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

e 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)))

tructional 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

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.