Evidentiary Issues at the TTAB: Examination Guides, Generic Marks, Third-Party Registrations, Consumer Surveys

Description

In 2020, the USPTO updated the Trademark Manual of Examining Procedure by issuing three Examination Guides that provide insights on the USPTO's approach to various evidentiary issues. Among other topics, that guidance addresses the issue of so-called generic.com marks following the Supreme Court's decision in Booking.com and how trademark applicants can establish acquired distinctiveness, including through the use of consumer surveys. That issuance of the examination guidelines follows the Trademark Trial and Appeal Board's 2017 rules package, which the Board has now had the opportunity to clarify through case law.

Listen as our authoritative panel of IP attorneys examines evidentiary issues associated with the prosecution of applications and with ex parte and inter partes litigation before the TTAB. The panel will discuss the new Examination Guides, particularly as they address claimed generic.com marks, evidentiary issues related to third-party registrations, and consumer surveys. It also will address the scope and timing of discovery and potential issues associated with:

• the proper role of notices of reliance;
• cross-examination of witnesses testifying by declaration;
• the admissibility and significance of Wayback Machine search results; and
• the introduction of website captures.

Takeaways will include the best practices counsel should employ when submitting or challenging evidence and testimony, as well as lessons learned from recent case law.