In a precedential decision, the Trademark Trial and Appeal Board (the “Board”) reversed six refusals to register The New York Times Company’s (the “Times”) names of its newspaper columns, THE NEW OLD AGE, A GOOD APPETITE, HUNGRY CITY, WORK FRIEND, OFF THE SHELF, and LIKE A BOSS (the “Marks”).
The Times applied to register the six Marks in August 2020 for use in connection with columns covering various topics in Class 16 and providing online publications in Class 41.
The Examining Attorney (the “Examiner”) refused registration in Class 16 on the basis that the Marks were not used on separate goods in trade, as required under Trademark Act Sections 1, 2, and 42. Specifically, the Examiner said, “Portions of a periodically-issued printed publication, downloadable publication, or publication recorded on electronic media, such as columns or sections, are integral elements of the complete publication and are therefore generally not considered separate goods in trade.” The Examiner continued by noting that consumers generally rely on the mark that identifies the complete publication as the source identifier when selecting a periodically-issued publication and are often unfamiliar with column or section titles. The Examiner concluded that terms distinguishing one section of a newspaper from another can function as a trademark only when that section is advertised or promoted separately and apart from the complete publication. The Marks were not refused registration in Class 41 because the provision of an online non-downloadable column is considered a services and is not subject to the “goods in trade” requirement.
In response, the Times submitted evidence to show that the Marks are used outside the context of its newspaper and that these columns can be accessed directly through Internet search results. The Examiner disagreed, made the refusals final, and denied The Times’ request for reconsideration.
On appeal, the Board considered evidence of The Times’ use of each Mark as a column. The Examiner argued that the specimens of use showed that The Times used the Marks to distinguish its columns from other columns within the newspaper and not as their own publications. An example specimen for THE NEW OLD AGE mark is below:
Source: Op. pg. 11.
The Times countered that its Class 16 printed newspaper columns are independently accessible, making them goods in trade, and submitted Internet search engine results showing that consumers can independently access the newspaper columns with the same content either through Internet searches for the name of the column or at separately dedicated pages within the nytimes.com website. See below for the Google search results:
The Board found that the USPTO’s practice of issuing goods in trade refusals of non-syndicated columns in print publications is based on In re Broad. Publ’ns, Inc.[1] and Ex parte Meredith Publ’g Co.,[2] both of which were rendered before the advent of the Internet. Since those cases were decided, the Board found that changes in the marketplace for the delivery of news and opinion content have impacted consumer perceptions of what titles of non-syndicated columns represent. The Board held that the correct legal standard in determining whether non-syndicated newspaper columns are goods in trade should not rely on the format in which the columns are offered. Rather, whether a non-syndicated column that is printed, downloadable, or recorded on electronic media is a good in trade should be analyzed under the same standard that is used for other goods.
The Board adopted and applied the three-part test from Lens.com[3] as the new test for determining whether non-syndicated print columns or sections in printed publications or recorded media are goods in trade. The Lens.com factors include looking at whether the goods are:
- simply the conduit or necessary tool useful only in connection with the applicant’s primary goods or services;
- so inextricably tied to and associated with the primary goods or services as to have no viable existence apart from them; and
- neither sold separately nor of any independent value apart from the primary goods or services.
The Board noted that implicit in the Lens.com test is considering consumer perception as well as the consumer’s experience or interaction with the product.
In applying the Lens.com test to the Marks, the Board held that (1) the columns were not simply a conduit or necessary tool to obtain The New York Times newspaper in print format; (2) the Google search results showed that the columns may be retrieved by searching the column’s name and consumers may seek out the columns separately from the newspaper as a whole; and (3) while there is no evidence that the print columns are sold separately, the record shows that they possess independent value apart from the newspaper as a whole and all that is required is that the columns be “transported in commerce.” Based on this, the Board held that the columns associated with each of the Marks are considered goods in trade under the Lens.com test and reversed all six refusals.
[1] In re Broad. Publ’ns, Inc., 135 USPQ 374, 375 (TTAB 1962).
[2] Ex parte Meredith Publ’g Co., 109 USPQ 426, 426 (Comm’r Pats. 1956).
[3] Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (Fed. Cir. 2012).
