INTERNATIONAL CLASS 16

(Paper goods, books, publications)

An Overview

[Prepared by Michael Levy, Senior Attorney, Law Office 110. August 24, 2000. Updated June 5, 2001 and November 13, 2002. Please note that this document itself cannot be cited as authority; this overview does contain numerous case cites and references to Examination Guides and pertinent TMEP sections which may be cited. This overview is intended for use as an internal training and review guide.]

I. GENERAL SCOPE OF CLASS 16 1

II. INDEFINITE TERMINOLOGY 2

III. DESCRIPTIVENESS AND INCAPABILITY (GENERIC MARKS) 3

IV. RECENT LAW REGARDING GENERIC PUBLICATION MARKS 3

V. TITLES OF SINGLE WORKS 5

VI. REGISTRABILITY OF MARKS THAT IDENTIFY COLUMNS OR SECTIONS OF PUBLICATIONS 6

VII. GOODS IN TRADE 9

VIII. PHANTOM MARKS 11

IX. MARK WHICH IS ONLY THE NAME OF A CHARACTER

IN A PUBLICATION 11

X. BOOK COVER ILLUSTRATIONS FUNCTIONING AS A MARK 11

XI. NAME OF AN ARTIST FUNCTIONING AS A TRADEMARK 11

XII. NAME (PSUEDONYM) OF AN AUTHOR DOES NOT FUNCTION AS A TRADEMARK 11

XIII. TREATMENT OF PUBLICATION TERMS CLASS 16 12

(listing of terms typically regarded as

generic, descriptive, suggestive)

[The Table of Contents contains internal hypertext links. If viewing online just click on the subject.]

I. GENERAL SCOPE OF CLASS 16:

(Paper goods and printed matter)

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Explanatory Note

This class includes mainly paper, goods made from that material and office requisites.

Includes, in particular:

paper knives;

duplicators;

plastic sheets, sacks and bags for wrapping and packaging.

Does not include, in particular:

certain goods made of paper and cardboard (consult the Alphabetical List of Goods);

colors (Cl. 02);

hand tools for artists (for example: spatulas, sculptors’ chisels) (Cl. 08).

+Note: Downloadable publications and publications recorded on electronic media are in Class 9; online publications and publications delivered by electronic mail are in Class 41.

+Note: Playing cards are now classified in international class 28 [with an effective date of 2-1-02]

X-Search 1.1 includes the following in “016”[cc]: 009, 035, 041, 042, A, B, 200.

II. INDEFINITE TERMINOLOGY

Periodicals and publications

Periodicals is now acceptable, but the subject matter must be specified. Publications is indefinite. The applicant may substitute “periodicals” if accurate and specify subject matter. Alternatively, the applicant may amend the identification to indicate whether the goods are pamphlets, brochures, newsletters, journals, magazines or other specific types of publications and the applicant must also indicate the field or subject matter of the publications. See form paragraph C39-12.

Stationery products: This can cover a broad range of goods and is indefinite because of the work “products.” “Stationery” alone is acceptable by itself or when listed with other Class 16 goods.

NOTE: Stationery used merely in the conducting of one’s business is not considered to be goods in trade and should be deleted from the application. See form paragraph c39-14: Use of a mark on ^ is not trademark use because these items are not goods that an applicant provides to others, but rather incidental items used in conducting a business enterprise. TMEP §§1202.06 et seq. Therefore, the applicant must amend the identification to delete any items used merely to conduct a business. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §1202.06(b).

Registered marks to be aware of: The word “spiral” is a registered mark for stationery items (Registration No. 314,791 and other). Acceptable language in lieu of this registered term would be wire-bound (note books, etc.). “HI-LITER” is registered for “marking pens” (U.S. Registration No. 0774991) so we will not accept this spelling in an identification of goods. “Highlighting pens”, “highlighting markers” or even “highlighters” is acceptable. “POST-IT” (Registration No. 1198694 and others) and STICKY NOTE and design (Reg no. 1906499) are registered marks. “Repositionable adhesive stationery notes”, or “adhesive backed stationery notes” may be substituted therefore.

“Pads” is unacceptable terminology for Class 16 items. The use or purpose of the pads must be included in the identification language: writing pads, note pads, blotting pads, etc.

“Cards” is indefinite. The nature of the cards must be indicated (e.g. business cards, greeting cards, note cards.) Telephone calling cards, not magnetically encoded are in class 16, telephone calling cards, magnetically encoded are in class 9. Similar treatment with “credit cards”, not magnetically encoded is 16, “credit cards, magnetically coded” is class 9.

+ Be aware that just because the goods are made of paper does not automatically mean that the goods are in class 16. For example, paper plates and paper cups are in class 21; paper airplanes and paper dolls are in class 28; and litmus paper, blueprint paper and photosensitive paper are in class 1.

SPECIAL ISSUES

III. Descriptiveness and incapability (generic marks)

Publication marks are often descriptive or highly suggestive; most often because they describe either the subject matter or class of purchasers of the publication. The form paragraphs include paragraphs addressing both types of refusals (Q30.13, Q30.15). A more difficult determination is the distinction between merely descriptive and generic marks. The CAFC addressed this issue in H. Marvin Ginn Corporation v. International Assoc. of Fire Chiefs, Inc., 228 USPQ 528 (CAFC 1986). See also In re Kalmbach Publishing Co., 14 USPQ2d 1490 (TTAB 1989).

+Form paragraph q30-13 is used for refusing marks as descriptive of subject matter of publication:

+Form paragraph q30-14 is used for refusing marks as generic terms for publications.

+Form paragraph q 30-15 is used when the mark identifies the class of purchasers of the publication.

IV. Recent case law regarding generic publication marks

It is important to be aware of three recent TTAB decision reversing the Examining Attorney with regard to generic publications marks. Collectively, these cases indicate that refusing a publication mark as generic should be carefully considered.

In re Women's Publishing Co. Inc. 23 USPQ2d 1876 (TTAB 1992)

Held that "Decorating Digest" is merely descriptive of magazine featuring articles on decorating; that applicant's evidence showing that primary significance to relevant public of words "Decorating Digest" is that of magazine published by applicant, and not generic expression for applicant's magazine, warrants finding that words have become distinctive of applicant's magazines and that mark is registrable on Principal Register pursuant to Trademark Act Section 2(f).

The Board stated in relevant part, at page 1877:

The evidence of genericness offered by the Examining Attorney, aside from the dictionary definitions of the words making up applicant's mark, consists of Nexis excerpts wherein appear the words "decorating magazines," "decorating books" and "decorating publications." We could find no appearances of the term "decorating digest" per se. We agree with applicant that the Examining Attorney has not produced sufficient evidence that the public would understand DECORATING DIGEST to refer to a class of magazines. Rather, considering all of the evidence of record, it appears to us that the primary significance to the relevant public of the words DECORATING DIGEST is a magazine published by applicant and not a generic expression for applicant’s magazine.

In re Homes & Land Publishing Corp., 24 USPQ2d 1717 (TTAB 1992)

The Examining Attorney made final a requirement for the disclaimer of the wording RENTAL GUIDE for use in connection with “real estate listing magazine for rental properties”. The applicant has submitted a claim of acquired distinctiveness pursuant to Trademark Act Section 2(f) with respect to that wording. The Board reversed the Examining Attorney’s refusal holding that evidence provided by the examiner was insufficient to demonstrate the mark was generic. The Examining Attorney’s evidence consisted of dictionary definitions and 3 of 18 retrieved excerpted LEXIS/NEXIS® stories. As to the LEXIS/NEXIS® stories the Board stated at 1718 “In this case, the Lexis/Nexis printout indicates that the search found eighteen stories. Three stories were submitted as evidence. One of the three was a reference to applicant. It is extremely difficult, if not impossible, to find, on the basis of such a weak showing, that the term in question is generic of the goods on which it is being used. Moreover, there was no indication from the Examining Attorney that the submitted articles constitute a representative sample of the entirety of the search results.

In re Waverly Inc., 27 USPQ2d 1620 (TTAB 1993)

Held that "Medicine," for medical journal, is not generic, in view of lack of probative evidence to show that relevant purchasing public understands "medicine" to refer to medical journals, in view of fact that journal is directed to relatively small, highly sophisticated audience, and in view of commercial realities of medical publishing. The mark was allowed to register with a claim of acquired distinctiveness pursuant to Trademark Act Section 2(f).

“The chief difficulty in categorizing publications comes about because "unlike most goods whose appearance will convey their nature, periodicals must depend principally on their titles to convey their character. Courts have been reluctant to find a magazine title generic, perhaps in part because the magazines in such cases were not literally the class title designated but were about that class." CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11, 188 USPQ 612, 615 (2d Cir. 1975) (emphasis in original); see also Technical Publishing Company v. Lebhar-Friedman, Inc., 729 F.2d 1136, 222 USPQ 839, 841 (7th Cir. 984) [recognizing that since magazine titles are primary means of conveying contents of magazines, "many magazine titles fall near the line between generic and descriptive marks"].” Waverly Inc., 27 USPQ2d 1620 at 1623

+Quirk in the case law to be aware of: See In re San Diego National League Baseball Club, Inc., 224 USPQ 1067 (TTAB 1983) (Board affirmed the refusal to register SAN DIEGO PADRES REPORT and SAN DIEGO PADRES for newsletters which were concerned with the San Diego Padres baseball team because the marks immediately conveyed the fact that the periodicals dealt with the San Diego Padres. The Padres case was cited as authority in the more recent case of In re Wielinski, 49 USPQ2d (TTAB 1998) (DIAMOND T for use on printed periodical magazines, about DIAMOND T trucks, was held to be descriptive),

V. TITLES OF SINGLE WORKS

If the proposed mark is the title of a single creative work, the proposed mark is considered to define a distinct genus of goods and does not indicate the source of the goods and is refused registration under Trademark Act Sections 1, 2 and 45, 15 U.S.C. Section 1051, 1052 and 1127 for failure to function as a trademark. If the applicant uses the mark to identify a series, rather than a single work, then the applicant may provide evidence to demonstrate so for the record, and the refusal could be withdrawn.

If a mark is being refused as a title of a single work, the mark may not be registered on the Supplemental Register or with a claim acquired distinctiveness pursuant to Trademark Act Section 2(f). Similarly, the principles of secondary source do not apply; that the mark is also used on other goods or services does not overcome this refusal.

Relevant form paragraph is Q15.

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 and used 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 (9^th 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 On-Line Publications

An on-line 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 on-line 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 on-line 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.

Identification and Classification of On-Line Publications

This is covered in TMEP §1402.11(a) [page 1400-63]

All on-line publications are classified in Class 41 no matter what the subject matter. An acceptable identification would be:

“Computer services, namely providing on-line [indicate specific nature of publication, e.g., magazine] in the field of [indicate subject matter of publication], in Class 41.”

A column or section of an on-line publication would be identified as “computer services, namely, providing a [column or section] in an on-line [indicate type of publication] in the field of [indicate subject matter of publication],” in Class 41.

The examining attorney should verify from the specimens that the information is presented in a “publication” format. An on-line magazine in Class 41 must really look and act like a magazine, i.e., contain monthly or periodic articles, sections, features, advertisements, credits, etc. If it does not, a more appropriate identification would be “providing a website on global computer networks featuring information in the field of ________, in Class ___” (classification dependent on the content).

If an applicant identifies its goods as “publications, namely ...,” and it becomes apparent during examination that the goods are in fact on-line publications, the applicant may amend the identification to indicate that the goods are on-line publications in Class 41, since the term “publications” is broad enough to encompass both printed and on-line publications. If such an amendment is entered after publication, the mark must be republished, due to the change in classification. On the other hand, if the applicant identifies its goods as “printed publications...,” the identification cannot be amended to indicate that the goods are “on-line publications,” because this would exceed the scope of the original identification. 37 C.F.R. §2.71(a). [emphasis added]

VII. GOODS IN TRADE

Various items such as applicant’s own stationery, reports which are the end result of a service and one’s own advertising materials are not goods in trade. Again, Examination Guide No. 1-99 had a good discussion of the issue, which has since been incorporated into the latest edition of the TMEP. The relevant portion of the TMEP is reproduced in relevant part below.

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 and business 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.

Ø 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 and transported 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 and 1127, 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.

The following case is no longer referenced in the TMEP section, probably because it is so old, but See also Ex Parte Kansas City Southern Railway Co., 11 USPQ 67 (Comm'r Pats. 1931), reh'g denied 11 USPQ 3 (Comm'r Pats. 1931) (railroad timetable not vendible commodity or marketable product, but is merely incidental to transportation service).

The following guidance appeared in the Examination Guide 1-99, but does not appear in the current edition of the TMEP. Its advice still appears to make sense though:

C. "Goods in Trade" in Applications Based on Section 44

If the application is based solely on §44 of the Trademark Act, 15 U.S.C. §1126, the issue of whether the mark is used on goods in trade does not arise, since use is not required for a §44 application. However, if the application is based on both §44 and either §1(a) or §1(b), the examining attorney should refuse registration if the record indicates that the mark is not used on "goods in trade."

VIII. PHANTOM MARKS

The issue of phantom marks arises occasionally with respect to publications (as well as in other classes). For example the drawing will read “Dr. XYZ on XXXX” and the application will state that the XXXX indicates various subjects; or the drawing will include a blank line ______ with an explanation that the ______ stands for different years. The Office will not register phantom marks. See TMEP §1214 reproduced in relevant part below: