Tuesday, April 04, 2023

Precedential No. 11: TTAB Reverses Six "Goods In Trade" Refusals for NY Times Non-Syndicated Column Titles

In six consolidated appeals, the Board reversed refusals to register the marks THE NEW OLD AGE, GOOD APPETITE, HUNGRY CITY, WORK FRIEND, LIKE A BOSS, and OFF THE SHELF for "columns" on the subjects of business, office, money, careers, and worklife balance, rejecting the USPTO's position that each mark identifies only "individual portions of [A]pplicant's publications" and does not identify "separate goods in trade." The Board concluded that, in light of changes in the marketplace for the delivery of news, a new test is required for the registrability of non-syndicated columns or sections in printed publications or recorded media, and under that new test the columns qualified as good in trade. In re The New York Times Company, In re The New York Times Company, 2023 U.S.P.Q.2d 392 (T.T.A.B. 2023). [precedential] (Opinion by Judge Angela Lykos).

The Board observed that a "goods in trade" refusal is founded on Section 1, 2, and 45 of the Trademark Act. See, e.g., In re S’holders Data Corp., 495 F.2d 1360, 181 USPQ 722, 723 (CCPA 1974) ("Although the Act does not define 'goods,' the definition of a 'trademark' in section 45 declares that it is used 'to identify goods' and section 2 refers to 'goods in commerce.'").

Proposed marks that are not used for "goods in trade" cannot be registered on the Principal or the Supplemental Register. TMEP Sec. 1202.06. Incidental items such as invoices, reports, packaging, and business forms used in conducting a business - as opposed to items that are sold or transported in commerce - are not goods in trade

According to TMEP Sec. 1202.07, non-syndicated columns are not considered goods in trade, but "[t]he USPTO has carved out an exception" making them eligible for registration either on the Principal Register with a showing of acquired distinctiveness under Section 2(f), or on the Supplemental Register. "The USPTO's practice of refusing marks identifying non-syndicated columns in print format is based on decisions issued at a time when new 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."

The NY Times did not dispute that its columns are not syndicated. Nor did invoke the exception by claiming acquired distinctiveness or seeking registration on the Supplemental Register. It did, however, challenge the contention that its columns are not "goods in trade." The question for the Board, then, was whether the NY Times columns "are independent 'goods in trade'—that is, items sold or transported in commerce for use by others—or merely ancillary or incidental to its goods or services."

After reviewing the state of the law, the Board decided that changes in the marketplace for the delivery of news "have impacted consumer perceptions of what titles of non-syndicated columns represent," and so "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.

The Board therefore adopted a new test, based on Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 103 USPQ2d 1672, 1676 (Fed. Cir. 2012), for non-syndicated columns that considers the following factors in determining whether an applicant's goods are "goods in trade":

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

The Board found that the NY Times columns are not merely a "conduit or necessary tool" to obtain its primary goods, nor is each individual print column so inextricably tied to or associated with The New York Times print edition as to have no viable existence apart from the print edition as a whole.

Finally, the Board found that the columns possess independent value separate and apart from the newspaper as a whole, noting that consumers may look for and search for the name of the column and then separately read that column.

Prior to the widespread availability of the Internet to consumers, the only way a printed newspaper column could reach a wide geographic area was through syndication. The search engine results show the “independent value” of the print columns to consumers insofar as readers recognize the columns as separate goods to such a degree that they may be searchable by name and retrieve multiple results. This has a similar impact on the consumer’s experience as traditional syndication.

The Board concluded that the proposed marks identify individual columns of the newspaper, "distinguishing them from columns of other publishers' newspapers and may be perceived as such by the public."

Read comments and post your comment here.

TTABlogger comment: Note that the applications were not rejected as to the NY Times on-line columns (Class 41) but only as to its Class 9 goods. The bottom line is that, in light of the arrival of the Internet, column titles in newspapers and magazines may now be considered goods in trade (under the right circumstances). Big deal?

Text Copyright John L. Welch 2023.


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