IP Law Daily, TRADEMARK—TTAB: Refusal to register New York Times marks for non-syndicated column titles reversed, under new test, (Apr 5, 2023)

By Robert Margolis, J.D.

Changes in online news delivery requires new test for determining whether non-syndicated columns or sections of publications qualify as “goods in trade,” Board holds.

Internet technology, which permits consumers to search for and access non-syndicated newspaper columns separate from the whole of the newspapers in which they appear, requires a new test for determining whether those column titles can be registered as “goods in trade,” the Trademark Trial and Appeals Board has held in a precedential opinion. The Board reversed an Examining Attorney’s refusal to register six marks for column titles for which The New York Times Company (“NYT”) had applied, noting that she had relied on tests formulated in the print-only era that had become outdated given how news is delivered in the internet age (In re: The New York Times Co., March 30, 2023, Hudis, J.).

Six marks. The New York Time Company (NYT) applied to register six marks in International Classes 16 and 41 for “columns” on various subjects: THE NEW OLD AGE (columns on science, aging, health, and personal finance); A GOOD APPETITE (columns on cooking, food, and dining); HUNGRY CITY (columns on restaurants, cooking, food, and dining); WORK FRIEND (columns on business, office, money, careers, and work-life balance); OFF THE SHELF (columns on personal finance, work-life balance, careers, and business); and, LIKE A BOSS (columns on careers, work, and business). The Examining Attorney refused registration, concluding that the marks only identify “individual portions” of the NYT’s full publication, and therefore are not separate goods in trade. The refusals concerned only the Class 16 goods; thus, the Class 41 services were not the subject of the NYT’s appeal to the Board.

Goods in trade. The Board began with a general background about a “goods in trade” refusal, noting that it derives from Sections 1, 2, and 45 of the Trademark Act, which provide in general that a trademark must identify and distinguish an applicant’s “goods.” Proposed marks not used on “goods in trade” are not eligible for registration. See Trademark Manual of Examining Procedure (“TMEP”), § 1202.06 (July 2022).

Columns. The Board then explained that in the past, it has treated non-syndicated print newspaper columns as failing to rise to the level of “good in trade,” because to be a “good in trade,” a column or other section of a publication must be “sold, syndicated, or offered for syndication separate and apart from the larger publication in which it appears.” TMEP § 1202.07(a). An exception to this is when a non-syndicated column can show acquired distinctiveness under Section 2(f), or is applied for on the Supplemental Register.

The Board noted that this historic treatment is based on decisions issued at a time when columns were only available to consumers as part of the overall purchase of a newspaper, magazine, or other type of print publications. In contrast, because Class 41 services include the provision of online non-downloadable columns, registration in that Class is not subject to a “goods in trade” refusal. That is because such columns can be accessed directly and exist independent of the complete publication. But the TMEP provides no guidance regarding the treatment of a proposed mark that identifies both print and online news or opinion columns, the Board noted.

The NYT was not seeking registration of the proposed marks under Class 16 as “goods in trade” based on acquired distinctiveness, nor was it seeking registration on the Supplemental Register. Therefore, the Board had to determine whether the non-syndicated columns, with both online and print manifestations, could qualify as “goods in trade.”

New analysis. The Board approached the question by noting that the Examining Attorney had relied on precedent that arose before the advent of the Internet and the resulting availability to consumers of electronic media. Consumers now have the ability to search for and download sections of publications, including non-syndicated columns, directly and without necessarily having to purchase or access the integrated whole of the publication.

As the Board noted, the leading precedent regarding non-syndicated columns, Ex parte Meredith Publ’g, 109 USPQ 426 (Comm’r Pats. 1956), long pre-dated the internet age, and, more important, did not purport to provide a rigid rule about sections of a publication, but rather noted how the critical issue was consumer perception. Did the consumer perceive a section of a publication to be a unique good in trade, separate from the publication as a whole? Given the prior print-only delivery of an entire publication of which a section is just a part and could not be separately purchased, the Board under the old technology had come down on the side of finding that individual sections, and non-syndicated columns, are not goods in trade because consumers did not perceive them as such.

But the Board observed that Meredith and other similar precedents called for flexibility and for examining the context in which the sections or columns appeared. It noted that a more recent decision, Ludden v. Metro Weekly, 8 F. Supp. 2d 7 (D.D.C. 1998), found that the title of a newspaper section can be protected as a trademark, and cautioned courts against taking the overly rigid approach of making semantic distinctions between columns offered in print or digital media. Ludden discussed at length how Internet technology and how publications are delivered online has “the potential to radically alter readers’ view of the printed matter that they receive.” Based on the reasoning in Ludden and the flexibility presaged in Meredith, the Board determined that “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 delivered.” Instead, it should be analyzed using the same standard as other goods in trade.

The Board thus adopted the three-part test from the Fourth Circuit’s decision in Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (4th Cir. 2012), whether the goods are: “(1) simply the conduit or necessary tool useful only in connection with the applicant’s primary goods or services; (2) so inextricably tied to and associated with the primary goods or services as to have no viable existence apart from them; and (3) neither sold separately nor of any independent value apart from the primary goods or services.” None of the factors alone is dispositive, and the inquiry is a factual determination to be made on a case-by-case basis.

Among the key factors are: (1) evidence of promotion, use, advertising expenditures for particular sections or columns such that they become identified as source indicators; (2) promotion of individual columns or section titles that distinguish them from those in other publications rather than just those within the applicant’s publication; and (3) whether the section or column is a “removable or pull-out section.” Applying the Lens.com factors to the NYT’s proposed marks, the Board found that they rise to the level of goods in trade, even though the columns are not syndicated.

The columns are not merely a “conduit or necessary tool” to obtain NYT’s primary goods, The New York Times newspaper in print format, in the way that a company’s (non-registrable) annual report is merely a conduit for information about a company, the Board found.

Nor are the columns “so inextricably tied to and associated” with the NYT’s print edition of the paper so as to have “no viable existence” apart from it. The Board relied on NYT’s evidence of how the columns can be individually searched for and retrieved, separate from the newspaper as a whole. Indeed, the evidence showed that the column titles themselves can be, and are, used as search terms, such that the reading of those columns individually “not only is possible but perhaps even preferred.”

Finally, while there was no record evidence that the columns are separately sold, the Board found that the record shows the columns possess “independent value” separate from the NYT’s newspaper as a whole. Discrete sale of columns is not necessary to meet the “use in commerce” requirement, so long as the goods are “transported” in commerce, and the search engine results were evidence that they are. That references to the HUNGRY CITY column are found on other websites further shows the columns have “independent value” from the NYT’s newspaper as a whole, the Board found. Given internet technology, syndication is no longer the only way that a column can have independent value from the publication in which it appears.

Based on its application of the Lens.com factors, the Board reversed the refusals to register in International Class 16. It noted that the decision was not dependent on conflating online columns in International Class 41 with print columns in International Class 16, nor was the Board creating a per se rule that all non-syndicated newspaper columns in print format are goods in trade.

The Case is Serial Nos. 90106071, 90112154, 90112577, 90115155, 90115491 and 901153371.

Attorneys: Jordan A. Lavine (Flaster Greenberg PC) for The New York Times Co. Catherine Caycedo for the USPTO.

Companies: The New York Times Co.

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