Trademark Trial & Appeal Board Says Internet Is Here To Stay

By Pete Salsich III

No, that's not a headline from The Onion.

In a recent precedential opinion, the TTAB held that evidence from the immensely popular online encyclopedia Wikipedia can be admitted even though -- by its very nature -- such evidence may be unreliable.  See In re IP Carrier Consulting Group, TTAB, Serial No. 78542726 (June 18, 2007).   At issue were applications to register two trademarks: "ipPICS" for online image services and "ipPIPE" for communications services.  The PTO rejected both applications on the grounds that they were merely descriptive of the services provided.  In doing so, it relied in part on numerous online and print sources showing that the abbreviation "ip" was commonly used to refer to "Internet Providers" such as the applicant.  On appeal to the Board, the applicant cited Wikipedia's entry on "Internet Service Provider" to show that the most common abbreviation for Internet Provider was "ISP", not "IP."  The Board accepted and considered the Wikipedia evidence, but still affirmed the examiner's descriptiveness finding and refused the applications.

In the process, the Board spent some time discussing the relative merits of evidence from Wikipedia and other user-edited online sources and concluded that the fact that such sources may sometimes be unreliable does not make them automatically inadmissible, provided the non-moving party has an opportunity to introduce rebuttal evidence.

Does this make sense?  John Welch at the TTABlog doesn't think so.

The TTABlog is one of the very best resources for staying on top of developments at the TTAB, and it's no surprise that Welch has been following this issue for more than a year.  In posts here and here from last July, he points out the myriad problems with admitting evidence from inherently unreliable online sources such as Wikipedia and Acronym Finder

In this case, the Board justified its consideration of the Wikipedia evidence in part by relying on corroborating evidence from other, more reliable sources and stated:

"As a collaborative online encyclopedia, Wikipedia is a secondary source of information or a compilation based on other sources. . . . The better practice with respect to Wikipedia evidence is to corroborate the information with other reliable sources, including Wikipedia's sources."

Opinion at 11.  At the TTABlog, Welch asks the question:

"If corroboration is required, why not discard the Wikipedia evidence entirely and rely on the corroborating evidence? What happens when the corroborating evidence is other Internet evidence? Does such a house of cards provide any real support?" 

I understand and share Welch's concerns about unreliable online evidence--concerns that are shared by INTA as well--but I think there is room in the TTAB's opinion for a reasonable compromise position on this issue. 

Let's face it, online sources such as Wikipedia are here to stay and--warts and all--are increasingly becoming many people's first and only source of information.  We're not going to put that toothpaste back in the tube.  Believe me, I'm not advocating that courts or adminstrative tribunals like the TTAB should lower their evidentiary standards to accomodate this reality, but in certain circumstances, the very nature of the online source is what makes it reliable.

For example, in this case, the primary issue was whether the abbreviation "ip" was merely a descriptive term for "Internet Provider" -- necessarily then, the examiner ought to be able to consider probably the single largest source of information about how people who use internet providers describe them.  I don't think the Board's opinion opens the door for wholesale adoption of Wikipedia entries as learned treatises, but, as the opinion states, such evidence is relevant and can be reliable as evidence "of the way in which a term is being used by the public."  Opinion at 10.

The issue is going to come up again, and as practitioners we need to be prepared to deal with it.  Like it or not, the internet is here to stay.