1202.06    Goods in Trade

Section 45 of the Trademark Act defines a "trademark" as a "word, name, symbol, or device, or any combination thereof" that is used or intended to be used in commerce "to identify and distinguish his or her goods." 15 U.S.C §1127  (emphasis added). Before rights in a term as a trademark can be established, the subject matter to which the term is applied must be "goods in trade." Incidental items that an applicant uses in conducting its business (such as letterhead, invoices, reports, boxes, and business forms), as opposed to items sold or transported in commerce for use by others, are not "goods in trade." See In re S'holders Data Corp., 495 F.2d 1360, 1361, 181 USPQ 722, 723 (C.C.P.A. 1974) (finding that reports are not goods in trade, where applicant is not engaged in the sale of reports, but solely in furnishing financial reporting services, and reports are merely conduit through which services are rendered); In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1162-63 (TTAB 2013) (finding that applicant’s annual report does not constitute a "good in trade," but rather "is a common and necessary adjunct to the rendering of applicant's investment management and research services, that is, it is one of the means through which it provides investment services"); In re Ameritox Ltd., 101 USPQ2d 1081, 1085 (TTAB 2011) (finding no evidence that applicant was engaged in selling printed reports apart from its laboratory testing services and that the reports were part and parcel of the services); In re MGA Ent., Inc., 84 USPQ2d 1743, 1746-47 (TTAB 2007) (applicant’s trapezoidal cardboard boxes for toys, games, and playthings held to be merely point of sale containers for applicant’s primary goods and not separate goods in trade, where there was no evidence that applicant is a manufacturer of boxes or that applicant is engaged in selling boxes as commodities in trade); In re Compute-Her-Look, Inc., 176 USPQ 445, 446-47 (TTAB 1972) (finding that reports and printouts are not goods in trade, where they are merely the means by which the results of a beauty analysis service is transmitted and have no viable existence separate and apart from the service); Ex parte Bank of Am. Nat’l Tr. & Sav. Ass’n, 118 USPQ 165, 165 (Comm’r Pats. 1958) (mark not registrable for passbooks, checks, and other printed forms, where forms are used only as "necessary 'tools' in the performance of [banking services], and [applicant] is not engaged either in printing or selling forms as commodities in trade.").

The determination of whether an applicant's identified goods comprise independent goods in trade, or are merely incidental to the applicant's primary goods and/or services, is a factual determination to be made on a case-by-case basis. In re Thomas White Int’l, Ltd., 106 USPQ2d at 1161 (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed. Cir. 2012)); see In re MGA Ent., Inc., 84 USPQ2d at 1746. Factors to consider include "whether [applicant's good]: (1) is simply the conduit or necessary tool useful only to obtain applicant’s [primary goods and/or] services; (2) is so inextricably tied to and associated with the [primary goods and/or] service as to have no viable existence apart therefrom; and (3) is neither sold separately from nor has any independent value apart from the [primary goods and/or] services." In re Thomas White Int’l, Ltd., 106 USPQ2d at 1162 (citing Lens.com, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676); see In re MGA Ent., Inc., 84 USPQ2d at 1746-47. None of these factors is dispositive. Lens.com, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676.

1202.06(a)    Goods Must Have Utility to Others

Affixing a mark to an item that is transported in commerce does not in and of itself establish that the mark is used on "goods." While a formal sale is not always necessary, items sold or transported in commerce are not "goods in trade" unless they have utility to others as the type of product named in the trademark application.

See Gay Toys, Inc. v. McDonald’s Corp., 585 F.2d 1067, 199 USPQ 722 (C.C.P.A. 1978) (holding plaster mockup of toy truck not goods in trade where there was no evidence the mockup was actually used as a toy); Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994) , aff’d, 108 F.3d 1392 (Fed. Cir. 1997) (holding mark not registrable for games, where purported games were advertising flyers used to promote applicant’s services and had no real utilitarian function or purpose as games); In re Douglas Aircraft Co., 123 USPQ 271 (TTAB 1959) (holding books, pamphlets, and brochures that served only to explain and advertise the goods in which applicant dealt were not "goods"); cf. In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) (holding ball point pens used to promote applicant’s tools were goods in trade, where they had a utilitarian function and purpose, and had been sold to applicant’s franchised dealers and transported in commerce under mark); In re United Merchs. & Mfrs., Inc., 154 USPQ 625 (TTAB 1967) (holding calendar used to promote applicant’s plastic film constituted goods in trade, where calendar had a utilitarian function and purpose in and of itself, and had been regularly distributed in commerce for several years).

In In re MGA Entertainment, Inc., 84 USPQ2d 1743, 1746 (TTAB 2007) , the Trademark Trial and Appeal Board rejected applicant’s argument that trapezoidal cardboard boxes for toys, games, playthings, puzzles, and laptop play units had use beyond holding the goods at the point of sale, in that the laptop play-unit box functions as an ongoing carrying case for the unit, and the puzzle box might be used to store puzzle pieces when not in use. Finding the boxes to be merely point-of-sale containers for the primary goods and not separate goods in trade, the Board stated that "the mere fact that original boxes or packaging may be used to store products does not infuse such boxes or packaging with additional utility such that they constitute goods in trade," and that there was neither any indication that the laptop computer boxes were labeled as a carrying case nor any evidence that applicant promoted the boxes as carrying cases or that children actually used them as carrying cases.

1202.06(b)    Registration Must Be Refused if Trademark Not Used on Goods in Trade

If the specimen, identification of goods, or other evidence in the record indicate that the applicant uses the proposed mark only on items incidental to conducting its own business, as opposed to items intended to be used by others, the examining attorney must refuse registration on the Principal Register under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, on the ground that the proposed mark is not used on "goods in trade."

If a mark is not used on "goods in trade," it is not registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f), or on the Supplemental Register.

If some but not all of the items listed in the identification of goods are found not to be "goods in trade," it is not necessary to refuse registration of the entire application, but the examining attorney must require that these items be deleted from the identification of goods before approving the mark for publication or registration.

1202.06(c)    Goods in Trade in §1(b), §44, and §66(a) Applications

In an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the question of whether a proposed mark is used on goods in trade usually does not arise until the applicant files 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) ) because this issue is based on the manner in which the mark is used. However, if the identification of goods in a §1(b) application includes items that do not appear to be goods in trade, the potential refusal should be brought to the applicant’s attention in the first Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. If the record indicates that the mark will not be used on goods in trade, without the need to await consideration of the specimen(s), the examining attorney may issue the refusal prior to the filing of the allegation of use.

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 issue a refusal based on the lack of use on goods in trade where the record clearly indicates that the mark will not be used on goods in trade. 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).