 USPQ2d 1156, 1157 (TTAB 1990) (applicant conceded ownership

and validity in trial brief); Floralife, Inc. v. Floraline International Inc., 225 USPQ 683, 684 n.6 (TTAB

1984) (applicant's treatment of pleaded registrations as properly of record in its trial brief was deemed a

stipulation as to current status and title); Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 948 (TTAB

1983) (admission in brief). See also Jockey International, Inc. v. Frantti, 196 USPQ 705, 706 n.5 (TTAB

1977); Angelica Corp. v. Collins & Aikman Corp., 192 USPQ 387, 392 (TTAB 1976); and West

Point-Pepperell, Inc. v. Borlan Industries Inc., 191 USPQ 53, 54 (TTAB 1976).

21. See 37 CFR § 2.123(b); Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 948 (TTAB 1983);

Plus Products v. Natural Organics, Inc., 204 USPQ 773, 774 n.2 (TTAB 1979).

22. See, e.g., Trademark Act § 7(b), 15 U.S.C. § 1057(b); CTS Corp. v. Cronstoms Manufacturing, Inc.,

515 F.2d 780, 185 USPQ 773, 774 (CCPA 1975) (prima facie evidence of registrant’s right to use the mark

on the identiﬁed goods); Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399,

181 USPQ 272, 274 (CCPA 1974) (prima facie evidence of validity of registration, ownership of mark and

exclusive right to use it); and In re Phillips-Van Heusen Corp., 228 USPQ 949, 950 (TTAB 1986) (prima

facie evidence of registrant’s continuous use of the mark). See also Trademark Act § 7(c), 15 U.S.C. §

1057(c) (conferring, contingent on the registration of a mark on the Principal Register, and subject to certain

speciﬁed exceptions, constructive use priority dating from the ﬁling of the application for registration of

the mark); Jimlar Corp. v. The Army and Air Force Exchange Service, 24 USPQ2d 1216, 1217 n.5 (TTAB

1992) (opposer’s constructive use date on ITU application was subsequent to applicant’s); Zirco Corp. v.

American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991) (constructive use dates

intended to give ITU applicants superior rights to others who adopt the mark after ﬁling date).

See also Andrea Radio Corp. v. Premium Import Co., 191 USPQ 232, 234 (TTAB 1976); David Crystal,

Inc. v. Glamorise Foundations, Inc., 189 USPQ 740, 741 (TTAB 1975); Johnson & Johnson v. E. I. du

Pont de Nemours & Co., 181 USPQ 790, 791 (TTAB 1974); Gates Rubber Co. v. Western Coupling Corp.,

179 USPQ 186, 189-90 (TTAB 1973).

23. See McCormick & Co. v. Summers, 354 F.2d 668, 148 USPQ 272, 276 (CCPA 1966) (registration on

Supplemental Register is not evidence of constructive notice of ownership nor evidence of exclusive right

to use); In re Medical Disposables Co., 25 USPQ2d 1801, 1805 (TTAB 1992); and Copperweld Corp. v.

Arcair Co., 200 USPQ 470 (TTAB 1978). See also Andrea Radio Corp. v. Premium Import Co., 191 USPQ

232 (TTAB 1976); Aloe Creme Laboratories, Inc. v. Johnson Products Co., 183 USPQ 447 (TTAB 1974);

Nabisco, Inc. v. George Weston Ltd., 179 USPQ 503 (TTAB 1973); and Aloe Creme Laboratories, Inc. v.

Bonne Bell, Inc., 168 USPQ 246 (TTAB 1970).

24. See Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed.

Cir. 1989) (does not provide constructive notice of anything); Frito-Lay North America, Inc. v. Princeton

Vanguard, LLC, 109 USPQ2d 1949, 1956 n.9 (TTAB 2014) (cancelled and expired registrations are not

probative), vacated and remanded on other grounds, Princeton Vanguard , LLC v. Frito-Lay North. America.,

Inc., 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015); Time Warner Entertainment Company v. Jones,

65 USPQ2d 1650, 1653 n.6 (TTAB 2002) (status and title copy of expired registration); Sunnen Products

Co. v. Sunex International Inc., 1 USPQ2d 1744, 1746-47 (TTAB 1987) (parties stipulated to introduction

of photocopy of expired registration having no probative value other than that it issued); United States Shoe

Corp. v. Kiddie Kobbler Ltd., 231 USPQ 815, 818 n.7 (TTAB 1986) (expired “Act of 1920” registration

had no probative value); Sinclair Manufacturing Co. v. Les Parfums de Dana, Inc., 191 USPQ 292, 294

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 704.03(b)(1)(A)

(TTAB 1976) (lapsed registration of afﬁliated company is not evidence of use of mark at any time); Bonomo

Culture Institute, Inc. v. Mini-Gym, Inc., 188 USPQ 415, 416 (TTAB 1975) (expired registration is

incompetent evidence of any existing rights in mark). Cf. Nike Inc. v. Maher, 100 USPQ2d 1018, 1021

(TTAB 2011) (limited probative value of expired third-party registration is further limited to the short time

it was registered).

See also Borden, Inc. v. Kerr-McGee Chemical Corp., 179 USPQ 316, 316 n.2 (TTAB 1973), aff'd without

opinion, 500 F.2d 1407, 182 USPQ 307 (CCPA 1974); Unitec Industries, Inc. v. Cumberland Corp., 176

USPQ 62, 63 (TTAB 1972); Monocraft, Inc. v. Leading Jewelers Guild, 173 USPQ 506, 508 (TTAB 1972).

25. See, e.g., Faultless Starch Co. v. Sales Producers Associates, Inc., 530 F.2d 1400, 189 USPQ 141, 142

n.2 (CCPA 1976) (state registrations do not establish use); Kraft, Inc. v. Balin, 209 USPQ 877, 880 (TTAB

1981) (although parties stipulated to introduction of state registration, said registration is incompetent to

prove anything material to opposition proceeding); Plak-Shack, Inc. v. Continental Studios of Georgia,

Inc., 204 USPQ 242, 246 (TTAB 1979) (incompetent as evidence of use of a mark); Stagecoach Properties,

Inc. v. Wells Fargo & Co., 199 USPQ 341, 352 (TTAB 1978) (incompetent evidence to establish use of the

mark), aff'd, 685 F.2d 302, 216 USPQ 480 (9th Cir. 1982). See also Econo-Travel Motor Hotel Corp. v.

Econ-O-Tel of America, Inc., 199 USPQ 307, 390 (TTAB 1978); Angelica Corp. v. Collins & Aikman

Corp., 192 USPQ 387, 390 (TTAB 1976); State Historical Society of Wisconsin v. Ringling Brothers-Barnum

& Bailey Combined Shows, Inc., 190 USPQ 25, 26 n.2 (TTAB 1976); Old Dutch Foods, Inc. v. Old Dutch

Country House, Inc., 180 USPQ 659, 660 n.6 (TTAB 1973); Philip Morris Inc. v. Liggett & Myers Tobacco

Co., 139 USPQ 240, 243-44 (TTAB 1963).

Cf. with respect to ex parte appeals, In re Anania Associates, Inc., 223 USPQ 740, 742 (TTAB 1984)

(argument that applicant’s state registration for the mark must be taken as prima facie evidence of

distinctiveness rejected); In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984); In re Illinois Bronze

Powder & Paint Co., 188 USPQ 459 (TTAB 1975)

26. See Societe Anonyme Marne et Champagne v. Myers, 250 F.2d 374, 116 USPQ 153, 156 (CCPA 1957);

Bureau National Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610,

1618 (TTAB 1988). See also Nabisco, Inc. v. George Weston Ltd., 179 USPQ 503, 507 (TTAB 1973);

Barash Co. v. Vitafoam Ltd., 155 USPQ 267, 267 n.3 (TTAB 1967), aff'd, 427 F.2d 810, 166 USPQ 88

(CCPA 1970). Cf. In re Hag AG, 155 USPQ 598, 599 (TTAB 1967).

27. See Harzfeld's, Inc. v. Joseph M. Feldman, Inc., 184 USPQ 692, 693 n.4 (TTAB 1974) (ﬁle history of

petitioner's registration not of record where respondent noticed it but failed to ﬁle a copy of it).

28. 37 CFR § 2.122(e).

704.03(b)(1)(B) Third-Party Registration

37 CFR § 2.122 (e) Printed publications and ofﬁcial records.

(1) 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 in a

particular 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 in accordance with paragraph (g) of this section. The notice of reliance 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

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704.03(b)(1)(B)

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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 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.

A party to an inter partes proceeding before the Board may introduce, as part of its evidence in the case, a

registration owned by a third party not involved in the proceeding. [Note 1.]

A party that wishes to make such a third-party registration of record in a Board inter partes proceeding may

do so by ﬁling, during its testimony period, a plain copy of the registration, a printout or a copy of information

of the registration from the Ofﬁce’s electronic database records, together with a notice of reliance thereon

specifying the registration and indicating generally its relevance and associating the registration with one

or more issues in the case. [Note 2.]

A party to a Board inter partes proceeding may also make a third-party registration of record by introducing

a copy of it as an exhibit to testimony, or by stipulation of the parties.

It is not necessary that the copy of the third-party registration submitted with a notice of reliance (or with

testimony or a stipulation) be certiﬁed, nor need it be a current status and title copy prepared by the Ofﬁce;

a plain copy (or legible photocopy) of the registration itself, or the electronic equivalent thereof, that is, a

printout of the registration from the electronic records of the Ofﬁce’s automated search system is all that is

required. [Note 3.]

As stated in TBMP § 704.03(b)(1) above, a current status and title copy of a registration prepared by the

Ofﬁce (or other appropriate proof of current status and title), or a current printout or copy of information

from the Ofﬁce’s electronic database records showing the current status and title of the registration, submitted

with a notice of opposition or petition to cancel, is necessary when the owner of a registration on the Principal

to a certiﬁcate of registration pursuant to Trademark Act § 7(b), 15 U.S.C. § 1057 (b) . However, the § 7(b)

presumptions accorded to a registration on the Principal Register accrue only to the beneﬁt of the owner of

the registration, and hence come into play only when the registration is made of record by its owner, or

when the registration is cited by an examining attorney (in an ex parte case) as a reference under Trademark

Act § 2(d), 15 U.S.C. § 1052(d), against a mark sought to be registered. [Note 4.]

Thus, when third-party registrations are made of record, the party offering them may not rely on the Trademark

Act § 7(b), 15 U.S.C. § 1057(b), presumptions. Normally, third-party registrations are offered merely to

show that they issued, and a plain copy of the registration is sufﬁcient for that purpose. [Note 5.]

On the other hand, a party may not make a third-party registration of record simply by introducing a list of

third-party registrations that includes it; or by ﬁling a trademark search report in which the registration is

mentioned; or by ﬁling a printout, from a private company's data base, of information about the registration;

or by ﬁling a notice of reliance together with a reproduction of the mark as it appeared in the Ofﬁcial Gazette

for purposes of publication; or by referring to the registration in its brief or pleading. The Board does not

take judicial notice of registrations in the Ofﬁce. [Note 6.] Cf. TBMP § 528.05(d) (for purposes of responding

to a summary judgment motion only, a copy of a trademark search report may be sufﬁcient to raise a genuine

issue of material fact as to the nature and extent of third-party use of a particular designation).

Even when a third-party federal registration has been properly made of record, its probative value is limited,

particularly when the issue to be determined is likelihood of confusion, and there is no evidence of actual

use of the mark shown in the registration. [Note 7.] Nevertheless, third-party registrations may be entitled

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 704.03(b)(1)(B)

to some weight to show the meaning of a mark, or a portion of a mark, in the same manner as a dictionary

deﬁnition. [Note 8.]

A state registration, whether or not owned by a party, has very little, if any, probative value in a proceeding

before the Board. [Note 9.] See, e.g., TBMP § 704.03(b)(1)(A).

Making ﬁle history of third-party registration of record. The ﬁle history of a third-party registration

(rather than just the certiﬁcate of registration), or a portion thereof, may be made of record by: (1) ﬁling,

during the offering party's testimony period, a copy of the ﬁle history, or the portion it wishes to introduce,

together with a notice of reliance thereon as an ofﬁcial record pursuant to 37 CFR § 2.122(e) (see TBMP §

704.07); or (2) appropriate identiﬁcation and introduction of a copy of the ﬁle history, or portion thereof,

during the taking of testimony; or (3) stipulation of the parties, accompanied by a copy of the ﬁle history,

or portion thereof. The ﬁle history, or portion thereof, may be obtained from the Ofﬁce’s electronic database

records, such as TSDR.

It is not necessary that the copy of the registration ﬁle, or portions thereof, be certiﬁed. [Note 10.] However,

third-party registration histories are of very limited probative value. [Note 11.]

NOTES:

1. See Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1110 (TTAB 2007). Cf. FUJIFILM

SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1236 (TTAB 2014) (registration resulting from

opposer’s unpleaded application akin to third-party registration, and may be made of record through notice

of reliance for purposes other than the basis of the opposition, i.e., for “whatever probative value” it may

have).

2. 37 CFR § 2.122(e); 37 CFR § 2.122(g). See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB

1992) (printouts of third-party registrations obtained from private search reports are neither printed

publications nor ofﬁcial records); Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ 151, 153 n.2 (TTAB

1983), aff'd, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984); W. R. Grace & Co. v. Herbert J. Meyer

Industries, Inc., 190 USPQ 308, 309 n.5 (TTAB 1976) (reference to third-party registrations in answer,

without ﬁling copies with a notice of reliance, was insufﬁcient to make them of record).

3. See 37 CFR § 2.122(e); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 n.11

(TTAB 2011) (not necessary to submit title and status copies of third-party registrations prepared by Ofﬁce;

plain copies from the USPTO's electronic database would have sufﬁced); Raccioppi v. Apogee Inc., 47

USPQ2d 1368, 1370 (TTAB 1998) (incomplete excerpts of registrations from internal USPTO trademark

database system was insufﬁcient); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994);

Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992). See also Interbank Card Association

v. United States National Bank of Oregon, 197 USPQ 123, 124 n.6 (TTAB 1977).

4. See Trademark Act § 7(b), 15 U.S.C. § 1057(b); Chemical New York Corp. v. Conmar Form Systems,

Inc., 1 USPQ2d 1139, 1144 (TTAB 1986) (wholly owned subsidiary of owner of registrations may not rely

on registrations to prove priority); In re Phillips-Van Heusen Corp., 228 USPQ 949, 950 (TTAB 1986)

(claim that mark in cited registration is not in use is an impermissible collateral attack on the validity of the

registration in an ex parte proceeding); In re H & H Products, 228 USPQ 771, 773 (TTAB 1986) (registrations

are entitled to presumption that marks have overcome any inherent nondistinctiveness); Yamaha International

Corp. v. Stevenson, 196 USPQ 701, 702 (TTAB 1979) (opposer could not rely on § 7(b) presumptions where

registration is owned by its parent company); Fuld Brothers, Inc. v. Carpet Technical Service Institute,

Inc., 174 USPQ 473, 475-76 (TTAB 1972) (although petitioner can rely on its wholly-owned subsidiary's

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704.03(b)(1)(B)

TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

use of a mark, petitioner cannot rely on the registrations owned by its wholly-owned subsidiary for statutory

presumptions); Joseph S. Finch & Co. v. E. Martinoni Co., 157 USPQ 394, 395 (TTAB 1968) (opposer

cannot rely on registrations owned by its parent or its parent's subsidiaries).

5. See Merritt Foods Co. v. Americana Submarine, 209 USPQ 591, 593 n.16 (TTAB 1980); Hiram Walker

& Sons, Inc. v. Milstone, 130 USPQ 274, 276 (TTAB 1961).

6. See, e.g., Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (listing of third-party

marks downloaded from Ofﬁce database does not make registrations of record); Lebanon Seaboard Corp.

v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1829 n.8 (TTAB 2012) (summary of search results from

USPTO's electronic database is not an ofﬁcial record of the Ofﬁce); Calypso Technology Inc. v. Calypso

Capital Management LP, 100 USPQ2d 1213, 1217 (TTAB 2011) (summaries of search results for third-party

registrations are not ofﬁcial records and have not been considered); Jansen Enterprises, Inc. v. Rind, 85

USPQ2d 1104, 1110 (TTAB 2007) (third-party registrations mentioned in trial brief); Truescents, LLC v.

Ride Skin Care, LLC, 81 USPQ2d 1334, 1337 (TTAB 2006) (listing of applications and registrations obtained

from Ofﬁce’s electronic database); In re Dos Padres, Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998)

(listings from commercial trademark search reports); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532

n.3 (TTAB 1994) (search report from private company’s database); Riceland Foods Inc. v. Paciﬁc Eastern

Trading Corp., 26 USPQ2d 1883, 1885 (TTAB 1993) (trademark search report wherein registrations are

mentioned); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992) (trademark search reports

from private companies are neither printed publications nor ofﬁcial records); Kellogg Co. v. Pack'Em

Enterprises Inc., 14 USPQ2d 1545, 1549 (TTAB 1990) (search report), aff'd, 951 F.2d 330, 21 USPQ2d

1142 (Fed. Cir. 1991); Edison Brothers Stores, Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ

530, 532 (TTAB 1986) (reference to third-party registrations in a brief). See also National Fidelity Life

Insurance v. National Insurance Trust, 199 USPQ 691 (TTAB 1978); Wella Corp. v. California Concept

Corp., 192 USPQ 158 (TTAB 1976), rev'd on other grounds, 558 F.2d 1019, 194 USPQ 419 (CCPA 1977);

W. R. Grace & Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308 (TTAB 1976).

The Federal Circuit, in In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed. Cir. 2010),

exercised its discretion to take judicial notice of a third party’s registrations. Although the court took judicial

notice of a third-party's registrations in that case, as discussed above the Board does not take judicial notice

of either third-party registrations or a party’s own registration[s] insofar as the Trademark Rules of Practice

specify how to make such registrations of record in an inter partes proceeding.

7. See AMF Inc. v. American Leisure Products, Inc,, 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973)

(not evidence of what happens in the market place or consumer familiarity); FUJIFILM SonoSite, Inc. v.

Sonoscape Co., Ltd., 111 USPQ2d 1234, 1236 (TTAB 2014) (registration resulting from opposer’s unpleaded

application akin to third-party registration, and may be made of record through notice of reliance for purposes

other than the basis of the opposition, i.e., for “whatever probative value” it may have); Weider Publications,

LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1351 n.10 (TTAB 2014) (third-party registrations do

not constitute evidence of use, thus of limited probative value to show mark is weak), appeal dismissed per

stipulation, No. 14-1461 (Fed. Cir. Oct. 10, 2014); In re the Dot Communications Network LLC, 101

USPQ2d 1062, 1067 (TTAB 2011) (limited probative value in view of the current market conditions which

are very different from when registrations issued); Calypso Technology Inc. v. Calypso Capital Management

LP, 100 USPQ2d 1213, 1222 (TTAB 2011) (third-party registrations for same term are not evidence of use

in the marketplace); Nike Inc. v. Maher, 100 USPQ2d 1018, 1028 (TTAB 2011) (little probative value

because they tell nothing about whether the marks are being used or the manner of such use); Nike, Inc. v.

WNBA Enterprises, LLC, 85 USPQ2d 1187, 1200 (TTAB 2007) (not evidence of use); Sports Authority

Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1798 (TTAB 2001) (not evidence of use or that

700-80January 2017

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE§ 704.03(b)(1)(B)

consumers have been exposed to them); Red Carpet Corp. v. Johnstown American Enterprises, Inc., 7

USPQ2d 1404, 1406 (TTAB 1988) (not evidence of use to show public awareness of the marks).

See also Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992)

(may not be given any weight in determining strength of a mark); Seabrook Foods, Inc. v. Bar-Well Foods

Ltd., 568 F.2d 1342, 196 USPQ 289, 291 n.12 (CCPA 1977) (little evidentiary value in determining scope

of protection); Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588 (TTAB 1975) (little weight on likelihood

of confusion), aff’d, 534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976); Conde Nast Publications Inc. v.

Miss Quality, Inc., 507 F.2d 1404, 184 USPQ 422, 424-25 (CCPA 1975) (little weight on question of

likelihood of confusion); Spice Islands, Inc. v. Frank Tea and Spice Co., 505 F.2d 1293, 184 USPQ 35, 38

(CCPA 1974) (do not control determination of whether marks are so similar that they are likely to cause

confusion); Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ 151, 153 n.2 (TTAB 1983) (third-party

registration only establishes what appears on its face, that application was made claiming adoption and use

and that registration was granted), aff'd, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984).

Cf. In re Alpha Analytics Investment Group LLC, 62 USPQ2d 1852, 1856 (TTAB 2002) (registrations under

Trademark Act § 2(f) or on the Supplemental Register, although not conclusive evidence, may be probative

evidence of mere descriptiveness). Cf. also Calypso Technology Inc. v. Calypso Capital Management LP,

100 USPQ2d 1213, 1221 (TTAB 2011) (while third-party registrations based on use in commerce may

suggest listed goods and services are of the type which may emanate from a single source, third party

registrations based on international registrations are not evidence that the marks have been used in the United

States for the stated goods and services); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB

1988) (third-party registrations may have some probative value to the extent that they may serve to suggest

that goods or services are of a type which may emanate from the same source).

8. See Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588 (TTAB 1975), aff’d, 534 F.2d 915, 189 USPQ

693, 694-95 (CCPA 1976); Conde Nast Publications Inc. v. Miss Quality, Inc., 507 F.2d 1404, 184 USPQ

422, 425 (CCPA 1975). See also American Lebanese Syrian Associated Charities Inc. v. Child Health

Research Institute, 101 USPQ2d 1022, 1029 (TTAB 2011) (may indicate that a mark, or portion of a mark,

is descriptive or suggestive); Nike Inc. v. Maher, 100 USPQ2d 1018, 1028 (TTAB 2011) (to indicate a

commonly registered expression with a suggestive meaning); Productos Lacteos Tocumbo S.A. de C.V. v.

Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011) (probative of meaning of term, not

probative that term is commercially weak), on appeal, No. 1:11-cv-01623-RC (D.D.C.); Sports Authority

Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1798 (TTAB 2001) (that a term is adopted to convey

a particular suggestive meaning); General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1277 (TTAB

1992) (to show the sense in which the term is employed in the marketplace); United Foods Inc. v. J.R.

Simplot Co,, 4 USPQ2d 1172, 1174 (TTAB 1987) (to show ordinary usage of a term and descriptive or

suggestive signiﬁcance); Bottega Veneta, Inc. v. Volume Shoe Corp,, 226 USPQ 964, 968 (TTAB 1985)

(to show geographic signiﬁcance of terms).

9. See Allstate Insurance Co. v. DeLibro, 6 USPQ2d 1220, 1223 (TTAB 1988) (third-party state registrations

“are of absolutely no probative value” on the question of likelihood of confusion).

10. 37 CFR § 2.122(e).

11. See Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 397 n.11 (TTAB 1979) (specimens from

third-party registration ﬁles are not evidence of the fact that the specimens ﬁled in the underlying applications

or even with Trademark Act § 8 afﬁdavits are in use today or that such specimens have ever been used to

the extent that they have made an impression on the public).

January 2017700-81

704.03(b)(1)(B)

TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

704.03(b)(2) Application Not Subject of Proceeding

37 CFR § 2.122(e) Printed publications and ofﬁcial records.