In Re Oppedahl & Larson Llp

373 F.3d 1171 (D.C. Cir. 2004)

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Nature of the Case

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Facts

P filed an intent-to-use application to register the mark patents.com. The relevant goods were: 'Computer software for managing a database of records and for tracking the status of the records by means of the Internet.' The evidence of use was a printout of P's website. The PTO refused to register the mark on a finding that the mark is merely descriptive of applicant's goods, i.e., software for tracking patent applications and issued patents. In particular, the PTO found that the term 'patents' merely describes a feature of the goods, and the term '.com' is a top-level domain indicator (TLD) without any trademark significance. By analogy, the PTO accepted the reasoning of the Supreme Court in Goodyear's Rubber Manufacturing Co., which held that adding terms such as 'Corp.', 'Inc.', and 'Co.' to a generic term does not add any trademark significance to an otherwise unregistrable mark. P appealed and challenges the Board's application of a strict rule that always disregards the use of '.com' and other TLDs in a trademark application.