In a trademark opposition or trademark cancellation, both parties can make certain types of materials part of the evidentiary record by filing them under a notice of reliance. Each party must file their notices of reliance and associated materials with the Trademark Trial and Appeal Board (TTAB) and serve them on the opposing party during its 30-day trial period. Neither party is required to file a notice of reliance during its trial period, but because it is a fairly easy and inexpensive way to submit certain evidence in support of their cases, the parties frequently utilize this procedure rather than more cumbersome methods (such as through witness verification during a testimony deposition).
What Exactly is a Notice of Reliance?
In the simplest terms, a notice of reliance is essentially a cover sheet for evidentiary materials that are not legally required to be verified by a witness or introduced in connection with the testimony of a witness. It is designed to notify the opposing party of the materials that the offering party intends to rely on to support its case. Assuming the materials are, in fact, eligible for submission under a notice of reliance, and such materials were filed and served during the party’s 30-day trial period, the TTAB will consider such materials when making its final decision. Of course, some materials will have greater evidentiary value than others, and the TTAB will thoroughly assess and weigh all evidence presented by the parties in accordance with the law and established legal precedent.
What Must It Include?
A notice of reliance must include four things for the materials to be considered by the TTAB:
- A description of the materials being submitted
- The general relevance of the materials being submitted (since all evidence in a trademark opposition or cancellation must be relevant whether it is submitted under notice of reliance or not)
- An association of the materials with one or more issues in the opposition or cancellation (i.e. a clear explanation of how the materials specifically relate to a claim or defense in the case)
- A legible copy of the materials attached to the notice of reliance
Each notice of reliance and its associated materials must be filed through the ESTTA system. If the notice of reliance is deficient in some manner, the TTAB will very likely give such materials no consideration whatsoever.
Which Types of Evidence Can Be Submitted Under a Notice of Reliance?
I strongly encourage you to carefully review Section 704 of the TBMP for a full discussion of the types of materials that can be submitted under a notice of reliance. However, here is a summary list of the materials that are most frequently submitted by the parties under a notice of reliance in a trademark opposition or cancellation:
- Status and title copies of trademark applications and trademark registrations owned by either party
- Copies of trademark applications and trademark registrations owned by third-parties
- Copies of the file history of third-party trademark applications and trademark registrations
- Copies of official records (i.e. records of public and government offices and agencies)
- Printed publications (such as books and periodicals) that are available to the general public in libraries or of general circulation among members of the public or the relevant segment of the public
- Internet materials
- The opposing party’s answers to interrogatories and the opposing party’s admissions in response to requests for admissions
- Discovery depositions of an adverse party
- Documents disclosed by the opposing party during discovery in response to a request for production (only if they have been previously authenticated by the opposing party)
- The opposing party’s Initial Disclosures
- Stipulations by the parties
Please note that some of these materials need to meet other requirements to be eligible for filing under a notice of reliance. So, again, I urge you to carefully read Section 704 of the TBMP before filing any notices of reliance with the TTAB.
Can I File More than One Notice of Reliance?
Yes, you can certainly file more than one notice of reliance in a trademark opposition or cancellation. In fact, that is what generally occurs because the parties often have many different types of materials that are relevant to different issues in the case. The number of notices of reliance a party will submit primarily depends on (1) the nature of the materials themselves, (2) the specific issues the party seeks to address with those materials, and (3) whether some materials can be grouped together in a coherent manner. Regardless, there is no maximum number and you’re free to organize the materials in the way you believe is best for your case.
May I Provide Some Assistance?
I’m experienced US trademark attorney Morris Turek. Regardless of whether you’re the plaintiff or defendant in a trademark opposition or cancellation, I would be happy to help you with preparing and filing notices of reliance with the TTAB. I can be reached by phone at (314) 749-4059, though email at morris@yourtrademarkattorney.com, or by filling out the contact form found near the bottom of this page (don’t forget to include the opposition or cancellation number). I look forward to hearing from you soon.