1402.03(e) Identifying Printed, Downloadable, or Recorded Publications with Specificity
Identifications for publications must indicate the specific type (e.g., magazines, newsletters, periodicals, etc.) and the literary subject matter of the publications. Additionally, for proper classification, identifications for publications that are goods must indicate if the publications are "printed," "downloadable," or "recorded on computer media" (or equivalent wording). Publications are classified in Class 16, if printed, and in Class 9, if downloadable or recorded on computer media.
The requirement to indicate that identifications for publications are "printed" for classification in Class 16 went into effect on January 1, 2021.
The Nice Class Heading for Class 16 includes "printed matter," and the Class Heading for Class 9 includes "recorded and downloadable media." The Nice Alphabetical List also includes publications such as "printed sheet music" in Class 16 and "electronic sheet music, downloadable" in Class 9. Thus, it is necessary to indicate the format of the publications as printed, downloadable, or recorded on electronic media, in order to properly classify the goods.
Example - "Printed magazines in the field of medicine" is acceptable in Class 16, the class for printed matter.
Example - "Downloadable electronic books in the field of golf instruction" is acceptable in Class 9, the class for downloadable media.
In the case of publications of a specialized nature, the identification should describe the goods by specific names or wording that explains their specialized nature.
Example - "Printed storybooks" is acceptable in Class 16.
Even if the mark itself indicates the subject of a publication, the identification must specify the subject matter of the goods to enable informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d). Generally, the identification should include a particular subject matter, e.g., biology or history. However, "general human interest" and "general interest" are acceptable subject matters if they are recognized as terms of art in particular industries, such as the magazine and newsletter industries. See TMEP §1402.03(f) regarding recognition of industry terms evidenced by dictionary definitions or other authoritative references. "General human interest" indicates that a wide range of topics may be covered that appeal to the general public.
Example - "Printed magazines and newsletters in the field of general human interest" is an acceptable identification in Class 16.
Nonetheless, the examining attorney must require an amendment to the identification language when it includes broad wording, such as "general human interest," that would normally be acceptable in the industry, but the specimen(s) shows that the actual goods or services are limited to a particular subject matter. See TMEP §1402.05.
If the terms "general human interest" and "general interest" do not have a specific meaning in the identified industry, the particular subject matter may require further specification in order to provide public notice and enable informed judgments concerning likelihood of confusion under 15 U.S.C §1052(d). For example, "printed books in the field of general human interest" in Class 16, "downloadable video recordings in the field of general interest" in Class 9, and "general feature audio recordings" in Class 9 are not acceptable identifications because the subject matter of the goods is indefinite.
As a general rule, books should be described by subject matter (e.g., "printed religious books" or "printed travel books"). In the case of a mark used by a publishing house on books, a general identification, such as "a house mark for printed books" or "a full line of printed books" is sufficient if supported by the record. See TMEP §§1402.03(b), 1402.03(c). However, if the goods are restricted to certain types of literature, such as science fiction, engineering, romance, or poetry, the identification should so indicate. The applicant may also indicate the channels of trade or groups of purchasers for the goods.
Identifications for "electronic publications" must indicate the type and subject matter of the publications and must specify that the goods are downloadable or recorded on computer media for classification in Class 9.
Example – "Electronic publications, namely, {indicate specific type of publication, e.g., book, magazine, manual} featuring {indicate subject matter} recorded on computer media" is acceptable in Class 9.
Example – "Downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}" is acceptable in Class 9.
See TMEP §1402.11(a)(x) regarding the Class 41 service of providing online publications.