Basic TTAB Appeal Tip: cannot include new evidence with Appeal Brief

Appeals at the USPTO have their own set of rules. The Trademark Trial and Appeal Board, or TTAB, rules are set forth in the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP). A fundamental rule of Ex Parte appeals is that no new evidence can be introduced during the appeal. (It is possible, however, to request a remand to introduce evidence.)

A recent appellant, Playboy Enterprises International, Inc., and its counsel learned this lesson the hard way. Playboy lost an appeal of a refusal to register the CENTERFOLD mark for online services. A likelihood of confusion under Trademark Act Section 2(d) was found with the registered mark for SWIMSUIT CENTERFOLD for use in connection with ‘entertainment services, namely, ongoing reality based television series; providing entertainment information concerning television program via global computer network.’

Applicant attempted to introduce new evidence with its appeal.

Attached as exhibits with its appeal brief, Applicant submitted the following materials for the first time: Internet printouts containing the definition of “swimsuit”; printouts from “Playboy” websites, a “Swimsuit Centerfold” website, and online articles regarding Applicant and its magazine; and copies of four (4) third-party registrations along with copies of the following registrations owned by Applicant — Reg. Nos. 2275173 (CENTERFOLD); 3934718 (VIDEO CENTERFOLD); 3416873 (PLAYBOY CENTERFOLD); 2356709 (CELEBRITY CENTERFOLD); 2322825 (PLAYBOY CENTERFOLDS); 2260234 (PLAYBOY CENTERFOLD). All of Applicant’s registrations, except for the last, were previously identified in Applicant’s claim of acquired distinctiveness. The Examining Attorney objects to the Applicant’s submission of evidence with its brief on the ground that the materials were not previously submitted and thus are untimely. The objection is well taken. Evidence should not be filed with the Board after the filing of a notice of appeal. If the appellant or the examining attorney desires to introduce additional evidence after an appeal is filed, the appellant or the examining attorney should submit a request to the Board to suspend the appeal and to remand the application for further examination.” Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); see also Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 1207.01 (June 2017). Accordingly, the materials attached to Applicant’s brief that were not previously submitted are not given consideration.

See full opinion at  page 5: In Re Playboy Enterprises Int’l, Inc. (TTAB 2018), Serial No. 86943084 [not precedential].

The Board refused to consider the evidence of the third party registrations. Playboy lost the appeal. It is not clear whether the evidence would have overcome the refusal – but  note that the TTAB often, when it rejects evidence but finds it would not have altered the outcome anyways, indicates as much in its opinion. Here, no such comment was included with the opinion.

Applicant also ran afoul of the evidence procedures by include web page addresses and attempting to rely on information within the pages, without properly submitting the pages themselves. See fn 10.  Providing only a web address to Internet materials is insufficient to make the associated webpages of record. TMEP §710.01(b).

As in all trademark related matters, the details of the rules and procedures are critical. A failure to comply with them could affect the outcome of an application, appeal, or dispute. Another reason that experienced counsel is incredibly valuable. 

For more valuable TTAB procedure and tips, see ABA publication, A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice. The book covers the entire TTAB Opposition and Cancellation process, as well as Ex Parte Appeals, and is a true practitioner’s guide to the rules and procedures of the TTAB. (Full disclosure, I contributed a chapter to the book.)