On March 28, 2007 Safer, Inc., a Pennsylvania based pest-control company, filed a Notice of Opposition against OMS Investments, Inc., a subsidiary of The Scotts Miracle-Gro Company, with respect to its application for the mark DEER-B-GON, alleging a likelihood of confusion with its prior registrations for the DEER AWAY and DEER AWAY PROFESSIONAL marks. Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445, 94 USPQ2d 1031 (TTAB 2010). The marks covered identical goods, namely, deer repellent.

Critical to Safer's position were its arguments that (1) its DEER-OFF registration (which it failed to plead in its Notice of Opposition) had become admissible by implied consent, (2) the statutory presumption of the incontestable status of its marks constituted evidence of the strength of the marks, and (3) documents obtained from the Internet were admissible as self-authenticating printed publications. In a precedential decision dismissing the Opposition, the Trademark Trial and Appeal Board ("TTAB") of the U.S. Patent and Trademark Office addressed all three issues and, in doing so, clarified its holding with respect to the first two issues and expanded the types of documents that may be introduced as self-authenticating printed publications.

Admissibility of DEER-OFF Registration

Safer is the owner of trademark registrations for DEER AWAY, DEER AWAY PROFESSIONAL and DEER-OFF. Although Safer claimed ownership of its DEER AWAY and DEER AWAY PROFESSIONAL marks in its Notice of Opposition, it neglected to claim ownership of its DEER-OFF mark. Rather, the first notice of ownership was during the discovery period when Safer included its DEER-OFF registration in response to an interrogatory request and produced documents relating to ownership of the mark. OMS submitted a copy of the registration in its Notice of Reliance for the limited purpose of establishing that Safer had previously disclaimed the word “DEER.” Safer alleged that inclusion in OMS’ brief amounted to an implied consent to trial of the issue, and, accordingly, included evidence of its ownership in its Notice of Reliance and trial brief. OMS objected to Safer’s reliance on the DEER OFF mark and registration, because it was not included in Safer's initial Notice of Opposition. The TTAB agreed, stating that Safer had not asserted ownership of the DEER-OFF registration. Moreover, the TTAB noted that Safer had numerous opportunities to amend its Notice of Opposition and to notify OMS that it intended to rely on this registration, but did not do so until it filed its rebuttal Notice of Reliance, which the TTAB concluded was too late and would unfairly prejudice OMS if included in the likelihood of confusion analysis. As such, the TTAB limited admissibility of the DEER OFF registration to evidence of Safer’s disclaimer of the term “DEER” and refused to include it for likelihood of confusion purposes.

Incontestable Status

Safer also argued that the incontestability of its registrations for DEER AWAY and DEER AWAY PROFESSIONAL provided statutory evidence of the strength of its marks, while OMS responded that "incontestable status does not make a weak mark strong." The TTAB first noted that appellate courts are split on this issue and that neither the Federal Circuit nor the Court of Customs and Patent Appeals ("CCPA") had expressly addressed this issue, although the CCPA had recognized that the strength of a mark can change over time and that an inherently weak mark can become a strong mark through extensive promotion. Moreover, the TTAB noted that it had previously held that statutory presumptions do not affect the likelihood of confusion analysis. As such, the TTAB determined that the incontestability of Safer's marks was not determinative of the relative strength of its marks.

Admissibility of Documents Obtained from Internet

As part of its Notice of Reliance, Safer submitted numerous publications from federal and state agencies, universities and various other private entities, all of which had been obtained from the Internet. OMS objected to the admissibility of a number of these documents on the ground that they had been obtained from the Internet, and, accordingly, did not qualify under current rules as self-authenticating "publicly available printed publications," permitted for inclusion under a Notice of Reliance. The TTAB noted, however, that as a general rule, a hard copy document that identifies its publication date and source may be introduced into evidence. Further, in applying USPTO rules, the TTAB explained that courts must recognize and adapt to changes in technology, particularly the Internet.

As to the question of whether it should allow the introduction of Internet materials, the TTAB cited its decision to admit newswire stories downloaded from the Internet to demonstrate the usage of certain terms. The TTAB also noted that the way in which publications, including government documents, are maintained and circulated has changed dramatically in the past decade, such that many records -- including new trademark files -- are now only retained electronically. Based on this technological evolution, the TTAB determined that where a document obtained from the Internet (1) identifies the date of publication or date that it was accessed and printed, (2) includes its source, and (3) continues to be available at that site, it is admissible into evidence through a Notice of Reliance, just as a printed publication in general circulation would be.

In so holding, the TTAB commented that it was "liberalizing the practice" of documents that may be introduced into evidence to include not only printed publications in general circulation, but documents such as websites, advertising, business publications and annual reports, as well as studies or reports prepared by or for either party or a non-party, if they can be obtained through the Internet as publicly-available documents. The TTAB also noted that a webpage printout may have more limitations as to its probative value than traditional publications and that a party can increase the weight of the evidence through testimony and the frequency a particular website is viewed. In addition, because of the increased opportunities for abuse, a propounding party must always indicate the relevance of such materials and associate the materials with the relevant likelihood of confusion factor or particular issue, so that the adverse party will be properly advised of the evidence it will need to rebut. In this case, the TTAB admitted certain documents Safer had retrieved from the Internet, but did not admit those where there was no date or URL on the document.

Although the TTAB expanded the standard for admission of Internet documents, it cautioned that even if a party submits a proper Notice of Reliance setting forth the relevance of the materials, they may still be objectionable as cumulative and may have little probative value. Indeed, despite the Board’s acceptance of Safer’s Internet documents, the TTAB adopted OMS’ arguments that they held little weight to establish the fame of Safer’s marks in the relevant marketplace and dismissed the opposition in favor of OMS.

*Applicant OMS Investments, Inc., was represented by Manatt, Phelps & Phillips, Palo Alto, Calif. Lewis and Roca LLP attorney, Christine Klenk, represented the Applicant in the TTAB proceeding while she was employed as an associate at Manatt, Phelps & Phillips.