The law firm of Oppedahl & Larson sought trademark registration of PATENTS.COM as a mark for services offered by the firm at its website www.patents.com.
The Federal Circuit affirmed the Examiner's refusal on the grounds that the mark as a whole was merely descriptive for "computer software for managing a database of records and for tracking the status of the records by means of the Internet." In re Oppedahl & Larson LLP, 71 U.S. P.Q.2d 1370 (Fed. Cir. 2004).
The Court holds that the PTO must evaluate the commerical impression of the mark as a whole, including the TLD indicator. Normally, the TLD would not have any trademark significance and would be treated the same as "Corp." or "Inc."
The Court concludes that the mark PATENTS.COM as a whole was merely descriptive of the applicant's goods and was not entitled to registration.
This is a key case to review to understand the registrability of domain names as trademarks.
