BuyPatents.com, LLC

Trademark Trial and Appeal Board

Sep 17, 2001

No. 75726623 (T.T.A.B. Sep. 17, 2001)

9/17/01 Paper No. 9
RLS/kes

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re BuyPatents.com, LLC
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Serial No. 75/726,623
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Thomas W. Baumgarten, Jr. for BuyPatents.com, LLC.

Carol Spils, Trademark Examining Attorney, Law Office 101
(Jerry Price, Managing Attorney).
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Before Simms, Walters and Holtzman, Administrative
Trademark Judges.

Opinion by Simms, Administrative Trademark Judge:

BuyPatents.com, LLC (applicant), a Michigan
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the asserted mark
BUYPATENTS.COM for brokerage services in the field of
intellectual property, namely promotion of the sale of
patents on behalf of third parties.1 The Examining Attorney
has refused registration under Section 2(e)(1) of the Act,

1 Application Serial No. 75/726,623, filed June 11, 1999, based
upon applicant’s allegation of a bona fide intention to use the
mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/726,623
2
15 USC §1052(e)(1), arguing that applicant’s mark is merely
descriptive of a purpose, function, characteristic or
feature of applicant’s services.2 Applicant and the
Examining Attorney have submitted briefs but no oral
hearing was requested.
We affirm.
Applicant indicates that it is a broker, rather than a
buyer or seller, of the patents of others. According to
applicant, the patents of applicant’s clients are
categorized and listed along with offering details for
review by prospective purchasers via the Internet or other
Web-based interface. Applicant argues that its mark is
suggestive because imagination is needed to reach the
conclusion that applicant’s services are the promotion and
sale of patents of third parties and not of applicant.
Applicant contends that its mark does not forthwith convey
and immediately tell customers that applicant’s services
are the offering of the sale of patents of others but only
conveys information indirectly and vaguely. Also,
applicant argues that, while the individual elements of its
mark may be descriptive or even generic when used to

2 In connection with her refusal, the Examining Attorney made of
record copies of excerpts of stories from the Nexis database
about individuals and companies buying or seeking to buy the
patents of others.
Ser. No. 75/726,623
3
explain patent “buying” services, these words together are
not merely descriptive of its services. Applicant also
asks us to resolve any doubts in its favor.
A mark is merely descriptive if, as used in connection
with applicant’s goods or services, it describes, that is,
immediately conveys information about an ingredient,
quality, characteristic or feature of applicant’s goods or
services, or if it directly conveys information regarding
the nature, function, purpose or use of applicant’s goods
or services. See In re Abcor Development Corp., 588 F.2d
811, 200 USPQ2d 215 (CCPA 1978); and In re Eden Foods Inc.,
24 USPQ2d 1757 (TTAB 1992). Of course, the issue of mere
descriptiveness should not be determined in a vacuum, but
rather this issue is analyzed as the mark is used on or in
connection with applicant’s goods or services. In re Abcor
Development Corp., supra.
We agree with the Examining Attorney that applicant’s
mark merely describes a significant purpose, function or
feature of applicant’s brokerage services. There is no
question that, by use of applicant’s services, one may seek
to buy the patent of another. That is to say, applicant’s
services are for the purpose of allowing others to buy
patents of applicant’s clients. The asserted mark
immediately informs users of applicant’s services that, by
Ser. No. 75/726,623
4
using applicant’s services, one may seek to buy a patent of
another. The element “.COM,” the so-called top level
domain name, is merely the address element used to access
online computer information and merely indicates that
applicant is a commercial entity. Applicant’s mark as a
whole tells users that they may access applicant’s services
via the Internet to buy patents. In other words, the mark
immediately informs users that applicant provides online
services for the sale of patents.
Decision: The refusal of registration is affirmed.