TTAB Affirms Rejection of Applicant's Own Magazine As Specimen for Publishing Services
The Board affirmed a refusal to register the mark BEARPLAY for "magazine publishing; publication of entertainment magazines for gay men" on the ground that the specimens of use submitted by applicant failed to show use of the mark with the recited services. In re Bear Omnimedia LLC, Serial No. 87009944 (March 27, 2018) [not precedential] (Opinion by Judge Christopher Larkin).
Applicant submitted several magazine covers of, and pages from, volumes of a magazine entitled BEARPLAY. The mark appears on the cover and at the bottom of pages next to the page number.
The Board pointed to the TMEP, which states that "publication of one's own periodical is not a service, because it is done primarily for applicant's own benefit and not for the benefit of others." TMEP Section 1301.01(b)(iii) (Oct. 2017) (citing cases). Magazine publishing services must be rendered for the benefit of someone other than the publisher of the magazine. In re Alaska Nw. Publ'g Co., 212 USPQ 316, 317 (TTAB 1981).
Applicant's magazine covers may support registration in Class 16 as a trademark for magazines, but they do not show an association between the mark and the services of "magazine publishing" or the "publication of entertainment magazines for gay men" for others.
The Board therefore affirmed the refusal to register under Sections 1 and 45 of the Lanham Act.
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TTABlog comment: Is this a WYHA?
Text Copyright John L. Welch 2018.
posted by John L. Welch @ 3/29/2018
4 comments
4 Comments:
No, I W not HA. Why didn't the applicant simply amend (or refile) its application to recite magazines in Class 16 rather than magazine publishing as a service?
It seems to me that the applicant sells two things under the mark: 1) magazine goods to the general public and 2) publishing services to its advertisers - which is where they really make their money. Most advertisers do not get a copy of and probably do not even read the physical magazine. What they are buying is interstate publication of their ads.
I suppose you might call that "advertising" services, but that appears more of a stretch than "If I pay you $X will you do me the service of publishing my ad?" The names of their magazines are the primary vehicles publishers use to identify the source of their publishing services.
Publishing your own magazine is not a service. Not at all. What a silly case to appeal. Applcant should have refiled and tried to get the identification right with the second app.
In connection with "newspaper publishing," I asked this question years ago to the person at the PTO with the best knowledge of what was acceptable and what was not acceptable as a goods/services ID. I was told that, while technically no services are being provided to a third party, this is an ID where the PTO interpreted the scope of the description broadly. This advice was (and is) borne out by what appeared to be hundreds of registered marks for "newspaper publishing" which are also registered for a print publication in Class 16.
I haven't reviewed the cited cases in the decision, but, although it would make no sense, perhaps different rules govern newspaper publishing and magazine publishing?
Mitch Stabbe
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