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`Page 1 of 12
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`UNITED STATES PATENT AND TRADE
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`K OFFICE
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`SERIAL NO:
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`78/146926
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`“"‘“°’
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`CORRESPONDENT ADDRESS:
`EUGENE BERMAN
`LAW OFFICES OF EUGENE BERMAN
`26 CEDARWOOD CT
`ROCKVILLE MD 20852
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`.Zo.0’(
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`lllllllllllllllllllllllllllllllllllllll
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`BEFORE THE
`TRADEMARK TRIAL
`AND APPEAL BOARD
`ON APPEAL
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`MARK:
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`MOHAWK
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`CORRESPONDENT’ s REFERENCE/DOCKET NO: 3410.0001-00
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`Please provide in all corrcsvondcnw
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`CORRESPONDENT EMAIL ADDRESS:
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`1. Filing date, serial number, mark and
`applicant's name.
`2. Date of this Otfice Action.
`3. Examining Attorney's name and
`Law Office number.
`4. Your telephone number and c-mail
`address.
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`E_&5rMINING ATTORNEY'S APPEAL BRIEF
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`On July 24, 2002 applicant filed this intent-to-use application seeking registration on the
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`Procedural History
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`Principal Register of the mark MOHAWK, for “cigarettes.”ul The identification was amended via
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`Examiner’s Amendment on February 13, 2003. The application was published in the Official Gazette of
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`April 29, 2003. The approval for publication was withdrawn prior to the issuance of a Notice of
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`Allowance, and the application was assigned to the current examining attorney who issued a refusal on
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`July 30, 2003 because the mark consists of or comprises matter that may falsely suggest a connection
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`with the federally recognized tribe the St. Regis Band of Mohawk Indians of New York. Trademark Act
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`§ 2(a); 15 U.S.C. § 1052(a). Personal interviews were conducted with applicant’s attomey at his request
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`on October 9, 2003 and February 9, 2004. Following applicant’s response, the refusal to register on the
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`basis of a false connection was made final on September 1, 2004. Applicant noted this appeal on March
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`24, 2005 and at the same time filed a Request for Reconsideration. The appeal was noted and suspended
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`by the TTAB by order, and the file forwarded to the examining attorney for action on the Request for
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`Page 2 of 12
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`Reconsideration on March 31, 2005. The Request for Reconsideration was denied on April 28, 2005
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`and proceedings were resumed on May 20, 2005. Applicant filed her Brief on Appeal on July 19, 2005.
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`The file was forwarded to the examining attorney for statement on July 26, 2005.
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`The first issue on appeal concerns objections to evidence by the applicant and the examining
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`Issues on Appeal
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`attorney. While the examining attorney responded to applicant’s objections to the evidence in her denial
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`of the Request for Reconsideration, and attached additional evidence to that denial, applicant now
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`objects to the evidence attached to the denial of the Request for Reconsideration, arguing that the file
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`must be complete prior to the filing of the appeal. The examining attorney objected to applicant’s mere
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`listing of multiple registrations and potential registrations. Applicant attached copies of 26 registrations,
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`3 applications (potential registrations) and the Department of the Army’s reservation of the term in
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`relation to aircrafi, and the examining attorney specifically removed her objection only as to those
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`registrations and potential registrations made properly of record. The objection is continued as to any
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`registrations not properly made of record.
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`The second issue on appeal is whether applicant’s mark, when used on or in connection
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`with the goods of the application falsely suggests a connection with the name of the federally-
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`recognized tribe of the St. Regis Band of Mohawk Indians of New York.
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`ARGUMENT
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`L
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`Objections to Evidence
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`A. Applicant’s Objection to the Evidence is Improper and Contrary to the Rules
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`In the Request for Reconsideration, the applicant’s attorney objected to all of the evidence
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`attached to the Oflice actions of August 4, 2003 (TlCRs date of July 24, 2003, TRAM date of July 30,
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`2003) and September 1, 2004 (TICRs date of August 30, 2004, TRAM date of September 1, 2004).L2l
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`The examining a.ttorney responded to this objection by recapturing and reattaching the evidence shown
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`in TICRS as pages 6, 1', 10, 12 and 14 from the July 24, 2003 Office action, except for one page for
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`which she withdrew reliancefil The software available for capturing electronic evidence had been
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`changed since the time of each of the previous two Ofiice actions, so that slightly difierent versions of
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`the sofiware have been used with each Office action. The third version, available at the time of the
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`Page 3 of 12
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`denial of the Request for Reconsideration, supplies both the URL line and the date of accessing the web
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`site and these items are shown on the page, and in some cases highlighted in yellow, as shown in the
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`electronic file for the denial of the Request for Reconsideration with the TICRs date of April 27, 2005.
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`The chart shown in the denial of the Request for Reconsideration provides a reference to the
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`pages of the July 24,, 2003 Ollice action and the evidence attached to it. As noted there, page 2 is valid
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`evidence from a Google search that clearly shows the URL line and the date of May 12, 2003. Page 4 is
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`similarly valid evidence from a Google search that clearly shows the URL line and the date ofMay 12,
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`2003.[fl While the examining attorney believes that pages 6 and 7 clearly show the name ofthe
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`publication (a paper source) and the date of the articles, they have been reattached to the denial of the
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`Request for Reconsideration TICRs date of April 27, 2005 as pages 35, 36, 37 and 38.L5J Page 8
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`clearly shows the name ofthe publication and its date. Page 9 is a statutory citation that is clearly
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`shown. Page 10 clearly shows the name of the publication and the date, and was reattached to the
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`Request for Reconsideration as pages 33 and 34. Page 11 is an article clearly retrieved from a Nexis
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`search and shows the name of the publication and the date. Page 12 was reattached to the Request for
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`Reconsideration as pages 30, 31 and 32. Page 14 is a map that was reattached to the Request for
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`Reconsideration as pages 19 and 20.
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`The final Office action of August 30, 2004 used a version of the web page capturing soflware
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`that places the URL line at the top of the page. Page 2 clearly shows the URL line at the top and after
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`the headline shows the date as “last updated Wed. 07 Aug. 2002.” Page 3 shows the URL line at the
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`top of the page and notes at the bottom that it is information from “Ti1ler’s Guide to Indian Country” 21
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`paper source, with the author, publisher, and SSBN shown at the bottom of the page.[§l Pages 4-8 are
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`dictionary definitions with the URL lines shown at the top of each page and the source clearly shown on
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`each page. Page 9 is a, press release with the URL line shown at the top ofthe page and the date ofthe
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`press release clearly shown as May 12, 2003. Page 10 is a page from the Mohawk Nation with the URL
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`clearly shown at the top ofthe page and the date shown at the bottom of the page as updated and written
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`August 8, 2002.
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`New additional evidence was also attached to the Request for Reconsideration. These include
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`several excerpts of articles from a Nexis search. The library, file and search strategy are shown and
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`Page 4 of 12
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`these excerpts are attached to the end of the Office action letter on TICRS page 1. Articles from
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`additional web pages are attached as pages 2-18 with the URL lines and dates clearly shown on each
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`page (usually at the top, but sometimes at the bottom of the page). A description of the tribe and its
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`activities copied from a paper source is attached as pages 39-43. This is an excerpt from American
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`Indian Reservations and TrustAreas, 478-80 (Economic Dev. Admin., Dept. of Commerce 1996).[Zl
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`The applicant’s attorney has objected to the evidence attached to the Request for
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`Reconsideration citing TBMP §1207.01 and 37 CFR §2. l42(d) apparently believing that the rule
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`requiring the file to be complete prior to filing of an appeal meant that the examining attorney could not
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`attach further evidence. But as shown in the Board’s order of March 31, 2005 action on the appeal was
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`suspended and the file remanded to the examining attorney for consideration of the Request for
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`Reconsideration. A primary issue in that Request for Reconsideration was applicant’s objection to the
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`evidence which the examining attorney considered and cured by attaching additional evidence and
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`ensuring that any evidence about which there might have been a question as to its source was
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`reattached.
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`Just as applicant’s attorney was allowed to respond to the examining attorney’s objection to his
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`citation of evidence not made properly of record by attaching additional evidence to the Request for
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`Reconsideration, so too the examining attorney is allowed to respond to his objection by attaching new
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`or corrected evidence. As the TMEP notes, “In an Office action denying the applicant's request for
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`reconsideration, the examining attorney may introduce additional evidence directed to the issue(s) for
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`which reconsideration is sought. TBMP §1207.04.” TMEP §7l5.03(a). And, as the TBMP explains:
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`A timely request for reconsideration of an appealed action may be accompanied by an
`amendment and/or by additional evidence. The evidentiary record in an application
`should be complete prior to the filing of an appeal, and additional evidence filed after
`appeal normally will be given no consideration by the Board. See 37 CFR §2. l42(d).
`See also TBM.P §l207. However, evidence submitted with a timely request for
`reconsideration of an appealed action, that is, a request filed during the six-month
`response period following issuance ofthe appealed action, is considered by the Board to
`have been filed prior to appeal, even if the notice of appeal was, in fact, filed earlier in
`the six-month response period than the request for reconsideration. See Gary D.
`Krugman, TIPS FROM THE TTAB: The Amended Trademark Rules ofPractice and
`Their Eflect an Ex Parte Appeals, 74 Trademark Rep. 341 (1984), and Daniel L. Skoler,
`TIPS FROM THE TTAB: Evidence in Ex Parte Appeals--Problems and Lost
`Opportunities, 73 Trademark Rep. 310 (1983). See also In re Corning Glass Works, 229
`USPQ 65 (TTAB 1985), and In re Best Western Family SteakHouse, Inc., 222 USPQ
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`Page 5 of 12
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`827 (TTAB 1984).
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`If the Examining Attorney, upon consideration of a request for reconsideration (made
`with or without new evidence), does not find the request persuasive, and issues a new
`final or nonfinal action, the Examining Attomey may submit therewith new evidence
`directed to the issue(s) for which reconsideration is sought.
`TBMP §1204. See also TBMP §l207.04.
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`Based on the rules, the examining attomey asks that app1icant’s objection be overruled.
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`B. The Objection to Applicant’s Evidence of Prior Registrations is VVithdrawn
`Only as to Those Registrations Made Properly of Record
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`As noted in the denial of the Request for Reconsideration, the applicant attached copies
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`of 30 documents to the Request. Of these, 26 were copies of registrations, 3 were copies of
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`pending applications, and one was a copy from the TARR database of a reservation of the term
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`MOHAWK by the Department of the Army for aircraft. The examining attorney removed her
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`objection to the list of registrations previously submitted by the applicant, only as to those
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`registrations made of record in the Request. The examining attorney continues to object to the
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`attomey’s reference to “95 marks in which the term MOHAWK is all or part of the
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`mark” (Appl’s Brief at 5) as only 26 registrations have been made of record.
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`The pending applications are not relevant and are of little or no probative value. See,
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`Glamorene Prods. Corp. v. Earl Grissmer Co., Inc., 203 USPQ 1090, 1092 n.5 ('I'I‘AB 1979)
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`(pending registrations evidence only of filing of an application).
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`The registrations properly attached are for a variety of goods including buses, paints,
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`flooring, animal feed, bowling balls, hair brushes, meats, playing cards, canned fish, paper,
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`alcoholic beverages, cables and pipeline valves. None of the registrations are relevant because
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`they do not involve cigarettes, tobacco products or the sale or manufacture ofthose items.
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`Likewise the fact: that the Department of the Army uses the term for aircrafi is unrelated to this
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`application and its goods.
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`Prior decisions and actions of other trademark examining attorneys in registering
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`different marks are without evidentiary value and are not binding upon the Office. Each case is
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`decided on its own facts, and each mark stands on its own merits. AMF Inc. v. American Leisure
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`Products, Inc., 177 US.PQ 268, 269 (C.C.P.A. 1973); In re International Taste, Inc., 53 USPQ2d
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`Page 6 of 12
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`1604 (TTAB 22000); In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB
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`1984); In re Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978); In re Scholastic Testing
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`Service, Inc., 196 USPQ 517 (TTAB 1977).
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`II.
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`Applicable Law
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`Registration may be refused where a proposed mark consists of or comprises matter that may
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`falsely suggest a connection with a famous person or institution and that consumers would presume such
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`a connection when viewing the mark in relation to the identified goods. Trademark Act Section 2(a), 15
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`U.S.C. §IO52(a); TMEP §§1203.03, 1203.03(e) and 1203.03(f); See generally University ofNotre Dame
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`du Lac v. J.C. GourmetFood Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); University
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`of/llabama v. BAML4.-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986); In re Cotter & Co., 228
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`USPQ 202 (TTAB 1985); Buflett v. Chi-Chi ’s, Inc., 226 USPQ 428 ('I'I‘AB 1985).
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`The following is required for a showing of false connection under Section 2(a):
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`0
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`the mark sought to be registered is the same as or a close approximation of the name or
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`0
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`0
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`identity of a person or institution;
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`the mark would be recognized as such;
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`the person or institution identified in the mark is not connected with the goods sold or
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`services performed by applicant under the mark; and
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`o
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`the fame or reputation of the named person or institution is of such a nature that a connection
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`with such person or institution would be presumed when applicant’s mark is used on its
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`goods or services.
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`In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990); In re Cotter & Co., 228 USPQ 202, 204
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`(TTAB 1985); Buffett v. Chi—Chi ’s, Inc., 226 USPQ 428, 429 (TTAB 1985).
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`The Board has previously held that federally recognized tribes of Native Americans are “persons” or
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`“institutions” within the meaning of Trademark Act §2(a) since federally recognized tribes are entities or
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`juristic persons that can enter into contracts, sue and be sued. In re White, 73 USPQ2d 1713, 1719
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`(TTAB 2004). The case involved the same applicant in the present case although for a different mark,
`4!
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`Page 7 of 12
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`APACHE for cigarettes.
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`HI.
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`Applicant’s Mark Suggests a False Connection with the Federally-Recognized Mohawk
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`Tribe
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`A.
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`The Mark Constitutes the Name or Identity of the St. Regis Band of Mohawk
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`Indians of New York and Would Be Recognized as Identifying the Mohawk Tribe
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`As noted in the Office actions, the term “MOHAWK” is defined as “A Native American
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`people formerly inhabiting northeast New York along the Mohawk and upper Hudson valleys north to
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`the St. Lawrence River, with present-day populations chiefly in southern Ontario and extreme northern
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`New York. The Mohawk were the easternmost member of the Iroquois confederacy. b. A member of
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`this people.”[§l The St. Regis Band of Mohawk Indians of New York is a federally recognized tribe.
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`See, American Indian Reservations and Trust Areas, 478-80 (Economic Development Admin., Dept. of
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`Commerce 1996) I2]; see also, Indian Entities Recognized andEligible to Receive Services From the
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`United States Bureau ofIndian Affairs, 68 Fed. Reg. 68,180-184 (Dec. 5, 2003) (listing of federally
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`recognized tribes).
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`The term at issue need not be the actual, legal name of the party falsely associated with
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`applicant’s mark. See, e.g., Buflett v. Chi-Chi ’s, Inc., 226 USPQ 428, 429 (TTAB 1985)
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`(MARGARITAVILLE held to be the persona of singer Jimmy Buffet). The term must, however, be so
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`uniquely and unmistakably associated with the named party as to constitute that party’s name or
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`identity. Id. ; See also In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985).
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`And in fact, dictionary definitions alone may be competent to demonstrate that the mark sought
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`to be registered is the same as, or a close approximation of, the named person or institution. See, e.g., In
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`re Cotter & C0., 228 USPQ 202, 204 (TTAB 1985) (WESTPOINT for various firearms falsely
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`suggested a connection with the United States Military Academy; the Board considered only dictionary
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`definitions made of record).
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`Applicant argues that because the term MOHAWK is only a part of the name of the federally
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`recognized tribe, the mark is not actually the name of one tribal entity. The applicant also argues that
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`the terms “St. Regis” and “New York” in the name ofthe tribe are significant terms in the name of the
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`federally recognized tribe. Applicant made a similar argument in a case concerning the mark APACHE
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`Page 8 of 12
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`for cigarettes. As the Board noted, “Applicant contends that the other elements of the names of the
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`federally recognized tribes are significant in their own right and it would be error, in essence, to elevate
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`the significance of Apache over the other terms.” In re White, 73 USPQ2d at 1719. The Board then
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`rejected, “app]icant"s contention that a finding that APACHE is a name or designation of the identity of
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`each of nine tribes somehow denigrates or minimizes other names or aspects of their identities. Nothing
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`under 2(a) false suggestion analysis precludes a finding that APACHE is a name or identity for each
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`tribe even though there may be other names or identities, customs or practices that the tribes do not have
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`in common.” Id.
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`As the evidence in this case shows, the term, “MOHAWK” is commonly used to refer to
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`members of the federally recognized tribe. The dictionary definitions show the term listed under
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`“Mohawk.” The tribe is commonly referred to as “the Mohawk Tribe.”Il—01 The description ofthe tribe
`in the Tiller publication also mentions “the Mohawk.”U—11 Thus MOHAWK is a name or identity for
`the tribe.
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`B.
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`The Mohawk Tribe is Not Connected with Applicant’s Goods
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`Applicant has applied for the mark as an individual. In a declaration attached to Applicant’s
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`response of January 2.6, 2004 Julie White has stated that she is a member of the St. Regis Band of
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`Mohawk tribe, and an; employee of Native Trading Associates.Ll—21 Julie White as an individual is a
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`separate entity from the tribe as a juristic person. There is no indication in the record that the Tribe
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`approved an assignment or transfer ofthe license to use the name. Thus it is likely that Ms. White has
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`no valid or legally protected interest in the purported license. See Johnson v. Acting Phoenix Area
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`Director, Bureau ofIndian Aflairs, 1993 I.D. LEXIS 17; 25 IBIA 18 (Nov. 12, 1993).
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`Also in the record is an affidavit from Susan Jesmenlfil the owner and sole proprietor of Native
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`Trading Associates, a -copy of a “DBA Certificate” issued to Native Trading Associates by the St. Regis
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`Mohawk Tribe as “a tobacco manufacturing business operating in the territory of Akwesasne,”[fi] and a
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`Tobacco Manufacturing License issued to Native Trading [sic] by the St. Regis Mohawk Tribe.I1—5l In
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`the affidavit Ms. Jesmer states that Native Trading Associates is licensed by Julie White to use the mark
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`Mohawk for cigarettes. The affidavit acknowledges that the St. Regis Band of Mohawk Indians of New
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`York is a federally recognized tribe, and then states that Native Trading Associates “is licensed to
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`Page 9 of 12
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`manufacture and sell cigarettes to licensed wholesalers on Akwesasne, the St. Regis Band of
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`Mohawk Indians ofNew York reservation by the St. Regis Mohawk Tribe for any brand of cigarettes (as
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`set forth in the: attached license. [)] 4&1
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`Ms. Jesmer states that Native Trading Associates is licensed by the tribe to sell and manufacture
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`any brand of cigarettes. But there is nothing in the record to show that the tribe has granted Native
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`Trading Associates the right to use the tribal name, which is the intellectual property at issue in this
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`case. An exclusive licensee may have some rights, but does not reach the property owner's rights unless
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`the owner has joined the action. See Biagro Western Sales, Inc. v. Helena Chem Co., 160 F.Supp.2d
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`1136 (D. Cal. 2001) (manufacturer’s motion to dismiss patent infringement by competitor, an exclusive
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`licensee, granted because licensee without all substantial rights not entitled to bring infringement action
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`unless joined by original patent holder).
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`Applicant insists that all of these add up to a connection with the tribe as contemplated under a
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`Section 2(a) analysis. But all that is shown is that an individual employee of Native Trading Associates
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`has licensed the name of the tribe to the business she works for, and that the business manufactures
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`cigarettes under a license from the tribe. But as in the case In re Sloppy Joe ’s, the connection to Julie
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`White through Native Trading Associates appears indirect at best. Applicant has only shown that she
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`associates with the tribe, not that she is the tribe. There is nothing to show that the tribe has an
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`ownership interest in Julie White’s license, nor in the one she has granted to Native Trading Associates.
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`Nor is there any commercial endorsement or sponsorship shown for applicant’s goods.
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`In In re Sloppy Joe's International Inc., 43 USPQ2d 1350, 1353-34 (TTAB 1997), the
`Board held that Ernest Hemingway's friendship with the original owner of applicant's bar,
`his frequenting the bar and his use of the back room as an office is not the kind of
`"connection" contemplated by §2(a). Rather, a commercial connection, such as an
`ownership interest or commercial endorsement or sponsorship of applicant's services
`would be: necessaiy to entitle the applicant to registration. TMEP §l203.03(e).
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`Here while the tribe has granted a business license and a tobacco manufacturing license to Julie White’s
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`employer, there is nothing to show that the tribe contemplated granting rights to the name to an
`individual member of the tribe.
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`C. The Fame of the Mohawk is Such that A Connection Would Be Presumed in Association
`with Applicant’s Goods
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`The next step is whether the applicant's mark points uniquely and unmistakably to the Mohawk
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`Page 10 of 12
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`tribe. As the Board noted in In re White, “the key is whether the name per se is unmistakably
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`associated with a particular person or institution and, as used would point uniquely to the person or
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`institution. In short. it is the combination of (1) the name of sufiicient fame or reputation and (2) its use
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`on or in connection with particular goods or services, that would point consumers ofthe goods or
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`services uniquely to a particular person or Institution.” 73 USPQ2d at 1721 (emphasis in original).
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`The applicant emphasizes that the name “Mohawk” is given to several places located in or near
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`the reservation and the traditional lands occupied by the Mohawk. None of these places is associated
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`with the growing, manufacture or sale of cigarettes, and if anything the association of these places with
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`the name of the tribe only further extends the fame of the tribe.
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`The Tiller Re search publication discusses the history and numerous enterprises of the Mohawk
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`tn'be.flfl During the Revolutionary War the St. Regis Mohawk supported the Americans.
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`In 1796 the
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`land claim of the Seven Nations was signed and New York State ceded land in exchange for a promise
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`to abandon further land claims. “The modern day economy is based largely around the service industry
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`and tourism, primarily high-stakes bingo and dirt track stock car racing. The reservation also capitalizes
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`on its tax-free status on products like gasoline and cigarettes, offering discount prices. ... Currently the
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`largest revenue-producing businesses on the reservation involve high-stakes gaming and the sale of
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`gasoline and tob-acco products
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`,,L1_3]
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`Several news articles, web pages and Nexis excerpts are in evidence
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`showing that the Mohawk are ofien in the news and there have been state level negotiations about the
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`tax revenues from cigarettes sold on the Mohawk reservation. There are also several attachments that
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`show marketing of Native American brands is widespread, particularly because of their tax-free status.
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`One web page shows a national map of cigarette retailers located on Native American reservations.[1—9‘1
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`Another web page headed “Discount Indian Tobacco” shows cigarettes available through a buyers club
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`from the Seneca Nation of Indians.L2Q1 Another headed “Indian Cigarettes Resource” proclaims “Find
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`Indian cigarettes sources on the Internet from the comfort of your own home or of‘fice.”[2l] And an
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`article entitled “New York Tribe Sets Up Kiosks for Tax-Free Cigarettes” notes that the Oneida Indian
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`Nation is placing self serve kiosks in non-tribal stores to allow customers to electronically order tax-free
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`cigarettes from the tribe.[2—2“1 There are several Nexis articles noting that tax-free cigarettes are available
`from tribeslfil “In short, cigarette consumers would be aware ofNative American manufacturing and
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`Page 11 of 12
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`marketing of Native American brand cigarettes.” In re White, 73 USPQ2d at 1722. Given the
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`fame of the name ofthe Mohawk tribe, consumers would think uniquely of the tribe when they see
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`MOHAWK used as a mark on or in connection with cigarettes.
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`IV.
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`Conclusion
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`For the foregoing reasons, the examining attorney respectfully maintains that the mark suggests a
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`false connection with the Mohawk tribe and urges that the refusal to register on the Principal Register
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`pursuant to Trademark Act § 2(a)‘, 15 U.S.C. § l052(a) be affirmed.
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`Respectfully submitted,
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`/M. Catherine Faintl
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`Examining Attorney
`Law Office 103
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`phone: 571-272-9274
`fax: 571-273-9103
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`email: Catherine.Faint@uspto. gov
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`Michael Hamilton
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`Managing Attorney
`Law Office - 103
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`DJ This is the identification as amended by the applicant on February 13, 2003.
`[A1 A note about dates. The Office action of August 4, 2003 referred to by applicant appears to be the one reflected in the
`TRAM database as mailed on July 30, 2003. The date for this same Office action shown in the TICRs database is July 24,
`2003. The final Office action referred to as the September 1, 2004 Office action by the applicant appears to be the one
`reflected in the TRAM database as mailed on that date and the date for this same final Office action shown in the TICRs
`database is August 30, 2004. As the examining attorney has explained to the applicant’s attorney on prior occasions, the
`dates that are shown in the TRAM database are considered the official mailing dates of Office actions and the dates shown in
`the electronic file (or TICRs database) may not exactly match those dates as the TICRs dates reflect uploading of records in
`the electronic file rather than mailing dates. For ease of reference and to ensure reference to the right document when
`looking at the electronic file, the examining attorney refers to documents by the dates shown in TICRs.
`El As stated in the denial of the Request for Reconsideration, one page had timed out and could not be accessed via the
`Internet with the software available to the examining attorney. This was the page “tax free cigarettes — Indian Smokes
`Online” attached as page 13 of the TlCRs outgoing Office action of 7/24/03. The examining attorney withdrew reliance on
`this page of evidence.
`[:11 Pages 3 and 5 were pages that showed the URL line for each of the prior web pages. The procedures in place at that time
`required the examining attorney to capture these pages separately.
`L5-1 The new software for attaching Internet evidence now divides pages that are deemed too large into multiple pages. (The
`software automatically makes this determination and breaks up pages according to its own protocols). Thus what were two
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`Page 12 of 12
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`pages in the 7/24/03 Office action are now two documents of two pages each for a total of four pages. In the chart the
`examining attorney attempted to refer to these pages by the references that showed on her screen for attaching evidence,
`namely, retailers6 and r'etailers7. Apparently these naming conventions do not show in the TICRs file.
`[Q1 A copy of the document from the paper source was attached to the denial of the Request for Reconsideration, TICRs
`Outgoing of 4/27/05 pp. 39-43.
`111 This is the same source referred to in the Apache case as “the Tiller Research publication.” See In re White, 73 USPQ2d
`1713, 1715, 1720-21 (TTAB 2004). Because it is now very difficult to attach evidence from paper sources to electronic files,
`the examining attomey copied the pages, faxed them to her computer desktop a.nd then captured the evidence with the
`electronic software.
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`%rii7i'fié8’tfi’1l5£fl§‘.’fit5i‘iilSfi§Pe‘Fs!i8H‘ttz/e&%§é’a€a5’dfiS’i$l‘S’c$’tt&1+f»%faif&1Efi§ti1€P?e$?8HE&l’5x‘l%1l89«fislttt1l%fi‘&§l“‘°“
`restricted in accordance with the Copyright Law of the United States. All rights reserved. This definition was
`provided in the final Oflice action of 8/30/04 TICRs p.l. The source is an electronic desktop dictionary provided to
`all examining attorneys for use in citing dictionary definitions in Office actions. The electronic source is based on a
`paper source. If there is any concern about the veracity of this electronic evidence, the examining attorney asks that
`the Board take judicial notice of the definition as it is from a standard reference work. TEMP §1208.04 (Bcxird may
`take judicial notice of encyclopedia entries, standard reference works and commonly known facts). Also attached to
`the final Office action were five other dictionary definitions, at least one of which was also based on a paper source,
`the Merriam-WebsterDictionary shown at TICRS p. 4 of the final Office action of 8/30/04.
`[21 The document is from a paper source and was attached to the Denial of the Request for Reconsideration, TICRS
`Outgoing 4/27/05 pp 39-43.
`[L01 See, e.g., Governor and St. Regis Mohawk Tribe Announce Frameworkfor Settlement ofMohawk Indian Land Claim,
`Development of a Mohawk Casino in the Catskills and Retail Price Parity, at
`www.state.r_1y.us/ ;ovemor/press/yearO3/may 12 1 03.htrn attached to final Office action of 8/30/04 TICRs p. 9.
`LL11 American Indian Reservations and Trust Areas, 479 (Economic Development Admir1., Dept. of Commerce 1996)
`attached to denial of Request for Reconsideration TICRS Outgoing 4/27/05 p.2.
`1-1-21 rrcas Incoming 1/:55/o4 p.32 (Exhibit 1).
`H11 TICRs Incoming of 3/1/05 pp. 15-16.
`[Lg TICRs Incoming of 3/1/05 p. 17.
`IE
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`TICRs Incoming of 3/1/05 p. 18.
`.«
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`TICRs Incommg of .3/1/05 p. 15.
`[H1 TICRs Outgoing of 4/27/05 pp. 39-43.
`[mAmerican Indfan Resrervations and TrustArea.s', 479-80 (Economic Development Admin., Dept. of Commerce 1996).
`TICRS Outgoing of 4/27/05 p. 42-43.
`[E1 TICRs Outgoing of 4/27/05 pp. 19-20.
`[291 TICRs Outgoing of 4/27/05 pp. 27-29.
`[-21-] TICRs Outgoing of 4/27/05 pp. 30-32.
`[21 TICRs Outgoing of 4/27/05 pp. 33-34.
`[E1 See Denial of Request for Reconsideration, TICRS Outgoing of 4/27/05 p. 1.
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`[El
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