1202.07(a)(iii) 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.
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).