Using Internet Evidence in Trademark Law: Key Considerations for TTAB Trademark Cases and Trademark Search Evidence

Understanding the Role of Internet Evidence in Trademark Law

In the digital age, the use of Internet evidence in trademark law has become increasingly common. Trademark applicants and legal practitioners often rely on online sources to support their claims in trademark prosecutions and proceedings. The United States Patent and Trademark Office (USPTO) and the Trademark Trial and Appeal Board (TTAB) consider online materials when assessing how a term is used in commerce, evaluating brand distinctiveness, and determining the strength of a mark. However, the credibility and weight assigned to Internet evidence vary based on the source, accuracy, and context of the material presented.

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The Admissibility of Internet Evidence in TTAB Trademark Cases

In TTAB trademark cases, evidence retrieved from the Internet is frequently submitted to demonstrate common usage of a term, market conditions, or consumer perception. While Internet-based materials are admissible, their evidentiary value is subject to scrutiny. TTAB and the USPTO generally require that the source, date, and context of the evidence be clearly presented.

For instance, if an Examining Attorney submits an excerpt from a website as evidence, they must include the complete URL, a timestamp indicating when the content was accessed, and a clear display of the relevant content. A failure to provide these details may weaken the credibility of the submission.

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Evaluating the Weight of Internet Evidence

Not all Internet evidence carries the same weight in trademark matters. The TTAB considers various factors when determining how much reliance to place on online materials, including:

1. Source Credibility: Information from official business websites, industry reports, or recognized publications tends to be more persuasive than content from forums, personal blogs, or unverified sources.
2. Context of Use: A list of search engine results alone is insufficient as evidence unless it is accompanied by actual webpage content that shows how the term is being used in context.
3. Reliability of the Platform: Some websites, such as Wikipedia, can be edited by anyone, making them less reliable compared to authoritative sources like government databases or academic publications.

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The Limitations of Search Engine Results in Trademark Search Evidence

One common mistake made by trademark applicants is assuming that a Google search can serve as conclusive trademark search evidence. While search engine results may indicate the frequency of a term’s appearance, they do not necessarily show how the term is being used in commercial settings.

The Federal Circuit addressed this issue in Bayer Aktiengesellschaft v. Belmora LLC, 488 F.3d 960, where it ruled that Google search results alone held little probative value in determining the public perception of the term “ASPIRINA.” The case highlighted the importance of providing full-context evidence rather than relying on unverified search listings.

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Wikipedia and Other Collaborative Sources: Are They Reliable?

Wikipedia and other user-generated platforms pose a unique challenge when submitted as Internet evidence in trademark law cases. The USPTO and TTAB acknowledge that while these sources contain valuable information, their collaborative nature makes them susceptible to manipulation and inaccuracies.

Due to these concerns, TTAB does not take judicial notice of Wikipedia entries, even though it does accept dictionary definitions and encyclopedia references from more traditional sources. In In re Steven Madden Ltd., Serial No. 85313681 (2013), the Board ruled that Wikipedia evidence could not be given automatic judicial recognition, as its contents may be subject to change at any moment. However, applicants may still use Wikipedia entries in conjunction with corroborating evidence from more authoritative sources.

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The Role of an Applicant’s Website in Trademark Examination

Examining Attorneys frequently review an applicant’s official website as part of the trademark evaluation process. This applies even if the applicant has not explicitly included the website URL in the application. An applicant’s website may provide insight into how a trademark is being used in commerce and whether the mark is being applied in a manner consistent with its claimed goods and services.

Moreover, even if an applicant is filing under an intent-to-use basis, TTAB may still consider their website when assessing the viability of the mark. In In re Promo Ink, U.S.P.Q.2d 1301 (2006), the Board held that an applicant’s website could serve as relevant evidence even before the mark was formally registered and in use.

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Best Practices for Using Internet Evidence in Trademark Proceedings

Given the varying levels of reliability associated with Internet evidence, trademark applicants should follow these best practices when submitting online materials:

1. Ensure Source Credibility: Use reputable sources such as official company websites, government databases, and industry publications.
2. Provide Full Context: Rather than submitting a list of search engine results, include full web pages showing how the term is used.
3. Verify Timestamp and URL: Always include the date the evidence was accessed and the full URL to establish authenticity.
4. Use Supporting Evidence: Strengthen your case by supplementing Internet evidence with affidavits, consumer surveys, or traditional print sources.

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Conclusion

Internet evidence plays a vital role in TTAB trademark cases and trademark prosecutions, but its reliability must be carefully assessed. While the USPTO and TTAB recognize online materials as admissible, their evidentiary weight depends on the source’s credibility, the context in which the information is used, and the presence of corroborating evidence. Trademark applicants should be diligent in presenting clear, well-documented, and reputable Internet evidence in trademark law proceedings to support their claims effectively. By adhering to best practices, they can maximize the value of their submissions and strengthen their trademark applications or defenses.

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