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In re Oppedahl & Larson Llp - 373 F.3d 1171 (Fed. Cir. 2004)

Rule:

A mark is merely descriptive if it consists merely of words descriptive of the qualities, ingredients or characteristics of the goods or services related to the mark. Thus, a mark is merely descriptive if it immediately conveys knowledge of a quality or characteristic of the product. A mark may be merely descriptive even if it does not describe the "full scope and extent" of the applicant's goods or services. Descriptive marks can qualify for registration on the principal register of trademarks if they acquire secondary meaning, i.e., distinctiveness.

Facts:

Appellant filed an intent-to-use application to register the mark patents.com under 15 U.S.C. § 1051(b)(1). The application eventually 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, i.e., software for tracking patent applications and issued patents. Appellant challenged the Board's application of a rule that always disregarded the use of ".com" and other top level domain indicators in a trademark application. The Board concluded that ".com" conveyed to the public that the mark was owned or used by a commercial entity or business.

Issue:

Was the Board correct in refusing to register the mark “patents.com” to appellant?

Answer:

Yes.

Conclusion:

The 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. Substantial evidence supported the Board's finding that "patents" was descriptive of a feature of appellant's goods. Appellant's website showed that it offered software to track patent applications and issued patents using the Internet. Tracking patents fell within the scope of the goods identified in the application, i.e., "tracking records." 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 per se rule that would extend trademark protection to all Internet domain names regardless of their use.

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