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

rk 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).