“Goods in Trade” in the Age of the Internet | McDermott Will & Emery
[author: Lillian Spetrino]
The Trademark Trial & Appeal Board recently redefined what it takes in the age of the internet to meet the “goods in trade” requirement for registrability by holding that the Lens.com three-factor test is the universal legal standard for that inquiry. In re The New York Times Company, Serial Nos. 90106071, 90112154, 90112577, 90115155, 90115491, 90115337 (TTAB Mar. 30, 2023) (Lykos, J.) (precedential).
The New York Times applied to trademark six column names: “The New Old Age,” “A Good Appetite,” “Hungry City,” “Work Friend,” “Off the Shelf” and “Like a Boss.” The Examining Attorney issued a final refusal, explaining that the specimens did not demonstrate that the marks were used on separate goods in trade. The Times appealed. The question before the Board was whether the printed columns were independent “goods in trade.”
The Board reversed the refusal and held that The Times could register the marks. While past decisions had found that non-syndicated print newspaper columns failed to rise to the level of “goods in trade,” the Board reasoned that those decisions were based on the fact that such columns were only available to consumers as part of an overall purchase of a particular print publication—but in the age of the internet, that is no longer the case. The Board reasoned that determining whether a non-syndicated column is a good in trade should not depend on the format in which it is offered.
The Board held that going forward, the appropriate test to apply to non-syndicated print columns or sections in printed publications or recorded media is the three-part test found in the 2012 Federal Circuit Lens.com decision. The Federal Circuit test outlines the following factors to consider when evaluating whether an applicant’s goods are “goods in trade”:
- Are the goods for which registration is sought a conduit or necessary tool useful only in connection with the applicant’s primary goods or services?
- Are the goods for which registration is sought so inextricably tied to and associated with the primary goods or services as to have no viable existence apart from them?
- Are the goods for which registration is sought neither sold separately nor do they have any independent value apart from the primary goods or services?
Applying the Lens.com factors to the print columns, the Board concluded that the columns were “goods in trade” even though they were not syndicated.
As to the first factor, the Board found that the columns were not just a conduit or necessary tool to get to The New York Times newspaper in print. The Board reasoned that the columns were not like an instructional manual or brochure telling the reader how to navigate The New York Times print edition.
Regarding the second factor, the Board found probative that a Google search of the proposed trademarks yielded the columns for which registration was sought. The Board found that this demonstrated that each individual print column was not so “inextricably tied to and associated with The New York Times print edition of the newspaper as to have no viable existence apart from the print newspaper as a whole.”
The Board also relied on the Google search results in assessing the third Lens.com factor, finding that the results showed that the columns’ utility was more than just sections within the print edition of The New York Times. The Board concluded that this separate utility had a similar impact on the consumer’s experience as would a traditional syndication. In other words, the Board found that the search results demonstrated that readers recognized the columns as separate goods with “independent value.”
Practice Note: Under the Board’s ruling, online versions of columns that require a separate subscription may be registrable without a showing of acquired distinctiveness, since adoption of the Lens.com test implicitly includes evaluation of consumer perception and experience with the product. The Board noted that its decision was not dependent on whether the print columns had the same content as the online version.
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