In re Oppedahl & Larson LLP

Citation: In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 U.S.P.Q.2d (BNA) 1370 (Fed. Cir. 2004)(full-text).

Factual Background
On May 3, 2001, appellant filed an “intent to use” trademark application to register the mark patents.com. The application identified the relevant goods as “computer software for managing a database of records and for tracking the status of the records by means of the internet.

The PTO refused to register the mark patents.com based on a finding that the mark is merely descriptive of applicant’s goods. In particular, the PTO found that the term “patent” only describes a feature of the goods, and the term “.com” is a top level domain indicator without any trademark significance. The PTO concluded that “.com” conveyed to the public that the mark was owned or used by a commercial entity or business.

Appellate Court Proceedings
The appellant appealed, challengint the PTO’s application of a strict rule that always disregards the use of “.com” in a trademark application.

The appellate court held that the Board was correct that the overall impression of ".com" conveyed to consumers the impression of a company or commercial entity on the internet. Further, substantial evidence supported the PTO’s finding that “patents” was descriptive of a feature of appellant’s goods because appellant’s website showed that it offered software to track patent applications and issued patents using the internet.

Further, tracking patents fell within the scope of the goods identified in the application. Thus, the term “patents” described a feature of the goods offered. An analysis of the commercial impression of the mark as a whole showed that the combination of “patents” and “.com” did not render the mark as a whole distinctive.

The court declined to adopt a rule that would extend trademark protection to all internet domain names regardless of their use. The decision of the PTO was affirmed.