The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
THIS ORDER IS
P.O. Box 1451
A PRECEDENT OF Alexandria, VA 22313-1451
THE TTAB General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
mbm
August 26, 2020
Opposition No. 91240829
STX Financing, LLC
v.
Stacey Michelle Terrazas
Mary Beth Myles, Interlocutory Attorney:
This opposition to Applicant’s BAD MOMS UNLIMITED and BAD MOMS BIBLE
marks now comes before the Board for consideration of Opposer’s motion (filed
February 11, 2020)1 to strike each of Applicant’s exhibits in her February 4, 2020
notice of reliance. The motion is fully briefed.2
I. Opposer’s Motion to Strike Applicant’s Notice of Reliance
Applicant’s notice of reliance consists of the following: (1) copies of third-party
registrations and applications obtained from the USPTO’s Trademark Electronic
Search System (“TESS”) database; (2) selected pages from Office Actions from the file
history of Opposer’s pleaded pending applications obtained from the Trademark
1 35 TTABVUE.
2 Applicant’s change of correspondence address, filed March 20, 2020, is noted. Board records
have been updated accordingly.
Opposition No. 91240829
Status and Document Retrieval (“TSDR”) database; (3) screenshots of various
websites; and (4) Opposer’s responses to Applicant’s First Set of Interrogatories.3
A. Exhibit A—Third-Party Registrations and Applications
Applicant identified and attached screenshots of third-party registrations and
applications obtained from the TESS database as Exhibit A to her notice of reliance.4
Copies of third-party applications or registrations are admissible under notice of
reliance as official records under Trademark Rule 2.122(e)(1), 37 C.F.R. § 2.122(e)(1).
See Weider Pubs., LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1350 (TTAB
2014) (copies of third-party applications are official records and may be submitted
under 37 C.F.R. § 2.122(e)); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d
1066, 1070 n.11 (TTAB 2011) (third-party registrations admissible under 37 C.F.R.
§ 2.122(e)); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(“TBMP”) §§ 704.03(b)(1)(B) (third-party registration) and 704.03(b)(2) (application
not subject of proceeding) (2020). Trademark Rule 2.122(e)(1) provides, in relevant
part, that the notice of reliance “be accompanied by the official record or a copy
thereof.”
Opposer argues that the TESS screenshots are not copies of the applications or
registrations themselves, but rather internet materials that must include the date
the material was accessed and printed and the source.5 The argument is without
3 34 TTABVUE.
4 34 TTABVUE 2-5, 12-39.
5 35 TTABVUE 2-3.
2
Opposition No. 91240829
basis. Trademark Rule 2.122(e) provides that “official records” may be introduced by
notice of reliance. USPTO official records, such as printouts of application or
registration information from TESS or TSDR, and the records thereof, fall within the
meaning of “official records.” 6 See Corporacion Habanos, S.A. v. Anncas, Inc., 88
USPQ2d 1785, 1788 (TTAB 2008). See also TBMP § 704.03(b)(1) and authorities cited
therein.
Inasmuch as TESS printouts of third-party applications and registrations are
admissible as official records under Trademark Rule 2.122(e)(1), there is no
requirement that the submission also meet the requirements for internet materials
under Trademark Rule 2.122(e)(2). It therefore was not necessary for Applicant to
provide the access date or URL for any of the third-party applications or registrations
in Exhibit A. Applicant clearly provided a “copy” of the records obtained from TESS,
which is all that is required.
Additionally, Opposer argues that Applicant failed to indicate the relevance of the
material being offered as required by Trademark Rule 2.122(g), 37 C.F.R. § 2.122(g).
Under Trademark Rule 2.122(g), a notice of reliance must indicate generally the
relevance of the evidence and associate it with one or more issues in the proceeding.
Specifically, the offering party must associate the materials with a particular element
of a claim or relevant fact. Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124
USPQ2d 1160, 1164 (TTAB 2017) (“offering party should associate the materials with
6 By contrast, a mere list
of third-party marks downloaded from Office database does not
make registrations or applications of record. See, e.g., Edom Labs. Inc. v. Lichter, 102
USPQ2d 1546, 1550 (TTAB 2012); TBMP § 704.03(b)(1)(B).
3
Opposition No. 91240829
a specific factor relevant to a specific and pleaded claim or defense, or a specific fact
relevant to determining a particular claim or defense… .”) (citing Safer, Inc. v. OMS
Invs., Inc., 94 USPQ2d 1031, 1039 (TTAB 2010) (“[I]t is not sufficient for the
propounding party to broadly state that the materials are being submitted to support
the claim that there is (or is not) a likelihood of confusion ….”)); FUJIFILM SonoSite,
Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1236 (TTAB 2014) (holding that notice
of reliance should associate materials with specific likelihood of confusion factor).
The Board finds that Applicant failed to comply with Trademark Rule 2.122(g)
because Applicant only stated broadly that the exhibit is offered “to show no
likelihood of confusion and/or dilution.” 7 Applicant, therefore, failed to associate the
exhibit with a specific fact or a particular element of the claim of likelihood of
confusion or dilution as required by Trademark Rule 2.122(g). Trademark Rule
2.122(g) provides that “[f]ailure 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.” 37 C.F.R.
§ 2.122(g).
Accordingly, Opposer’s motion to strike is granted with respect to Exhibit A, with
leave to cure, based on failure to identify the relevance with sufficient specificity.
Applicant is allowed until fifteen days from the date of this order in which to file
and serve an amended notice of reliance in compliance with Trademark Rule 2.122(g),
indicating the relevance of the evidence with sufficient specificity.
7 34 TTABVUE 2.
4
Opposition No. 91240829
B. Exhibit B—Office Actions
Applicant identified and submitted selected pages of Office Actions from the file
history of Opposer’s pleaded applications as Exhibit B of her notice of reliance.8
Opposer moves to strike Exhibit B on the ground that Applicant did not include the
entire Office Actions, but only attached screenshots of excerpts of them.9
The file history of an application, or a portion thereof, may be submitted under
notice of reliance as an official record under Trademark Rule 2.122(e)(1). See TBMP
§ 704.03(b)(2) and authorities cited therein. There is no requirement in Trademark
Rule 2.122(e)(1), that a party submit the entirety of the file history of a registration.
Cf. Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103 (TTAB 2007)
(portion of the file history of petitioner’s pleaded registration submitted);
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231 n.1 (TTAB 1992) (copy of drawing
from abandoned application admissible).
Opposer also identifies what appears to be typographical errors in Applicant’s
notice of reliance. Specifically, items 10-12 of Exhibit B are identified as pages from
the file history of “Serial No. 91250028,”10 which is not a valid application serial
number. In her response, Applicant explains that the number was provided in error
8 35 TTABVUE 5-6, 40-52.
9 34 TTABVUE 3-4. Opposer erroneously cites TBMP § 704.08(b) in support of its argument
that Applicant was required to submit complete copies of the Office Actions. TBMP
§ 704.08(b) discusses internet materials and is inapplicable here where the Office Actions are
submitted as official records in compliance with Trademark Rule 2.122(e)(1).
10 34 TTABVUE 6.
5
Opposition No. 91240829
and the correct serial number is 87562696.11 Notwithstanding the typographical error
in the notice of reliance, the correct serial number is apparent from a review of the
exhibit. Thus, we do not consider the typographical error to be a basis for refusing to
consider the evidence actually provided in the notice .12 Cf. Cadbury UK Ltd. v.
Meenaxi Enter., Inc., 115 USPQ2d 1404, 1408 (TTAB 2015) (“The Board expects that
when there is an obvious and inadvertent typographical error in any . . . filing—
particularly where, as here, the intended meaning was clear—the parties will not
require the Board’s intervention to correct the mistake.”).
In view of the foregoing, Opposer’s motion to strike is denied with respect to
Exhibit B.
C. Exhibits C and D—Internet Materials
Exhibits C and D to Applicant’s notice of reliance consist of screenshot excerpts of
webpages.13 Each exhibit clearly contains the URL for the specific webpage on the
face of the exhibit. None of the exhibits themselves indicate the date the webpages
were accessed or printed; however, in the pages initially identifying the exhibits, the
notice of reliance states that the webpages were accessed and printed on January 30,
2020.14 Opposer argues that internet materials must include the date of publication
11 37 TTABVUE 6.
12 In itsmotion to strike, Opposer also states that it was unable to identify the document
numbers Applicant listed in her notice of reliance. 35 TTABVUE 4. In her response to the
motion, Applicant explained that the document numbers refer to the Bates stamp numbers
affixed to the documents produced during discovery. 37 TTABVUE 6.
13 34 TTABVUE 6-9, 53-65; 9-10, 66-68.
14 34 TTABVUE 6, 9.
6
Opposition No. 91240829
or access on their face to be admissible under a notice of reliance.15 That is not the
case.
The Board held in Safer, 94 USPQ2d at 1039, that “if a document obtained from
the Internet identifies its date of publication or date that it was accessed and printed,
and its source (e.g., the URL), it may be admitted into evidence pursuant to a notice
of reliance in the same manner as a printed publication in general circulation in
accordance with Trademark Rule 2.122(e).” See also Calypso Tech., Inc. v. Calypso
Capital Mgmt., LP, 100 USPQ2d 1213, 1218 (TTAB 2011) (noting that the document
itself must identify the source and the date of access or printing). But see Rocket
Trademarks Pty. Ltd., 98 USPQ2d at 1071 (considering exhibits submitted under
notice of reliance where “[t]he URL or internet address of the documents is visible on
the documents and the date the documents were accessed is either provided in the
notice of reliance or on the documents.”).
Effective January 14, 2017, Trademark Rule 2.122(e) was amended to codify the
Board’s holdings in decisions addressing the subject of admissibility of internet
materials, such as Safer and Rocket Trademarks. As amended, Trademark Rule
2.122(e)(2) provides:
Internet materials may be admitted into evidence under a notice of reliance in
accordance with paragraph (g) of this section, in the same manner as a printed
publication in general circulation, so long as the date the internet materials
were accessed and their source (e.g., URL) are provided.
37 C.F.R. § 2.122(e)(2).
15 35 TTABVUE 4-5.
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Opposition No. 91240829
The amended rule states that internet materials may be admitted under notice of
reliance so long as the access date and source “are provided.” Id. It does not state that
the material itself must include either the date of access or the source printed on its
face. If the access date and source are identified clearly in the notice of reliance, the
webpages are in compliance with Trademark Rule 2.122(e)(2). Cf. Rocket Trademarks
Pty. Ltd., 98 USPQ2d at 1071 (webpages also admissible as exhibits to testimonial
deposition, even where deponent had no personal knowledge of ac cess date or source,
so long as it is possible to determine the URL and date of access); In re Mueller Sports
Med., Inc., 126 USPQ2d 1584, 1586 (TTAB 2018) (citing In re Max Capital Grp. Ltd.,
93 USPQ2d 1243, 1246 n.6 (TTAB 2010)) (noting that internet materials may be
accepted where the access date and URL are provided on the webpage itself or
otherwise provided in an office action or an applicant’s response to an office action).
Opposer also moves to strike Exhibits C and D on the ground that Applicant did
not submit complete copies of the websites, only screenshots of portions of the
websites.16 However, Trademark Rule 2.122(e)(2) provides, in relevant part, that
internet materials may be submitted under notice of reliance “in the same manner as
a printed publication in general circulation….” Additionally, Trademark Rule
2.122(e)(1) provides that a party may submit a “printed publication or a copy of the
relevant portion thereof” under notice of reliance. 37 C.F.R. § 2.122(e)(1)
(emphasis added). Trademark Rule 2.122(e) therefore permits submission of excerpts
of internet materials. Cf. Bd. of Trs. of the Univ. of Ala. v. Pitts, 107 USPQ2d 2001,
16 35 TTABVUE 4-5.
8
Opposition No. 91240829
2006 (TTAB 2013) (“Applicants’ third-party evidence consisting of website excerpts
… is clearly admissible.”) (vacated pursuant to settlement on appeal).
Opposer argues that TBMP § 704.08(b) requires that the submitting party ensure
the evidence submitted is complete. The TBMP is a resource and guide, but does not
modify, amend, or serve as a substitute for any existing statutes, rules, or decisional
law and is not binding upon the Board. See Introduction to TBMP. Moreover, Opposer
misconstrues TBMP § 704.08(b) and the authorities cited therein, which state that it
is the submitting party’s responsibility to ensure that the entire exhibit is uploaded,
not that each exhibit must contain a complete copy of the attached publication or
webpage. Cf. Int’l Assn. of Fire Chiefs v. H. Marvin Ginn Corp., 225 USPQ 940, 942
n.6 (TTAB 1985) (accepting excerpts of journal articles), rev’d on other grounds, 782
F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
In view of the foregoing, Opposer’s motion to strike is denied with respect to
Exhibits C and D.
D. Exhibit E—Opposer’s Responses to Applicant’s First Set of
Interrogatories
Applicant identified and attached copies of Opposer’s responses to Applicant’s
First Set of Interrogatories as Exhibit E to its notice of reliance. 17 Opposer moves to
strike Applicant’s Exhibit E on the ground that Applicant failed to indicate the
general relevance of the interrogatory answers, instead asserting broadly that the
interrogatories were relevant “to show no likelihood of confusion and/or dilution.” As
is the case with Exhibit A discussed above, Applicant failed to associate the exhibit
17 34 TTABVUE 10, 69-82.
9
Opposition No. 91240829
with a specific fact or a particular element of the claim of likelihood of confusion or
dilution as required by Trademark Rule 2.122(g). See Barclays Capital Inc., 124
USPQ2d at 1164.
However, as noted above, failure to identify the relevance of an exhibit to a notice
of reliance is a curable defect. Accordingly, Opposer’s motion to strike is granted
with respect to Exhibit E, with leave to cure, based on failure to identify the relevance
with sufficient specificity. Applicant is allowed until fifteen days from the date of
this order in which to file and serve an amended notice of reliance in compliance with
Trademark Rule 2.122(g), indicating the relevance of the evidence with sufficient
specificity.
II. Schedule
Proceedings are resumed. Applicant is allowed until fifteen days from the date
of this order in which to file and serve an amended notice of reliance identifying with
specificity the relevance of Exhibits A and E. Applicant should not resubmit its
exhibits with the revised notice of reliance. Opposer’s rebuttal trial period, beginning
with its deadline for pretrial disclosures, and all subsequent dates are reset as
follows:
Plaintiff's Rebuttal Disclosures Due 9/25/2020
Plaintiff's 15-day Rebuttal Period Ends 10/25/2020
Plaintiff's Opening Brief Due 12/24/2020
Defendant's Brief Due 1/23/2021
Plaintiff's Reply Brief Due 2/7/2021
Request for Oral Hearing (optional) Due 2/17/2021
10
Opposition No. 91240829
Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125, 37 C.F.R. §§ 2.121-2.125. These include
pretrial disclosures, the manner and timing of taking testimony, matters in evidence,
and the procedures for submitting and serving testimony and other evidence,
including affidavits, declarations, deposition transcripts and stipulated evide nce.
Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and (b),
37 C.F.R. § 2.128(a) and (b). Oral argument at final hearing will be scheduled only
upon the timely submission of a separate notice as allowed by Trademark Rule
2.129(a), 37 C.F.R. § 2.129(a).
TIPS FOR FILING EVIDENCE, TESTIMONY, OR LARGE DOCUMENTS
The Board requires each submission to meet the following criteria before it will be
considered: 1) pages must be legible and easily read on a computer screen; 2) page
orientation should be determined by its ease of viewing relevant text or evidence, for
example, there should be no sideways or upside-down pages; 3) pages must appear in
their proper order; 4) depositions and exhibits must be clearly labeled and numbered
– use separator pages between exhibits and clearly label each exhibit using sequential
letters or numbers; and 5) the entire submission should be text-searchable.
Additionally, submissions must be compliant with Trademark Rules 2.119 and 2.126.
Submissions failing to meet all of the criteria above may require re-filing. Note:
11
Opposition No. 91240829
Parties are strongly encouraged to check the entire document before filing. 18 The
Board will not extend or reset proceeding schedule dates or other deadlines to allow
time to re-file documents. For more tips and helpful filing information, please visit
the ESTTA help webpage.
18 To facilitate accuracy, ESTTA provides thumbnails to view each page before submitting.
12