In re Oppedahl & Larson Llp

• Decision Date: 25 June 2004
• Docket Number: No. 78/061,755.,No. 03-1525.,03-1525.,78/061,755.
• Citation: 373 F.3d 1171
• Parties: In re OPPEDAHL & LARSON LLP.
• Court: U.S. Court of Appeals — Federal Circuit

373 F.3d 1171

In re OPPEDAHL & LARSON LLP.

No. 03-1525.

No. 78/061,755.

United States Court of Appeals, Federal Circuit.

June 25, 2004.

Carl Oppedahl, Oppedahl & Larson LLP, of Dillon, CO, argued for appellant.

Cynthia C. Lynch, Associate Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for appellee. With her on the brief were John M. Whealan, Solicitor, and Nancy C. Slutter, Associate Solicitor. Of counsel was Linda Moncys Isacson, Associate Solicitor.

Before NEWMAN, RADER, and LINN, Circuit Judges.

RADER, Circuit Judge.

The Trademark Trial and Appeal Board (Board) affirmed the United States Patent and Trademark Office's (PTO's) refusal to register the mark patents.com to appellant Oppedahl & Larson, LLP. Because the proposed mark is merely descriptive under 15 U.S.C. § 1052(e)(1), this court affirms.

I.

On May 3, 2001, 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." Appellant also filed an allegation of use under 15 U.S.C. § 1051(c) with evidence indicating the mark's use in conjunction with the identified goods. This evidence of use was a printout of appellant's website:

Welcome to the patents.com software download links page. From this page you can reach download locations for Oppedahl & Larson LLP's most popular software:

• Feathers — software for tracking the status of U.S. trademark applications and registered trademarks

• Partridge — software for tracking the status of U.S. patent applications and issued patents

• Raptor — software for tracking the status of Express Mail shipments to the U.S. Patent & Trademark Office.

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. 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. See In re Oppedahl & Larson, LLP, No. 78/061,755, slip op. at 2-3 (TTAB Apr. 16, 2003). The Board affirmed citing In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002) and In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002). In re Oppedahl, slip op. at 6. Those cases hold that ".com" has no source-identifying significance. In those cases, the addition of a TLD to an otherwise descriptive or generic term did not make the proposed mark registrable. In CyberFinancial.Net, the Board applied the reasoning of the Supreme Court in Goodyear's Rubber Manufacturing Co. v. Goodyear Rubber Co., 128 U.S. 598, 602, 9 S.Ct. 166, 32 L.Ed. 535 (1888), 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. In this appeal, appellant challenges the Board's application of a strict rule that always disregards the use of ".com" and other TLDs in a trademark application. The Government urges this court to sustain the reasoning in CyberFinancial.Net and Martin Container.

II.

This court reviews the Board's legal determinations de novo and its factual findings for substantial evidence. See In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344 (Fed.Cir.2001). The Board's placement of a mark on the fanciful-suggestive-descriptive-generic continuum is a question of fact, which this court reviews for substantial evidence. See In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir.2001). Substantial evidence requires "more than a mere scintilla" of evidence, in other words, "such relevant evidence as a reasonable mind would accept as adequate" to support the finding. In re Pacer Tech., 338 F.3d 1348, 1349 (Fed.Cir.2003) (citing Consol. Edison Co. v. NLRB, 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1983)).

A mark is merely descriptive if it "consist[s] merely of words descriptive of the qualities, ingredients or characteristics of" the goods or services related to the mark. Estate of P.D. Beckwith, Inc. v. Comm'r of Patents, 252 U.S. 538, 543, 40 S.Ct. 414, 64 L.Ed. 705 (1920). Thus, a mark is merely descriptive if it immediately conveys knowledge of a quality or characteristic of the product. Dial-A-Mattress, 240 F.3d at 1346. A mark may be merely descriptive even if it does not describe the "full scope and extent" of the applicant's goods or services. Id. Descriptive marks can qualify for registration on the Principal Register if they acquire secondary meaning, i.e., distinctiveness. See 15 U.S.C. § 1052(f) (2000); Two Pesos Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). In this case, appellant has not alleged acquired distinctiveness. Therefore, this court reviews the Board's finding that appellant's mark is merely descriptive.

With respect to marks that include TLDs, the Trademark Manual of Examining Procedure (TMEP) instructs:

1209.03(m) Domain Names [R-2]

If a proposed mark includes a TLD such as ".com", ".biz",".info", the examining attorney should present evidence that the term is a TLD, and, if available, evidence of the significance of the TLD as an abbreviation (e.g.".edu" signifies an educational institution, ".biz" signifies a business). Because TLDs generally serve no source-indicating function, their addition to an otherwise unregistrable mark typically cannot render it registrable. In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1792 (TTAB 2002) ("Applicant seeks to register the generic term `bonds,' which has no source-identifying significance in connection with applicant's services, in combination with the top level domain indicator `.com,' which also has no source-identifying significance. And combining the two terms does not create a term capable of identifying and distinguishing applicant's services."); .... See also Goodyear, 128 U.S. at 602, 9 S.Ct. 166 (the incorporation of a term with no source-indicating function into an otherwise generic mark cannot render it registrable). For example, if a proposed mark is composed of merely descriptive term(s) combined with a TLD, the examining attorney must refuse registration on the Principal Register under Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1), on the ground that the mark is merely descriptive. See TMEP § 1215.04.

TMEP § 1209.03(m) (3d ed.2003).

In appellant's view, the PTO has erred by, in effect, cutting off the TLDs before evaluation of the consumer's impression of the mark. Appellant argues that the anti-dissection policy outlined in Dial-A-Mattress should apply to domain name marks as well. In short, appellant simply asserts that the Board should consider a domain designation as part of the mark as a whole.

The law requires that a mark be "considered in its entirety." Beckwith, 252 U.S. at 546, 40 S.Ct. 414. In Dial-A-Mattress, this court required the Board to consider marks using telephone area codes, i.e., "1-888-MATRESS," as a whole to determine the commercial impression of the mark. Dial-A-Mattress, 240 F.3d at 1345-46. Even though the area code (888) standing alone was "devoid of source-indicating significance," the analysis in Dial-A-Mattress required the Board to weigh the entire commercial impression, including the (888) prefix, when assessing the registrability of the mark. Id.

In Dial-A-Mattress, this court did not say, however, that the Board cannot ascertain the meaning of each of the words or components that make up the entire mark. In considering a mark as a whole, the Board may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components. In re Nat'l Data Corp., 753 F.2d 1056, 1058 (Fed.Cir.1985). Thus, the PTO may properly consider the meaning of "patents" and the meaning of ".com" with respect to the goods identified in the application. However, if those two portions individually are merely descriptive of an aspect of appellant's goods, the PTO must also determine whether the mark as a whole, i.e., the combination of the individual parts, conveys any distinctive source-identifying impression contrary to the descriptiveness of the individual parts. Id.

This court does not read the PTO's policy to include an absolute prohibition on the possibility that adding a TLD to a descriptive term could operate to create a distinctive mark. Instead the TMEP states that "TLDs generally serve no source-indicating function, [and] their addition to an otherwise unregistrable mark typically cannot render it registrable." TMEP § 1209.03(m) (3d ed.2003) (emphasis added). This language certainly leaves open the possibility that in unique circumstances a TLD could perform a source-indicating function. The PTO has not applied a bright-line rule that the addition of a TLD to an otherwise descriptive term will never under any circumstances affect the registratibility of a mark. Such a rule would be a legal error.

The PTO has offered the analysis in the Goodyear case as applicable in this case. Thus, in this case, the PTO uses that analysis to argue that ".com" possesses no source-identifying characteristics just as "Co." and "Corp." did not affect registrability in Goodyear. Although not a perfect analogy, the comparison of TLDs (i.e., ".com," .org," etc.) to entity designations such as "Corp." and "Inc." has merit. The commercial impression created by ".com" is similar to the impression created by "Corp." and "Co.", that is, the association of a commercial entity with the mark. TLDs, however, can convey more than simply the organizational structure of the entity that uses the mark. For example, TLDs immediately suggest a relationship to the Internet. Thus, the per se rule in Goodyear that "Corp.", etc. never possess source-indicating...