1202.07    Marks That Identify Columns, Sections, and Supplements of Publications

1202.07(a)    Marks That Identify Columns, Sections, and Supplements of Printed, Downloadable, or Recorded Publications in §1(a) Applications

Columns, sections, and supplements of a publication that are printed, downloadable, or recorded on electronic media are normally not considered to be separate "goods" or "goods in trade," unless they are sold, syndicated, or offered for syndication separate and apart from the larger publication in which they appear (see TMEP §1202.07(a)(i)), or are non-syndicated and considered "goods in trade" under the three-part test set forth in Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1382, 103 USPQ2d 1672, 1676 (Fed. Cir. 2012) (see TMEP §1202.07(a)(ii) for the Lens.com test). See In re The N.Y. Times Co., 2023 USPQ2d 392, at *18-19 & n.20, *20 (TTAB 2023); In re Broad. Publ’ns, Inc., 135 USPQ 374, 375 (TTAB 1962); Ex parte Meredith Publ’g, 109 USPQ 426, 426 (Comm’r Pats. 1956).

Historically, absent evidence of acquired distinctiveness, non-syndicated columns and sections available in print format or on recorded media were not considered "goods in trade," based on caselaw from "a time when news or opinion columns were only available to consumers as part of the overall purchase of a particular newspaper, magazine or other type of publication in print format." In re The N.Y. Times Co., 2023 USPQ2d 392, at *7-8 (citing In re Broad. Publ’ns, 135 USPQ at 374; Ex parte Meredith Publ’g, 109 USPQ at 426). However, in In re The New York Times Co., the Trademark Trial and Appeal Board held that non-syndicated columns or sections can in fact be goods in trade:

[C]hanges in the marketplace for the delivery of news and opinion content have impacted consumer perceptions of what titles of non-syndicated columns represent, leading us to conclude that the correct legal standard for determining whether a non-syndicated column is a good in trade should no longer depend on the format in which it is offered. Whether a non-syndicated column that is, for example, "printed, downloadable, or recorded on electronic media," TMEP Section 1202.07(a), is a good in trade should be analyzed using the same standard we use to assess goods in trade issues in other contexts. We therefore take the opportunity to align the standards by adopting the three-part test set forth by the U.S. Court of Appeals of the Federal Circuit in Lens.com as our new test moving forward for non-syndicated print columns or sections in printed publications or recorded media. By doing so, we now have one uniform test for analyzing "goods in trade."

2023 USPQ2d 392, at *18-19. See TMEP §1206 regarding "goods-in-trade" refusals in general and the Lens.com test and TMEP §1202.07(a)(ii) regarding the "goods-in-trade" refusal and the Lens.com test as applied to non-syndicated columns and sections of a publication.

1202.07(a)(i)    Syndicated Columns and Sections in §1(a) Applications

Columns and sections of printed publications, downloadable publications, or publications recorded on electronic media that are separately sold, syndicated, or offered for syndication do constitute "goods in trade." See In re The N.Y. Times Co., 2023 USPQ2d 392, at *19 n.20 (TTAB 2023). A mark that identifies a column or section that is separately syndicated or offered for syndication is registrable on the Principal Register without a claim of acquired distinctiveness under Trademark Act §2(f), 15 U.S.C. §1052(f),  if registration is not barred by other sections of the Act.

1202.07(a)(ii)    Non-Syndicated Columns and Sections in §1(a) Applications

Whether a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media that is not separately sold, syndicated, or offered for syndication is separate "goods in trade" is determined by applying the three-part test set forth in Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1382, 103 USPQ2d 1672, 1676 (Fed. Cir. 2012). In re The N.Y. Times Co., 2023 USPQ2d 392, at *18-19 (TTAB 2023).

Under the Lens.com test, the factors to consider when evaluating whether an applicant’s non-syndicated column or section of a printed publication, downloadable publication, or publication recorded on electronic media is "goods in trade" include whether the column or section is:

• (1) simply the conduit or necessary tool useful only to obtain the applicant’s primary goods and/or services;
• (2) so inextricably tied to and associated with the primary goods and/or service as to have no viable existence apart from them; and
• (3) neither sold separately from nor have any independent value apart from the primary goods and/or services.

Lens.com, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676 (citing In re S’holders Data Corp., 495 F.2d. 1360, 1360-61, 181 USPQ 722, 723 (C.C.P.A. 1974); In re MGA Ent., Inc., 84 USPQ2d 1743, 1746-47 (TTAB 2007); In re Compute-Her-Look, Inc., 176 USPQ 445, 446-47 (TTAB 1972); Ex parte Bank of Am. Nat’l Tr. & Sav. Ass’n, 118 USPQ 165, 165 (Comm’r Pats. 1958)). None of these factors is dispositive. Id. They are evaluated in addition to "any other evidence that may be relevant to the particular case." In re The N.Y. Times Co., 2023 USPQ2d 392, at *26.

If the record indicates that the mark identifies a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media that is not separately sold, syndicated, or offered for syndication, and the evidence of record fails to establish the applicant’s goods as "goods in trade" under the Lens.com test, the examining attorney must refuse registration on the Principal Register under Trademark Act §§1, 2, and 45, 15 U.S.C. §§1051, 1052, and 1127, on the ground that the mark is not used on separate "goods in trade." In re The N.Y. Times Co., 2023 USPQ2d 392, at *18-19. The applicant may respond to the refusal by submitting evidence as to the factors under the Lens.com test.

For example, with regard to the first factor, an applicant may show that its non-syndicated columns are not simply a conduit or necessary tool useful only in connection with obtaining or navigating the main publication in which the columns or sections appear. See In re The N.Y. Times Co., 2023 USPQ2d 392, at *21 ("Applicant’s columns [were not] akin to an instructional manual or brochure describing to the reader how to use or navigate the entirety of The New York Times print edition."); (Applicant’s columns were not akin to "an annual investment report . . . [that] is a common and necessary adjunct to the rendering of applicant’s investment management and research services." (quoting In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1162 (TTAB 2013))).

As to the second factor, relevant evidence to show that the column or section has a viable or separate existence apart from the main publication as a whole may include evidence showing that consumers separately seek out the columns or sections apart from the main publication, such as internet search engine results showing that the applicant’s column or section may be retrieved by searching the column’s or section’s name. See id. at *21-23. Such evidence may be probative of consumer perception and consumer experience that the column or section possesses a viable existence apart from the main publication, as it shows that consumers are likely to perceive the name of each column or section as distinct from the main publication as a whole. Id.

Regarding the third factor, relevant evidence to show that a column or section has independent value apart from the main publication also may include the internet search engine evidence discussed in the second factor, as such evidence may show "readers recognize the columns as separate goods to such a degree that they may be searchable by name and retrieve multiple results." Id. at *24-25. Such internet search engine results show that "the utility of the column is more than just a section" within the main publication, and that consumers may look for and search for the name of the column to separately read the content for that column. Id. at *24.

Prior to In re The New York Times Co., marks that identified non-syndicated columns or sections of printed publications, downloadable publications, or publications recorded on electronic media were registrable under §2(f), 15 U.S.C. §1052(f), with sufficient evidence or, if the mark had not yet acquired distinctiveness, were registrable on the Supplemental Register. Under In re The New York Times Co., if the evidence of record establishes that an applicant’s non-syndicated column or section of a printed publication, downloadable publication, or publication recorded on electronic media comprises "goods in trade" under the Lens.com test, the mark is registrable on the Principal Register without resort to §2(f). If the evidence does not establish that it is used on "goods in trade" under the Lens.com test, registration may no longer be sought on the Principal Register under §2(f) or on the Supplemental Register. TMEP §1202.06(b). Accordingly, if a mark for a non-syndicated column or section of a printed publication, downloadable publication, or publication recorded on electronic media is refused on the ground that the mark is not used on separate "goods in trade," the examining attorney must not suggest that the applicant respond by claiming acquired distinctiveness or amending the application to seek registration on the Supplemental Register.

1202.07(a)(iii)    Marks That Identify Columns and Sections of Printed, Downloadable, or Recorded Publications in §1(b), §44, and §66(a) Applications

Because a refusal to register a mark that identifies a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media is based on whether the column or section is separately sold, syndicated, or offered for syndication, or is non-syndicated and considered "goods in trade" under the test in Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1382, 103 USPQ2d 1672, 1676 (Fed. Cir. 2012), the issue ordinarily does not arise in an intent-to-use application under Trademark Act §1(b), 15 U.S.C. §1051(b), until the applicant has filed an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c)   or a statement of use under 15 U.S.C. §1051(d) ). See In re The N.Y. Times Co., 2023 USPQ2d 392, at *18-19 & n.20, *20 (TTAB 2023). However, if the identification of goods suggests that the mark is intended to be used to identify a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media that is not separately sold, syndicated, or offered for syndication, the first Office action should include an advisory that registration may later be refused on the ground that the proposed mark is not used on separate "goods in trade." See TMEP §1202.07(a)(ii) regarding applying the Lens.com test to determine if an applicant’s goods potentially are "goods in trade." This is done strictly as a courtesy. If the applicant is not advised about this potential ground for refusal prior to the filing of the allegation of use, the USPTO is not precluded from refusing registration on this basis.

In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to refuse registration because the mark is not used on separate "goods in trade" where the record indicates that the mark will identify a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media that is not separately sold, syndicated, or offered for syndication and the evidence of record fails to establish the applicant’s goods as "goods in trade" under the Lens.com test. See In re The N.Y. Times Co., 2023 USPQ2d 392, at *18-19; TMEP §1202.07(a)(ii); cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen-based, in a §66(a) application).

1202.07(b)    Marks That Identify Columns and Sections of Online Publications

Providing an online non-downloadable publication is considered a service rather than a good. Therefore, refusal of registration on the ground that the proposed mark is not used on "goods in trade" is inappropriate. An online non-downloadable column or section can be accessed directly and can exist independent of any single publication. See Ludden v. Metro Weekly, 8 F. Supp. 2d 7, 14, 47 USPQ2d 1087, 1093 (D.D.C. 1998). Therefore, a mark used in connection with the service of providing an online non-downloadable column or section is registrable on the Principal Register without a claim of acquired distinctiveness under Trademark Act §2(f), 15 U.S.C. §1052(f),  if registration is not barred by other sections of the Act.