TMEP 1202.07(a)(iii): Marks That Identify Columns and Sections of Printed Publications in §1(b), §44, and §66(a) Applications

This is the October 2015 Edition of the TMEP

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1202.07(a)(iii)    Marks That Identify Columns and Sections of Printed Publications in §1(b), §44, and §66(a) 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, syndicated, or offered for syndication, 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 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)). 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 that is not separately sold, syndicated, or offered for syndication, 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 USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark will identify a column or section of a printed publication that is not separately sold or syndicated, the examining attorney may make the refusal prior to the filing of the allegation of use.

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 goods in trade where the record indicates that the mark will identify a column or section of a printed publication that is not separately sold, syndicated, or offered for syndication. 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).