The New York Times’ Newsworthy Update to Trademark Registrations for Column Names
June 22, 2023
Authored and Edited by Margaret A. Esquenet; Alyssa Mottahed†
If you are one of the approximately 9.7 million subscribers of The New York Times, you may have encountered, and even enjoyed, one of its various columns, such as This Life and Modern Love. Until recently, printed magazine and newspaper section and column names could not easily be registered as trademarks because they were not considered “goods in trade.” As a result, column names could only be registered upon showing acquired distinctiveness. In re The New York Times Company, the Trademark Trial and Appeal Board (“TTAB”) reversed refusals of The New York Times’ marks, finding that non-syndicated newspaper columns in print format may be considered “goods in trade” and thus may be registered as trademarks without showing acquired distinctiveness.
The New York Times filed six applications seeking to register column names THE NEW OLD AGE, A GOOD APPETITE, HUNGRY CITY, WORK FRIEND, OFF THE SHELF, and LIKE A BOSS in Class 16. The Examining Attorney issued final refusals for each of the marks on the grounds that The New York Times’ marks “identif[ied] only individual portions of [A]pplicant’s publication” and thus are not used on separate “goods in trade.” The New York Times appealed the refusals to the TTAB.
Section 45 defines “trademark” as a “word, name, symbol, or device, or any combination thereof” that is used or intended to be used in commerce “to identify and distinguish his or her goods.” 15 U.S.C §1127. A mark is “use[d] in commerce” when use of a mark is made in the ordinary course of trade, and not merely to reserve a right in a mark. When marks are not used (or intended to be used) on items sold or transported in commerce for use by others, they are not “goods in trade” eligible for registration. For example, marks used when conducting business, like on letterhead, internal reports, and business forms, are not considered marks used on “goods in trade.” The United States Patent and Trademark Office (“USPTO”) has treated non-syndicated print newspaper columns (along with columns or sections of publications that are printed, downloadable, or recorded on electronic media) similarly; the USPTO has consistently found that non-syndicated print newspaper columns do not rise to the level of “goods in trade” because they are not “sold, syndicated, or offered for syndication separate and apart from the larger publication in which [they] appear[].” While the USPTO did carve out an exception, allowing the names of non-syndicated print columns to be registered upon showing acquired distinctiveness, the standard was still quite high.
The USPTO’s treatment of non-syndicated columns in print comes from two cases—In re Broadcast Publishing (1962), a TTAB case, and Ex parte Meredith Publishing (1956), a case from the Commissioner of Patents—both of which were decided before the internet, when newspapers and magazines were only delivered physically. In this context, the TTAB held, columns and sections within these publications were not considered independent items in commerce but part of an integrated whole, and the prevailing consumer perception was that the column names were tools to distinguish the sections within one publication, rather than distinguish one section of the applicant’s publication from sections of another publisher’s publications.
In 1998, in Ludden v. Metro Weekly, the U.S. District for the District of Columbia commented on the rapidly changing technological world and cautioned against bright-line rules excluding column titles from trademark protection. Because reading printed material (like columns) separate from an “integrate whole” became possible, and sometimes even preferred, the court discussed, in dicta, the potential for columns to have distinct identities separate from the publication in which they were found.
Inspired by the district court’s discussion in Ludden, the TTAB embraced the opportunity in In re New York Times Company to adopt a new standard for whether a non-syndicated column is a “good in trade” and entitled to registration without showing acquired distinctiveness. The TTAB adopted the three-part test created by the United States Court of Appeals for the Federal Circuit in its 2012 Lens.com, Inc. v. 1-800 Contacts, Inc. (“Lens.com test”) decision, which is used to analyze “goods in trade.” The test looks at whether the applicant’s 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.”
Turning to The New York Times’ applications, the TTAB applied the Lens.com test and held the columns covered by those marks constituted “goods in trade,” even though they were not syndicated. First, the TTAB found that the individual columns are not simply a “conduit or necessary tool” to obtain The New York Times’ primary goods (i.e., its print newspaper). The TTAB contrasted these columns with annual investment reports or instructional brochures, both of which are “necessary tool[s].”
Second, the marks are not “so inextricably tied to and associated with” The New York Times’ print newspaper as to have “no viable existence” apart from the newspaper. As support, the TTAB cited Google search results which indicated that consumers could access the columns by searching the name (i.e., the proposed trademark) of each column, showing that consumers perceive that the columns exist apart from the newspaper as a whole.
Finally, although the TTAB acknowledged there was no evidence that the columns are “sold separately,” or syndicated, it found that actual sale of the columns was unnecessary so long as they were transported in commerce. And these columns were, based on the Google search results and other evidence of third-party websites referring to the columns, separately searchable for consumers to look for and read, such that the columns have independent value separate from the publication as a whole. In considering these factors, the TTAB ultimately reversed the refusals to register the New York Times’ marks.
The dawn of the internet has catapulted widespread availability of print publications to consumers, allowing non-syndicated print columns to gain independent value separate from the print newspapers in which they can be found. Beyond non-syndicated print columns, this decision will also apply to downloadable and recorded columns and sections; however, online non-downloadable columns or sections will likely not be impacted by this decision because they are Class 41 services and accordingly not subject to a “goods in trade” refusal. It is also important to note that while the TTAB’s adoption of the Lens.com test permits registration of non-syndicated column marks without proof of acquired distinctiveness, the TTAB did not create “a per se rule that all non-syndicated newspaper columns existing in print format are goods in trade.”
The case is In re The New York Times Co., USPQ2d (BNA) 392 (T.T.A.B. 2023) (precedential)
†Alyssa Mottahed is a Summer Associate at Finnegan.
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