In a recent precedential Trademark Trial and Appeal Board ("Board") decision, the Board expanded the types of documents that are admissible under a Notice of Reliance to include published materials retrieved from the Internet. The Board’s Safer decision also touched on the weight afforded to incontestable trademark registrations and on an Opposer’s ability to assert a registration not originally pled in the Notice of Opposition.

Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176446, 94 USPQ2d 1031 (TTAB 2010), involved a Notice of Opposition filed by Safer against OMS Investments’ application to register mark DEER-B-GON, alleging a likelihood of confusion with Safer’s prior registrations for DEER AWAY and DEER AWAY PROFESSIONAL marks, all for deer repellent. During its testimony period Safer obtained on the Internet and proffered as evidence, a collection of publications from various federal and state agencies, universities and certain private entities. OMS objected to the admissibility of these documents on the ground that they: (i) were not publicly available printed publications in accordance with Trademark Rule 2.122(e); and (ii) were retrieved from the Internet and as such were not selfauthenticating. As such, OMS argued that these materials were not admissible merely by Notice of Reliance. Rather, OMS took the position that for the documents to be admissible under the T.T.A.B. Rules of Practice, Safer was required to provide testimony authenticating the proffered documents.

The Board embarked on an analysis of Trademark Rule 2.122(e) (37 CFR § 2.122(e)), which in part reads: “Printed publications, such as books and periodicals available to the general public in libraries or of general circulation among members of the public or segment of the public which is relevant under an issue in a proceeding, and official records ... may be introduced in evidence by filing a notice of reliance on the material being offered. The notice shall specify the printed publication (including information sufficient to identify the source and the date of the publication).” Ultimately, the Board recognized that in applying the Trademark rules it has become necessary to adapt to changes in technology and specifically the growing trend to maintain and circulate publications “on line” only.

Given the fact that many “publications” exist solely on line and not in printed form, the Board concluded that a document retrieved from the Internet may be admitted into evidence under Rule 2.122(e), provided “the document . . . identifies its date of publication or date that it was accessed and printed, and its source (e.g., the URL).”

With this decision, the Board expanded “the types of documents that may be introduced by notice of reliance to include not only printed publications in general circulation, but also documents such as websites, advertising, business publications, annual reports, studies or reports prepared for or by a party or nonparty, if, and only if they can be obtained through the Internet as publicly available documents.”

Although the Safer ruling significantly “liberalizes” document introduction practice under Trademark Rule 2.122(e), the requirement that the propounding party “indicate generally the relevance of the material being offered” -- whether it be an Internet-only article or a traditional printed publication -- remains unchanged. Nonetheless, the Safer ruling's practical implications are undeniable, as it may save trademark attorneys from authenticating Internet documents either by declarations or witness testimony.

In addition to considering the document authentication issue, in reaching its conclusion that OMS Investment’s DEER-B-GONE was not likely to give rise to confusion in light of Safer’s DEER AWAY and DEER AWAY PROFESSIONAL marks and thus dismissing the opposition, the Board also addressed Safer's argument that its incontestable registrations for its pled marks constituted evidence of the strength of those marks. The Board pointed out that the appellate courts were split as to the effect of incontestability on the strength of a registered mark and that neither the Federal Circuit nor the Court of Customs and Patent Appeals (“CCPA”) had expressly addressed the issue. However, the Board noted that the CCPA had recognized that “trademark rights are not static and that the strength of a mark may change over time.” Additionally, the Board reflected that it had previously held that “statutory presumptions do not affect the likelihood of confusion analysis.” In view of this, the Board concluded that the mere fact that a registration is incontestable “does not dictate that the mark is ‘strong’ for purposes of determining likelihood of confusion.”

Also of note in the Safer decision was the Board’s guidance on the issue of whether a registration may be relied upon by an Opposer even if such registration was not pled in the Notice of Opposition (or a subsequent amendment thereto). In Safer’s Notice of Opposition it had claimed ownership of its federal registrations for DEER AWAY and DEER AWAY PROFESSIONAL, but elected not to plead ownership of another registration for DEER-OFF. Rather, Safer first asserted this registration in connection with its rebuttal Notice of Reliance during the Trial Period after the Applicant made the registration “of record” during discovery for the purpose of establishing that Safer had previously disclaimed the word “deer”. Arguing that the registration was part of the case and that Applicant was well aware of it, the Opposer, in its trial brief, attempted to rely upon the registration as additional support for its likelihood of confusion claim. Applicant OMS objected.

The Board sided with Applicant, concluding that because Safer had not asserted ownership of the DEER-OFF registration (despite various opportunities to do so), doing so for the first time at trial would be too prejudicial to Applicant. While Rule 15(b) of the Federal Rules of Civil Procedure generally permits the pleadings to be deemed amended to conform to the evidence presented in the case, such an amendment can only occur where the non-offering party is fairly apprised of the purpose for which the evidence is being offered, and does not object to that evidence. The Board concluded that Safer’s failure to assert the DEER-OFF registration for purposes of supporting its likelihood of confusion case in a timely manner was unduly prejudicial to Applicant and accordingly limited the admissibility of the registration. Thus, while Applicant was permitted to rely on the registration to show that the term “Deer” had previously been disclaimed by Safer as descriptive, Safer was barred from relying on the registration in support of its likelihood of confusion case. Clearly, the import of this aspect of Safer is that an Opposer should make every effort to identify, early in the opposition process, the registrations upon which it intends to rely. If a particular registration is not asserted in the initial pleading, then the pleading needs to be amended or, at a minimum, the Applicant needs to be apprised of the registration -- and the Opposer’s intentions for it -- early on in the proceeding.