## Facts

- Oppedahl & Larson LLP developed and marketed software used to manage databases of intellectual-property records and track their status via the internet.
- The firm filed an intent-to-use application to register the mark “patents.com” for “computer software for managing a database of records and for tracking the status of the records by means of the Internet.”
- To support use, the firm submitted a website printout displaying “patents.com” and providing download links to its software products used for trademark tracking, patent tracking, and related status tracking.
- The USPTO refused registration on the ground that “patents.com” is merely descriptive of the software’s function and that “.com” is a top-level domain without source-identifying meaning.
- The Trademark Trial and Appeal Board affirmed the refusal, treating “.com” as analogous to corporate designations that do not add distinctiveness to descriptive or generic wording.

## Issues

1. Whether “patents.com,” used for internet-based software that manages and tracks patent-related records, is merely descriptive under 15 U.S.C. § 1052(e)(1).
2. Whether adding the “.com” top-level domain to a descriptive term can, in context, create a distinct commercial impression sufficient for registrability.
3. Whether the applicant showed acquired distinctiveness (secondary meaning) sufficient to overcome a descriptiveness refusal.

## Decision

- The Federal Circuit affirmed the TTAB’s refusal to register “patents.com” on the Principal Register as merely descriptive under § 2(e)(1).
- The court rejected a rigid rule that a top-level domain must always be ignored in the analysis, but held that “.com” added no meaningful distinguishing element here.
- Because the record lacked evidence of acquired distinctiveness, the mark remained unregistrable on this application.

## Legal Principles

- A mark is merely descriptive if it immediately conveys information about the ingredients, qualities, characteristics, function, or features of the identified goods.
- The registrability of a mark must be assessed as a whole, but combining a descriptive term with “.com” often remains descriptive when the domain element adds only an internet-location meaning.
- A top-level domain may contribute to distinctiveness in some circumstances; there is no categorical rule that it can never affect the commercial impression.
- Absent proof of acquired distinctiveness, a merely descriptive mark is barred from registration on the Principal Register under 15 U.S.C. § 1052(e)(1).

## Conclusion

The Federal Circuit held that “patents.com” immediately describes software used via the internet to manage and track patent-related records, and that adding “.com” did not change that descriptive message on this record; without evidence of secondary meaning, registration was properly refused.


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