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In re I-Coat: Internet Evidence in Ex Parte Proceedings

June 18, 2018News & Recent Developments

Less than two weeks ago, the Trademark Trial and Appeal Board (“TTAB”) issued its precedential decision in In re I-Coat Company, LLC. The case involved I-Coat’s appeal from the U.S. Patent and Trademark Office’s (“USPTO”) refusal to register its three trademark applications for INDIGO for corrective lenses based on a likelihood of confusion with Schwabe & Baer’s registered INDIGO and INDIGOSNOW trademarks for glasses and ski goggles. While the TTAB affirmed the USPTO’s § 2(d) likelihood of confusion refusal, the decision is more important because the TTAB took the time to clarify the requirements for introducing and relying on Internet evidence during ex parte proceedings before the USPTO.

Distinguishing Ex Parte Proceedings From Inter Partes Proceedings

Before discussing the I-Coat case, it’s important to point out that the discussion of Internet evidence in I-Coat is in the context of ex parte proceedings before the USPTO and TTAB. Basically, this means (1) the trademark application process with the examining attorney (i.e., trademark prosecution) and (2) an appeal from an examining attorney’s final refusal to register a trademark application to the TTAB, which is the administrative board at the USPTO that hears appeals.

In contrast to ex parte proceedings, inter partes proceedings refers to adversary proceedings between two parties. Essentially, this refers to trademark opposition proceedings and trademark cancellation proceedings, both of which are also heard by the TTAB. However, the standards for relying on Internet evidence in inter partes proceedings is different and more stringent than in ex parte proceedings. Therefore, the requirements set forth in I-Coat should not be relied on for inter partes proceedings.

You Can Rely on Internet Evidence

The rules are clear that applicants can rely on Internet evidence during both the trademark prosecution process, as well as in an ex parte appeal from a final refusal of a trademark application.

With regard to the trademark application process, § 710.01(b) of the Trademark Manual of Examining Procedure (“TMEP”) states that Internet articles and information are admissible as evidence of information available to the general public, of consumer perception, and of the way in which a term is used by the public. Of course, just because an applicant can admit Internet evidence, it does not mean that it will be given much weight or have probative value.

Likewise, with regard to an ex parte appeal, § 1208.03 of the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) states that Internet articles and information are admissible as evidence of definitions, public exposure, translations, products and goods, customers, trade channels, etc. However, such evidence should be made of record during the prosecution process prior to appeal.

The Full URL and Date Are Required

Regardless of whether the Internet evidence is being considered by an examining attorney or the TTAB, the basic requirements for admissibility are the same. Articles or materials that are printed from the Internet “must include a date and source/URL” to ensure that the information being presented can be verified. See In re I-Coat, at 5. Otherwise, “the evidence lacks authenticity and cannot be readily verified.” Id. at 6.

The Last Word

The two requirements of (1) a date and (2) a url are incredibly simple to satisfy. When you are printing a webpage, simply make sure the settings in the print dialogue box have “headers and footers” checked, which should put the date and url on the printout (whether you are printing in hard copy or to pdf). It’s that simple - check a box.

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