T.M.E.P. § 1202.07
Marks That Identify Columns or Sections of Publications

Executive summary:

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1202.07 Marks That Identify Columns or Sections of Publications

1202.07(a) Marks That Identify Columns or Sections of Printed Publications

A column, section or supplement of a printed publication is normally not considered to be separate "goods" or "goods in trade" unless it is sold, syndicated, or offered for syndication separate and apart from the larger publication in which it appears. In re Broadcasting Publications, Inc., 135 USPQ 374 (TTAB 1962); Ex parte Meredith Publishing Co., 109 USPQ 426 (Comm'r Pats. 1956). This is true even of a removable or separable "pullout" section of a newspaper or other publication. In Meredith, the issue was analyzed as follows:

The basic question is whether or not, under the circumstances of use, the section title is A name adopted andused by the publisher to identify his goods and distinguish them from those of others. The "goods" actually are magazines-not sections of magazines. When the magazine is purchased, the purchaser receives the sections whether he wants them or not, and it is doubtful that magazine readers ordinarily purchase a magazine merely to receive a section of it, or think of a magazine merely in terms of a section title. Sections of magazines are not in and of themselves articles of commerce other than as a part of an integrated whole; and we must therefore be concerned with whether a section title actually identifies and distinguishes, and if so, what it distinguishes. Under these circumstances it becomes necessary to ask: Was the mark adopted to identify a section of applicant's magazine and distinguish it from sections of other publishers' magazines, or was it adopted to distinguish one section of applicant's magazine from the other sections of its magazine? Ordinarily, it is the latter (emphasis in original).

109 USPQ 426.

1202.07(a)(i) Syndicated Columns and Sections

Columns or sections that are separately sold, syndicated, or offered for syndication do constitute goods in trade. A mark that identifies a column or section that is separately syndicated or offered for syndication is registrable on the Principal Register without resort to §2(f) of the Trademark Act, 15 U.S.C. 1052(f), if registration is not barred by other sections of the Act.

1202.07(a)(ii) Non-Syndicated Columns and Sections

A column or section of a printed publication that is not separately sold, syndicated, or offered for syndication is not, in and of itself, considered to be separate goods in trade. Therefore, where the specimens, identification of goods, or other evidence in the record indicates that the mark identifies a column or section of a printed publication that is not separately sold, syndicated, or offered for syndication, 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 and 1127, on the ground that the mark is not used on separate goods in trade.

Marks that identify non-syndicated columns or sections of printed publications are registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. 1052(f), if the column or section is shown to have acquired separate recognition and distinctiveness. The applicant who seeks registration on the Principal Register bears the burden of establishing, through evidence of promotion, long use, advertising expenditures, and breadth of distribution or sales figures, that the public has come to recognize the proposed mark as an indicator of source.

The evidence of acquired distinctiveness must show that the column or section title is used and promoted to distinguish applicant's column or section from the columns or sections of other publishers' publications rather than merely to distinguish applicant's column or section from other columns or sections of applicant's publication. Metro Publishing v. San Jose Mercury News, 987 F.2d 637, 25 USPQ2d 2049 (9th Cir. 1993); In re Broadcasting Publications, Inc., 135 USPQ 374 (TTAB 1962).

The amount of evidence needed to establish distinctiveness must be evaluated by the examining attorney on a case-by-case basis, in light of the type of column or supplement. If the mark identifies a removable or pull-out section, a lesser degree of evidence might be required to establish distinctiveness. Of course, the amount of evidence needed to establish distinctiveness in any particular case will also vary depending on the strength or weakness of the mark. TMEP §1212.04(a).

Marks that identify non-syndicated columns or sections of printed publications, but have not yet acquired distinctiveness and therefore are not registrable under §2(f) of the Act, are registrable on the Supplemental Register, if registration is not barred by other sections of the Act. Ex parte Meredith Publishing Co., 109 USPQ 426 (Comm'r Pats. 1956).

1202.07(a)(iii) Marks That Identify Columns and Sections of Printed Publications in Intent-to-Use Applications

Since a refusal to register a mark that identifies a column or section of a printed publication is based on whether the column or section is separately sold or syndicated, the issue ordinarily does not arise in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. 1051(b), until the applicant has filed either an amendment to allege use under §1(c), or a statement of use under §1(d), 15 U.S.C. §§1051(c) and (d). However, if the identification of goods indicates that the mark is intended to be used to identify a column or section of a printed publication that is not separately sold or syndicated, the potential refusal on the ground that the proposed mark is not used on separate goods in trade should be brought to the applicant's attention in the first Office Action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant prior to the filing of the allegation of use, the Office is not precluded from refusing registration on this basis.

1202.07(b) Marks That Identify Columns and Sections of Online Publications

An online publication is considered a service rather than a product. Therefore, refusal of registration on the ground that the proposed mark is not used on goods in trade is inappropriate. Unlike a printed column or section, an online column or section can be accessed directly and can exist independent of any single publication. See Ludden v. Metro Weekly, 8 F. Supp.2d 7, 47 USPQ2d 1087, 1093 (D.D.C. 1998). Therefore, a mark that identifies an online column is registrable on the Principal Register without resort to §2(f) of the Trademark Act, 15 U.S.C. 1052(f), if registration is not barred by other sections of the Act.