TTAB clarifies test to meet “goods in trade” registration requirement in New York Times case

In re The New York Times Company (90106071, 90112154, 90112577, 90115155, 90115491 and 90115337; 30 March 2023), the TTAB has redefined what it takes to meet the “goods in trade” requirement for registrability in the age of the Internet by holding up the Lens.com three-factor test as the universal legal standard.

TTAB reverses examining attorney's refusal

The New York Times applied to register six column names as trademarks: THE NEW OLD AGE, A GOOD APPETITE, HUNGRY CITY, WORD FRIEND, OFF THE SHELF and LIKE A BOSS. The examining attorney issued a final refusal, explaining that the specimens failed to demonstrate that the marks were used on separate goods in trade. The New York Times appealed, and the question before the TTAB was whether the printed columns were independent goods in trade.

The TTAB reversed the refusal and held that the New York 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 that is no longer the case in the age of the Internet. The TTAB reasoned that determining whether a non-syndicated column is a good in trade should not depend on the format in which it is offered.

TTAB prioritises use of Lens.com test

The board held that 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. This 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 TTAB concluded that the columns qualified as goods in trade even though they were not syndicated.

With regard 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 merely an instructional manual or brochure telling the reader how to navigate the New York Times print edition.

With regard to the second factor, the board found it probative that a Google search of the proposed trademarks yielded the columns for which registration was sought. In the TTAB’s view, this demonstrated that each 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 Google search results to assess 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 TTAB concluded that this separate utility had a similar impact on the consumer’s experience as traditional syndication. In other words, the board found that the search results demonstrated that readers recognised the columns as separate goods with “independent value”.

Key takeaway

Under the TTAB’s ruling, online versions of columns that require a separate subscription may be registrable without showing acquired distinctiveness since the adoption of the Lens.com test implicitly includes evaluation of consumer perception and experience with the product. The board stated that its decision did not depend on whether the print columns had the same content as the online version.