T.M.E.P. § 1202.06
Goods in Trade
Executive summary:
This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.
For more information on trademark law, please see the Trademark Section of BitLaw.
Previous Section (§1202.05) | Next Section (§1202.07)
1202.06 Goods in Trade
Section 45 of the Trademark Act, 15 U.S.C. 1127, defines a "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 (emphasis added)." Before rights in a term as a trademark can be established, the subject matter to which the term is applied must be "goods in trade." Incidental items that an applicant uses in conducting its business (such as letterhead, invoices andbusiness forms), as opposed to items sold or transported in commerce for use by others, are not "goods in trade." See In re Shareholders Data Corp., 495 F.2d 1360, 181 USPQ 722 (C.C.P.A. 1974) (reports not goods in trade, where applicant is not engaged in the sale of reports, but solely in furnishing financial reporting services, and reports are merely conduit through which services are rendered); In re Compute-Her-Look, Inc., 176 USPQ 445 (TTAB 1972) (reports and printouts not goods in trade, where they are merely the means by which the results of a beauty analysis service is transmitted and have no viable existence separate and apart from the service); Ex parte Bank of America National Trust and Savings Association, 118 USPQ 165 (Comm'r Pats. 1958) (mark not registrable for passbooks, checks and other printed forms, where forms are used only as necessary tools in the performance of banking services, and the applicant is not engaged in printing or selling forms as commodities in trade).
1202.06(a) Goods Must Have Utility to Others
Affixing a mark to an item that is transported in commerce does not in and of itself establish that the mark is used on "goods." While a formal sale is not always necessary, items sold or transported in commerce are not "goods in trade" unless they have utility to others as the type of product named in the application.
Example: Holiday greeting cards sent by a law firm to its clients are not "goods," where applicant is merely sending its own cards through the mail as a holiday greeting, and the cards are not suitable for use by the recipients as a greeting card.
See Gay Toys, Inc. v. McDonald's Corp., 585 F.2d 1067, 199 USPQ 722 (C.C.P.A. 1978) (plaster mockup of toy truck not goods in trade, where there is no evidence the mockup is actually used as a toy); Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994), aff'd, 108 F.3d 1392 (Fed. Cir. 1997) (mark not registrable for games, where purported games are advertising flyers used to promote applicant's services and have no real utilitarian function or purpose as games); In re Douglas Aircraft Co., Inc., 123 USPQ 271 (TTAB 1959) (books, pamphlets and brochures that serve only to explain and advertise the goods in which applicant deals are not "goods"). Cf. In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) (ball point pens used to promote applicant's tools are goods in trade, where they have a utilitarian function and purpose, and have been sold to applicant's franchised dealers andtransported in commerce under mark); In re United Merchants & Manufacturers, Inc., 154 USPQ 625 (TTAB 1967) (calendar used to promote applicant's plastic film constitutes goods in trade, where calendar has a utilitarian function and purpose in and of itself, and has been regularly distributed in commerce for several years).
1202.06(b) Registration Must Be Refused if Trademark Not Used on Goods in Trade
If the specimens, identification of goods, or other evidence in the record indicate that the applicant uses the mark only on items incidental to conducting its own business, as opposed to items intended to be used by others, the examining attorney should refuse registration on the Principal Register under §§1, 2 and 45 of the Trademark Act; 15 U.S.C. §§1051, 1052 and1127, on the ground that the mark is not used on "goods in trade."
If a mark is not used on "goods in trade," it is not registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. 1052(f), or on the Supplemental Register.
If some, but not all of the items listed in the identification of goods are found not to be "goods in trade," it is not necessary to refuse registration of the entire application, but the examining attorney should require that these items be deleted from the identification of goods.
1202.06(c) "Goods in Trade" in Intent-to-Use Applications
In an intent-to-use application under §1(b) of the Trademark Act, the question of whether a mark is used on goods in trade usually does not arise until the applicant files an allegation of use under §1(c) or §1(d) of the Act, because this issue is based on the manner in which the mark is used. However, if the identification of goods in an intent-to-use application includes items that do not appear to be goods in trade, the potential refusal should be brought to the applicant's attention in the first action issued by the Office. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the Office is not precluded from refusing registration on this basis.