The process of submitting evidence in proceedings before the Trademark Trial and Appeal Board (TTAB) is governed by a structured set of rules. Participants must adhere to specific guidelines to ensure the proper inclusion of evidence, which plays a critical role in the outcome of cases. Understanding the rules related to TTAB evidence submission is essential for anyone involved in a trademark dispute.
Methods of Submitting Evidence in TTAB Cases
There are two primary ways to introduce evidence in a TTAB proceeding: (1) testimony depositions conducted during the testimony period and (2) the submission of evidence through a notice of reliance in TTAB cases. The TTAB follows stringent evidentiary rules, including:
- The Trademark Rules of Practice (outlined in Title 37 of the Code of Federal Regulations)
- The Federal Rules of Evidence
- Relevant provisions from the Federal Rules of Civil Procedure
Following the completion of the discovery phase, testimony periods are assigned to each party. These periods are crucial, as they provide the opportunity to introduce relevant evidence to support claims or defenses.
Adjusting Testimony Periods
Each party is allocated a specific period for taking testimony. If a party wishes to extend or modify these periods, modifications must either be agreed upon by both parties and approved by the TTAB or submitted through a formal motion. If a motion for rescheduling is filed, it is advisable to request a suspension of the proceeding until a ruling is made. If the motion is denied, deadlines remain unchanged. In cases where both parties mutually agree to new dates for pretrial disclosures or testimony periods, a formal stipulation must be filed with the TTAB, signed by all parties, and appropriately served. The TTAB may grant changes in scheduling for valid reasons, such as ongoing settlement discussions or unresolved discovery disputes.
Testimony and Rebuttal Periods
The TTAB assigns a 30-day testimony period to both the plaintiff and defendant. Additionally, the plaintiff receives a 15-day rebuttal testimony period. During this time, the plaintiff may introduce additional testimony and submit a notice of reliance to challenge the defendant’s evidence. However, rebuttal evidence must specifically counter the defendant’s submissions and cannot merely reinforce the plaintiff’s initial arguments.
A key distinction in TTAB proceedings is the difference between depositions taken during discovery and those conducted in the testimony period. While discovery depositions may be partially submitted through a notice of reliance, testimony depositions, which occur during the testimony period, must be filed in their entirety along with any associated exhibits.
The Role of the Notice of Reliance in TTAB Cases
A notice of reliance is a critical mechanism for introducing specific forms of evidence into TTAB proceedings. When filing a notice of reliance, the submitting party must clearly identify the evidence and explain its relevance to the case. Acceptable evidence under a notice of reliance includes:
- Discovery depositions
- Discovery responses from an opposing party (such as interrogatory answers and admissions)
- Trademark registrations
- Printed publications
- Official records
It is important to note that documents produced in response to a document production request cannot be submitted under a notice of reliance unless they qualify as printed publications or official records. Printed publications encompass materials such as magazine articles, newspaper reports, and dictionary definitions that are widely accessible to the public, including digital versions available on the internet. Internet printouts must visibly display the publication date or the date of access and include the URL.
Excluded Evidence and Alternative Submission Methods
Certain documents obtained during discovery, such as business correspondence, marketing strategies, product literature, and brochures, are generally not admissible through a notice of reliance unless they are publicly available online. Instead, these documents must be introduced through one of the following methods:
- Marking them as exhibits during a discovery deposition
- Introducing them at a testimony deposition
- Submitting them via a request for admission that verifies the authenticity of the document
- Utilizing interrogatory responses that reference and incorporate the document as part of the answer
If an interrogatory response includes the referenced document, both the response and the document may be filed under a notice of reliance.
Internet Evidence and Its Limitations
Internet-based materials may be included in a TTAB case using a notice of reliance, but their admissibility is restricted. Without accompanying testimony, internet evidence is only valid for demonstrating what appears on the face of the document rather than proving the truth of its contents. For instance, internet materials can be used to illustrate how a specific term is commonly used in a descriptive or generic context.
To enhance the credibility of internet evidence, it is beneficial to provide testimony from a knowledgeable witness who can discuss consumer engagement with the website, including visitor statistics and user interactions. This approach strengthens the probative value of web-based evidence.
The Use of Third-Party Trademark Registrations
Third-party trademark registrations can be submitted under a notice of reliance because they qualify as official records. These registrations are often introduced to argue that a particular mark is weak and thus entitled to a narrow scope of protection. When referencing third-party marks, it is crucial to highlight their relevance to the case at hand.
Key Considerations for TTAB Evidence Submission
Successfully navigating TTAB evidence submission requires meticulous adherence to the rules governing trial proceedings. Here are some essential considerations:
- Timeliness: Ensure that all evidence is submitted within the designated testimony period or rebuttal phase.
- Compliance with TTAB Rules: Failure to follow proper procedures may result in evidence being excluded from the record.
- Strategic Use of Notices of Reliance: Properly filed notices of reliance can significantly strengthen a case by introducing key documents and discovery responses.
- Maximizing the Value of Internet Evidence: Supporting web-based evidence with witness testimony can enhance its credibility and relevance.
- Understanding the Role of Third-Party Registrations: Demonstrating the existence of similar marks can help establish that a trademark is weak and entitled to limited protection.
Conclusion
TTAB proceedings involve stringent evidentiary rules, and understanding the nuances of TTAB evidence submission is vital for success. Whether through testimony depositions or a notice of reliance in TTAB cases, parties must carefully adhere to procedural requirements to ensure their evidence is admissible. By leveraging the appropriate rules and best practices, parties can effectively present their case before the TTAB. If you require further guidance on Trademark Trial and Appeal Board rules or need assistance with evidence submission, consulting an experienced Trademark Attorney is highly recommended.