Oppedahl & Larson

Trademark Trial and Appeal Board

Mar 31, 2006

No. 75051843 (T.T.A.B. Mar. 31, 2006)

Oral Hearing held: Decision mailed:
November 18, 2003 March 31, 2006
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Oppedahl & Larson
________

Serial No. 75051843
_______

Carl Oppedahl and Marina Larson of Oppedahl & Larson LLP for
Oppedahl & Larson.

Brett J. Golden, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______

Before Quinn,* Hohein and Rogers, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Procedural Posture
Oppedahl & Larson has filed an application to register
on the Principal Register the term "PATENTS.COM" as a service
mark for "on-line information services in the field of

* As indicated in the order issued in connection with this appeal on
March 11, 2005, Judge Quinn has been designated to substitute for
Judge Cissel, who retired from Federal service after the oral hearing
in this case but before an opinion was drafted and did not participate
in the disposition or determination of any of the issues herein. See
In re Bose, 772 F.2d 866, 227 USPQ 1, 4 (Fed. Cir. 1985), aff'g 215
USPQ 1124, 1125 n.* (TTAB 1982), holding that (italics in original):
"[T]here was no error in substituting a board member without allowing
reargument. The statutory requirement that a case be 'heard' by three
board members means judicially heard, not physically heard."

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75051843
2
intellectual property law provided via [an] interconnected
computer network linked by common protocols."1
Registration has been variously refused on a number of
grounds, including a final refusal, under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), on the basis that the term
"PATENTS.COM" is generic for applicant's services because it
designates a commercial website which provides information about
patents. In addition, in the event that such term is not
generic, registration has been repeatedly refused, under Section
2(e)(1) of the statute, on the ground that the term "PATENTS.COM"
is merely descriptive of the subject matter of applicant's
services and that applicant's showing in support of its
alternative claim, under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f), that such term has acquired distinctiveness
through use thereof in commerce is insufficient to overcome a
finding of mere descriptiveness.2 Registration has also been

1 Ser. No. 75051843, filed on February 1, 1996, which as originally
filed sought registration of such mark on the basis of Section 1(a) of
the Trademark Act, 15 U.S.C. §1051(a), by setting forth a date of
first use anywhere of July 1, 1995 and a date of first use in commerce
of July 10, 1995. However, with the filing of applicant's second and
operative appeal brief (its initially filed brief will not otherwise
be considered since, as stated in the order issued herein on March 11,
2005, such brief pertains to a premature notice of appeal), applicant
filed a "SUBSTITUTION OF BASIS" in which "applicant hereby substitutes
§1(b) as a basis pursuant to MPEP [sic] section 806.03(c) and 37 CFR §
2.35." Subsequently, months after the oral hearing herein, applicant
submitted an amendment to allege use in which it claims, as it did in
the application as originally filed, a date of first use anywhere of
July 1, 1995 and a date of first use in commerce of July 10, 1995.

2 As set forth in the order issued herein on March 11, 2005, it is
again pointed out that while, as indicated in In re Capital Formation
Counselors, Inc., 219 USPQ 916, 917 (TTAB 1983) at n. 2, the
insufficiency of a showing pursuant to Section 2(f) is not itself a
statutory basis for a refusal of registration on the Principal
Register, the failure to make a sufficient showing of acquired
distinctiveness precludes registration of a term which is otherwise
Ser. No. 75051843
3
finally refused, under Sections 1, 2, 3 and 45 of the Trademark
Act, 15 U.S.C. §§1051, 1052, 1053 and 1127, on the basis that the
term "PATENTS.COM" fails to function as a service mark for
applicant's services because, as used on the specimens of record,
it would be perceived only as part of an Internet address for
applicant's website.
Applicant has appealed. Briefs have been filed and an
oral hearing was held.3 Thereafter, however, it came to the
attention of the Board that applicant, in a related case in which
it was seeking registration of the identical term "PATENTS.COM"
as a trademark for "computer software for managing a database of
records and for tracking the status of the records by means of

barred by the "merely descriptive" prohibition of Section 2(e)(1).
However, in the case of a merely descriptive term which is generic, no
showing of acquired distinctiveness would suffice for purposes of
registration on the Principal Register. See, e.g., H. Marvin Ginn
Corp. v. International Ass'n of Fire Chiefs, Inc., 728 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986) and authority cited therein ["A generic
term ... can never be registered as a trademark because such term is
'merely descriptive' within the meaning of Section 2(e)(1) and is
incapable of acquiring de jure distinctiveness under Section 2(f).
The generic name of a thing is in fact the ultimate in
descriptiveness"]. Thus, applicant's claim, in the alternative, of
acquired distinctiveness would not suffice to overcome a possible
finding that the term "PATENTS.COM" is generic for its services so as
to permit registration.

3 Applicant, noting in particular the Examining Attorney's reliance in
his brief upon the Board's decisions in In re CyberFinancial.net, 65
USPQ2d 1789 (TTAB 2002) and In re Martin Container, 65 USPQ2d 1058
(TTAB 2002), urges in its reply brief that "the issues under
consideration in this case are ripe at this time for review by an en
banc panel of the Trademark Trial and [Appeal] Board ..., rather than
a simple panel, so that the issue of the special and frequently
hostile treatment afforded by the Trademark Office to domain-name-
related trademark applications can be fully ... addressed."
Applicant, as noted in the order issued herein on March 11, 2005, was
advised at the oral hearing that, to the extent it was requesting an
en banc hearing and/or decision in this appeal, such request had been
denied by Chief Administrative Trademark Judge Sams and that the
denial thereof would be so noted.

Ser. No. 75051843
4
the Internet,"4 had taken an appeal to the United States Court of
Appeals for the Federal Circuit of a decision, by another panel
of the Board, affirming a final refusal to register such term as
merely descriptive of applicant's goods.5 In view of the
potential bearing of the anticipated decision of the Federal
Circuit, the Board in effect suspended issuance of a decision on
the issues herein pending the final disposition of applicant's
appeal in the related case.6
Following the issuance of a final decision in the
appeal in applicant's related case,7 an order was issued on March
11, 2005 with respect to the preliminary matters raised by
applicant's filing, with its second and operative appeal brief
(hereinafter "main brief"), of its "SUBSTITUTION OF BASIS" and
its submission, several months after the oral hearing, of its
amendment to allege use. By such order, the Examining Attorney's
objection to the substitution of basis filed by applicant was
held to be untenable and, since such substitution otherwise

4 Ser. No. 78061755, filed on May 3, 2001, which was filed based on an
allegation of a bona fide intent to use such term in commerce.
Applicant subsequently filed an amendment to allege use, setting forth
a date of first use and first use in commerce of December 9, 1999.

5 Specifically, the Board held that the term "PATENTS.COM merely
describes applicant's computer software which tracks the status of
patents and is available on the Internet." In re Oppedahl & Larson
LLP, slip op. at 4 (TTAB April 16, 2003).

6 Plainly, both appeals involve the question of whether the term
"PATENTS.COM," which is obviously formed by combining the word
"PATENTS" with the top level domain designation ".COM," is at a
minimum merely descriptive of the subject matter of applicant's goods
and services.

7 In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir.
2004).

Ser. No. 75051843
5
complied with the applicable rules, the application accordingly
stood amended to one seeking registration solely on the basis of
an alleged bona fide intention to use.
Nonetheless, by its further amendment to allege use,
applicant desires to convert its application back to one which
seeks registration on the basis of use in commerce. The
acceptability of such amendment, which is accompanied by a third
specimen of use that differs from each of the other two specimens
previously submitted, obviously has a direct bearing on the
issues in this appeal. At a minimum, whether the amendment is
allowed affects not only whether the refusal on the basis that
the term "PATENTS.COM" does not function as a service mark is
still part of this appeal, but also whether, if so, such ground
remains viable. Consequently, the order issued on March 11, 2005
additionally provided that:
Accordingly, further disposition of this
appeal is hereby suspended and the
application is remanded to the Examining
Attorney for consideration of the amendment
to allege use. See TBMP §1206.01 (2d ed.
rev. 2004) [it not only is the case that "an
amendment to allege use filed during the
pendency of an ex parte appeal to the Board
is timely," but "[i]f an applicant which has
filed a timely appeal to the Board files an
amendment to allege use, in the application
which is the subject of the appeal, more than
six months after issuance of the appealed
action, the Board may, in its discretion,
suspend proceedings with respect to the
appeal and remand the application to the
examining attorney for consideration of the
amendment to allege use"].

If the Examining Attorney determines
that the amendment to allege use is
acceptable, and finds that the specimen which
accompanies the amendment evidences use of
Ser. No. 75051843
6
the term "PATENTS.COM" in such a manner that
it functions as a service mark for
applicant's services, the Examining Attorney
should so indicate in an Office action and
return the application file to the Board for
resumption of the appeal, at which point the
Board will resume proceedings herein and
issue a final decision with respect to the
remaining issues before this panel. If, on
the other hand, the Examining Attorney finds
that the amendment to allege use is
unacceptable and/or that the specimen which
accompanies such amendment fails to evidence
use of the term "PATENTS.COM" in such a
manner that it functions as a service mark
for applicant's services, then a new final
refusal should be issued with respect
thereto, and the Examining Attorney should
thereafter return the application file to the
Board for resumption of the appeal. Once the
Board resumes proceedings herein, any
refusals or requirements which are the
subject of the new final refusal will be
treated as part of this appeal and the Board
will issue a schedule for supplemental
briefing with respect thereto. Following
receipt of such supplemental briefs, the
Board will issue a final decision with
respect to the remaining issues before this
panel, including any issues raised by the new
final refusal.

The Examining Attorney, upon remand of the application,
issued an Office action on March 17, 2005 which states, among
other things, that (emphasis in original):
Applicant's amendment to allege use is
accepted and made part of the record.
Accordingly, the refusal to register under
Trademark Act Sections 1, 2[, 3] and 45, on
the ground that applicant's specimen of
record fails to exhibit use of the mark as a
service mark, is withdrawn.

While the March 17, 2005 Office action also states that "[t]his
application is returned to the Board for resumption of the appeal
on the remaining issue, namely, whether applicant's mark may be
registered on the Principal Register in accordance with Trademark
Ser. No. 75051843
7
Act Section 2(f)," it is pointed out that such issue, which the
Examining Attorney does not even argue in his brief,8 is not the
sole issue remaining in this appeal. Rather, as previously
noted, this appeal includes the issue of whether the term
"PATENTS.COM" is generic for applicant's services in addition to
the issues of whether such term is merely descriptive of the
subject matter of applicant's services and, if so, whether
applicant's showing in support of its alternative claim that such
term has acquired distinctiveness through use thereof in commerce
is insufficient to overcome a finding of mere descriptiveness.
Accordingly, and inasmuch as the Examining Attorney has
accepted applicant's amendment to allege use and the adequacy of
the accompanying specimen of use, as evidenced by the withdrawal
of the refusal that as used the term "PATENTS.COM" fails to
function as a service mark for applicant's services, this appeal
is resumed and will go forward on the issues of whether such term
is generic and, if not, whether it is merely descriptive of
applicant's services and, if so, has acquired distinctiveness.

8 It is apparent, however, that despite the lack of any argument as to
the issues of acquired distinctiveness and mere descriptiveness, the
Examining Attorney does not admit or otherwise concede that the term
"PATENTS.COM" is either suggestive or has been shown to have acquired
distinctiveness. Instead, the Examining Attorney appears to take the
position that he need not address the sufficiency of applicant's
evidentiary showing or the question of mere descriptiveness because,
as stated in his brief, "[i]f matter is generic, ... then the matter
is unregistrable and a claim of acquired distinctiveness may not
overcome a refusal to register." Nonetheless, the better practice in
cases, such as the instant appeal, where an applicant is not only
contending that a term is not generic but is arguing, alternatively,
that even if such term were to be considered to be merely descriptive,
it nevertheless has been shown to have acquired distinctiveness and
hence is registrable, the Examining Attorney should also brief any
alternative issues and not just address the question of genericness.

Ser. No. 75051843
8
Genericness
We turn first to the issue of genericness. As set
forth by our principal reviewing court in H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 728 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986), "[a] generic term is the common
descriptive name of a class of goods or services." Such case
also states the following as the legal test for whether a term
which is asserted to be a mark, including one which includes a
top level domain indicator (e.g., ".COM"), is considered to be
generic:
Determining whether a mark is generic
... involves a two-step inquiry: First, what
is the genus of goods or services at issue?
Second, is the term sought to be registered
... understood by the relevant public
primarily to refer to that genus of goods or
services?

Id. However, as our principal reviewing court has also pointed
out, a showing of the genericness of a mark requires "clear
evidence" thereof. In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
Moreover, as such court noted in In re American
Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1837 (Fed. Cir.
1999), not only is it the case that "[t]he correct legal test"
for genericness "is set forth in Marvin Ginn," but such test "is
to be applied to a mark ... as a whole, for the whole may be
greater than the sum of its parts," and the test "requires
evidence of 'the genus of goods or services at issue' and the
understanding by the [relevant] general public that the mark
refers primarily to 'that genus of goods or services.'" In
Ser. No. 75051843
9
particular, as recently noted by our principal reviewing court in
In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421
(Fed. Cir. 2005) (citations omitted):
An inquiry into the public's understanding of
a mark requires consideration of the mark as
a whole. Even if each of the constituent
words in a combination mark is generic, the
combination is not generic unless the entire
formulation does not add any meaning to the
otherwise generic mark. ....

With respect to the first prong of the genericness
test, applicant and the Examining Attorney would appear to agree
that the category or class of services at issue herein concerns
the providing of legal information about patents or intellectual
property through a website. Applicant, in this regard, asserts
in its main brief that:
Applicant wishes to register the mark
for "on-line information services in the
field of intellectual property law provided
via [an] interconnected computer network
linked by common protocols." In establishing
the [final] refusal to register, the
Examining Attorney states, "The term
'PATENTS' merely describes a type or category
of information provided on the applicant's
web site and is therefore a generic term for
such services." Accordingly, the genus of
services at issue here clearly relates to the
providing of information about patents or
intellectual property through a web site.

While the Examining Attorney, in his brief, does not specifically
address the first prong of the genericness test, he nonetheless
maintains that the term "'PATENTS' is commonly recognized as the
class or category of information provided on the applicant's web
site" and points out, in a footnote, that "the common usage of
the term 'PATENTS' as a type or category of intellectual property
Ser. No. 75051843
10
is shown in dictionary definitions and LEXIS-NEXIS database
excerpts and may be gleaned from the applicant's specimens and
numerous exhibits." Nothing in such contentions is thus at odds
with his statement in the final refusal, with which applicant
plainly agrees, that the category, class or genus of its "on-line
information services in the field of intellectual property law
provided via [an] interconnected computer network linked by
common protocols" is essentially the "providing of information
about patents or intellectual property through a web site."
Although, perhaps surprisingly, no corresponding
statement specifically appears in the Examining Attorney's brief
with respect to his discussion of the genericness issue, the
record reflects that the above-quoted statement from the final
refusal as to the first prong of the proper legal test for
genericness is accurate and confirms that a principal aspect of
applicant's services, as identified in the application, is indeed
the "providing of information about patents or intellectual
property through a web site." For instance, the specimens of use
originally filed with the application, which consist of three
copies of the October 1995 issue of the Oppedahl & Larson News
newsletter, report that the "O&L Patent Law Information World
Wide Web Site," which has "http://www.patents.com" as its
Internet address, "contains hundreds of answers to frequently
asked questions about patents and other intellectual property."
In the same vein, the footer in the three copies of a January 25,
1996 e-mail sent by Carl Oppedahl on the "Subject: Mentioned in
the trade ..." recites that "http://www.patents.com is a web
Ser. No. 75051843
11
server with frequently asked questions and answers on patent law
and other intellectual property subjects." Similarly, a printout
of the "HotSites" page from the "InfoWorld" website lists three
such sites for the "Week of November 3, 1997," including:
Patents.com http://www.patents.com
The law firm of Oppedahl & Larson offers the
Intellectual Property Law Web Server, a
compendium of patent, copyright, trademark,
and trade secret information. Included are
overviews of legal issues regarding software
and Web content.

Another printout, from the "Nolo Press" website, sets forth five
"Online Resources for Patents," including (in addition to a
reference to the U.S. Patent and Trademark Office9):
http://www.patents.com/ The patent law firm
of Oppedahl and Larson is a good place to
start when researching patent law.

Accordingly, in determining the first prong of the test
for genericness, we find in light of the factual record that,
while the genus or category of applicant's services is defined by
the recitation thereof in the application as "on-line information
services in the field of intellectual property law provided via
[an] interconnected computer network linked by common protocols,"
such recitation must be interpreted, in light of the actual use
being made of the term "PATENTS.COM" by applicant, as principally
encompassing the inextricably intertwined element of providing
legal information about patents, as well as other kinds of

9 Such reference reads as follows:

http://www.uspto.gov The U.S. Patent and Trademark Office is
the place to go for recent policy and statutory changes and
transcripts of hearings on various patent law issues.

Ser. No. 75051843
12
intellectual property, through a website. See, e.g., In re
Steelbuilding.com, supra at 75 USPQ2d 1422 [recitation of
services interpreted in light of actual use being made of term
"STEELBUILDING.COM"]; In re Reed Elsevier Properties Inc., 77
USPQ2d 1649, 1656 (TTAB 2005) [while the genus of services with
respect to term "LAWYERS.COM" found to be "providing a web site
with a database of information covering the identified topics of
law, legal news and legal services," Board further found in view
of actual use of such term that "a central and inextricably
intertwined element of that genus is information about lawyers
and information from lawyers" (footnote omitted)]; and In re DNI
Holdings Ltd., 77 USPQ2d 1435, 1438 (TTAB 2005) [genus of
services for determining whether term "SPORTSBETTING.COM" is
generic includes wagering on sporting events and provision of
information regarding sports and betting, since even though
recitation of services in application excludes monetary wagering,
evidence of record shows that website through which services were
rendered offers sports betting services]. The focus of our
inquiry, therefore, is whether, under the second prong of the
test for genericness, the term "PATENTS.COM" is understood by the
relevant public for applicant's services, as recited in the
application, primarily to refer to a category or class (i.e., a
genus) of providing information about patents, as well as other
kinds of intellectual property, through a website.
Applicant, in its main brief, argues that in analyzing
"whether the term sought to be registered is understood by the
public to refer to the genus of services that involve the
Ser. No. 75051843
13
providing of information about patents or intellectual property
through a web site," the Examining Attorney "has taken the view
that the mark may be dissected and that the four characters
'.COM' may be ignored in this analysis." Specifically, applicant
asserts that in refusing registration on the ground of
genericness, "the Examining Attorney only considered the term
PATENTS on the view that '.COM' does not function as an indicator
of source." Applicant correctly points out, however, that as set
forth by the Federal Circuit in In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001)
(which quotes from Estate of P.D. Beckwith, Inc. v. Comm'r of
Patents, 252 U.S. 538, 545-46 (1920)): "The commercial
impression of a trade-mark is derived from it as a whole, not
from its elements separated and considered in detail."
Applicant, in light of the above, further contends in
its main brief that:
The mark to be analyzed is and should be
PATENTS.COM, but even if one assumes for sake
of discussion that the mark is PATENTS, the
genericness conclusion is in error. In
either case, it is nearly inconceivable--and
the Examining Attorney presents no evidence
to the contrary--that the terms PATENTS or
PATENTS.COM are used by the general public to
describe the providing of information about
patents or intellectual property on a web
site. For a term to be generic, the term
must be used to refer to a genus of goods or
services. For instance, the mark THERMOS
became generic for vacuum insulated
containers .... In contrast, ... "patents"
is a term that the public understands to be
associated with physical items called
"Letters Patent." Accordingly, PATENTS or
PATENTS.COM is clearly not a generic term in
regard to Applicant's services.

Ser. No. 75051843
14
Moreover, as to the significance of the term ".COM" itself,
applicant insists that the Examining Attorney is under the
"mistaken impression ... that '.com' means no more nor no less
than that the owner [of a domain name with that term] is 'a
commercial organization (business).'" Applicant argues that
there are "[m]yriad other domain names ending in '.com' [which]
are owned by individuals who are not commercial organizations and
who do not carry out any business in connection with the domain
names." According to applicant, "[d]omain names ending in '.com'
are available on a first-come first-served basis for anyone to
register and the Examiner has not provided (and cannot provide)
any evidence of any enforcement mechanism that would check to see
if a would-be owner of a '.com' domain name is a commercial
entity or is a business."
Asserting, in addition, that unlike the situation in In
re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed.
Cir. 1987), in which the term "SCREENWIPE" was held generic for a
"pre-moistened, anti-static cloth for cleaning computer and
television screens" because "[w]hether compounded as 'screen
wipe'--two words--or 'screenwipe'--one word--either is ordinary
grammatical construction," in the case of "PATENTS.COM" it is not
"'ordinary grammatical construction' to use 'patents com' as a
generic term for 'on-line information services in the field of
intellectual property law provided via [an] interconnected
computer network linked by common protocols.'" Applicant, in
this regard, observes that "the Examiner has presented no
evidence that it is 'ordinary grammatical construction' to use
Ser. No. 75051843
15
'patents com' as a generic term" for such services. Applicant
also notes that the Examining Attorney has failed to make of
record any third-party use of either the term "PATENTS.COM" or
the words "patents com." In fact, as to the term "PATENTS.COM,"
applicant insists that "[s]uch a showing would be exceedingly
unlikely, given that at most one entity may possess any
particular domain name."
The Examining Attorney, relying principally on In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1792-94 (TTAB 2002)
[holding the term "BONDS.COM" is generic for "information and
electronic commerce services regarding financial products,
including bonds, provided via the Internet"], and In re Martin
Container, 65 USPQ2d 1058, 1060-62 (TTAB 2002) [finding the term
"CONTAINER.COM" is generic for "retail services featuring metal
shipping containers" and "rental of metal shipping containers"],
argues on the other hand that the term "PATENTS.COM" is generic
for applicant's services. In particular, he maintains in his
brief that (footnotes omitted):10

10 The Examining Attorney requests that, "[f]or clarity, ... the Board
... take judicial notice of the dictionary entry for '.COM' from the
computer dictionary at http://www.techweb.com, which is attached to
this brief." We decline to do so, even though it is settled that, in
general, the Board may properly take judicial notice of dictionary
definitions. See, e.g., Hancock v. American Steel & Wire Co. of New
Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953); University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983); and Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852,
860 n. 7 (TTAB 1981). Nonetheless, in the case, like herein, of on-
line dictionary evidence submitted for the first time with the
Examining Attorney's brief, the Board in In re Total Quality Group
Inc., 51 USPQ2d 1474, 1476 (TTAB 1999), stated with respect thereto
that, "when Examining Attorneys intend to rely on Internet evidence
that otherwise would normally be subject to judicial notice (such as
dictionary definitions), such evidence must be submitted prior to
appeal." In view thereof, the Examining Attorney's request that we
Ser. No. 75051843
16
Here, the ... mark at issue is no
different from those in Martin Container and
CyberFinancial--it is comprised of a generic
term along with the top-level domain
[("TLD")] ... indicator ".COM." The term
"PATENTS" is defined as "a grant made by a
government that confers upon the creator of
an invention the sole right to make, use, and
sell that invention for a set period of
time." The American Heritage Dictionary of
the English Language (3d. Ed. 1992)
(electronic version) .... As demonstrated in
the record, "PATENTS" is commonly recognized
as the class or category of information
provided on the applicant's web site and is
therefore generic for the services. A term
is generic if it reflects the class or
category of information featured in the
identified services, and, thus, the
applicant's argument to the contrary is
without merit. See CyberFinancial [65
USPQ2d] at 1792.

The term ".COM" is a top-level domain
indicator for commercial web sites operating
on the internet. See the dictionary evidence
attached to the October 3, 1996 office
action. It is well established that the top-
level domain ".COM" has no source indicating
significance and serves no trademark or
service mark purpose. See CyberFinancial at
[65 USPQ2d] 1792; Martin Container at [65
USPQ2d] 1060; Brookfield Communications, Inc.
v. West Coast Entertainment Corp., 174 F.3d
1036, 1055 (9th Cir. 1999); Northern Light
Technology v. Northern Lights Club, 97
F.Supp.2d 96, 110 (D. Mass. 2000) (TLD has
"little importance" in distinguishing marks);
CCBN.com, Inc. v. c-call.com, Inc., 73
F.Supp.2d 106, 112 (D. Mass. 1999) (TLD has
"no trademark significance").

The combination of the generic term
"PATENTS" and the top-level domain indicator
".COM" in the proposed mark does not create
any new meaning other than the meaning common
usage would ascribe to them. The relevant
public would immediately understand that the
applicant provides a commercial web site

take judicial notice of an on-line dictionary definition of the term
".COM" is denied.

Ser. No. 75051843
17
featuring information in the class or
category noted in the mark, namely, patents.
Others would have a competitive need to use
the matter sought to be registered as part of
their own domain names and marks for similar
information services about patents. In
accordance with Martin Container and
CyberFinancial, therefore, the proposed mark
is generic for the identified services ....
As such, the proposed mark may not acquire
distinctiveness under Section 2(f) of the
Trademark Act, and registration is properly
refused under Section 2(e)(1) ... of the
Trademark Act.

In support of his position, the Examining Attorney
asserts in a footnote to his brief that, as noted previously,
"the common usage of the term 'PATENTS' as a type or category of
intellectual property is shown in the dictionary definitions and
LEXIS-NEXIS database excerpts and may be gleaned from the
applicant's specimens and numerous exhibits." Although no
particular definition or excerpt is specifically referred to,
there can be no real question that the term "PATENTS" is generic
with respect to the subject matter of applicant's legal services
of providing information about patents, as well as other kinds of
intellectual property, through a website, since such term plainly
designates a category or class of intellectual property law
information which applicant makes available. For instance, the
definition of the word "patent" from The American Heritage
Dictionary of the English Language (3rd ed. 1992) is more than
sufficient to show the genericness of the term "PATENTS" in
relation to applicant's services. Such definition (which is
actually the sole definition thereof in the record) lists the
word "patent" in relevant part as a noun signifying (as partially
Ser. No. 75051843
18
indicated previously) "1. a. A grant made by a government that
confers upon the creator of an invention the sole right to make,
use, and sell that invention for a set period of time. b.
Letters patent. c. An invention protected by such a grant" and
as an adjective meaning, inter alia, "1. a. Protected or
conferred by a patent or letters patent: a patent right. b. Of,
relating to, or dealing in patents: patent law."
Also of record, as mentioned above, in support of the
Examining Attorney's position with respect to the significance of
the term ".COM," is "the dictionary evidence attached to the
October 3, 1996 office action," which consists in pertinent part
of the following definition from The Internet Dictionary (1995)
at 54-55:
domain The main subdivision of Internet
addresses, the last part of an Internet
address after the final dot. In the United
States, the standard domains are as follows:
Domain Meaning
.com Commercial
.edu Educational
.gov Government
.mil Military
.org Non-profit organization
.net Network
Outside the United States, the top-level
domain is usually the country domain, such as
.ca for Canada, .de for Germany
(Deutschland), .uk for the United Kingdom,
and so on.

We judicially notice in the same vein that, for instance, The
American Heritage Dictionary of the English Language (4th ed.
2000) defines ".com" at 367 as "abbr. commercial organization (in
Internet addresses)," while the Microsoft Computer Dictionary
(4th ed. 2000) at 95 likewise defines such term in pertinent part
Ser. No. 75051843
19
as "1. In the Internet's Domain Name System, the top-level domain
that identifies addresses operated by commercial organizations.
The domain name .com appears as a suffix at the end of the
address. .... Compare .edu, .gov, .mil, .net, .org." Moreover,
contrary to the argument in its main brief, applicant in its
response to the initial office action conceded that:
Persons familiar with the worldwide web
know that sites on the web are accessed
through an address (called a URL) which may,
for example, have the format
http://www.domainname.com, where "com"
indicates that the domain is a commercial
entity (as opposed to governmental, education
or other type) and domainname is a unique
identifier within the .com domains. ....

It is settled that a term is generic if it names a
class of the services or goods to which it is applied. See,
e.g., In re Dial-A-Mattress Operating Corp., supra at 57 USPQ2d
1810, citing In re Merrill Lynch, Pierce, Fenner & Smith, Inc.,
supra at 4 USPQ2d 1142, and H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., supra at 228 USPQ 530; Loglan
Institute Inc. v. Logical Language Group Inc., 962 F.2d 1038, 22
USPQ2d 1531, 1533 (Fed. Cir. 1992); and In re Northland Aluminum
Products, Inc., 777 F.2d 1566, 227 USPQ 961, 964 (Fed. Cir.
1985). Generic terms, however, are not limited to use as nouns
designating a category, genus or type of product or service, but
may also be used, for example, as adjectives. See, e.g., In re
Pennzoil Products Co., 20 USQP2d 1753, 1758-60 (TTAB 1991)
["MULTI-VIS" held generic for "multiple viscosity motor oil"].
Moreover, in making a determination of genericness, evidence of
the relevant public's understanding of a term may be obtained
Ser. No. 75051843
20
from any competent source, including newspapers, magazines,
dictionaries, catalogs and other publications, as well as the
Internet. See, e.g., In re Northland Aluminum Products, Inc.,
supra at 227 USPQ 963; and In re Leatherman Tool Group Inc., 32
USPQ2d 1443, 1449 (TTAB 1994).
Furthermore, in the case of a compound term, our
principal reviewing court in In re American Fertility Society,
supra at 51 USPQ2d 1836, has pointed out that as set forth in In
re Gould Paper Corp., supra at 5 USPQ2d 1110, 1111-12, not only
does the test of whether a term is generic involve a
determination of its primary significance to the relevant
purchasing public, but the burden of proof of genericness, which
is on the U.S. Patent and Trademark Office ("USPTO"), is
satisfied by dictionary definitions showing that separate words
joined to form a compound have a meaning identical to the meaning
common usage would ascribe to those words as a compound. That
is, if the USPTO can prove that the public understands the
individual terms to be generic for a genus of goods or services
and that the public also understands the joining of the
individual terms into one compound word lends no additional
meaning to the term, then the USPTO has proven that the public
would understand the compound term to be generic in that it
refers primarily to the genus of goods or services described by
the individual terms. In re American Fertility Society, supra at
51 USPQ2d 1836. However, our principal reviewing court went on
in such case to state that "Gould is limited, on its facts,
language, and holding, to compound terms formed by the union of
Ser. No. 75051843
21
words" and that it is "legally erroneous" to apply the test
therein for genericness of such terms "to phrases consisting of
multiple terms, which are not 'joined' in any sense other than
appearing as a phrase." In re American Fertility Society, supra
at 51 USPQ2d 1837.
We are therefore faced, in determining the second prong
of the test for genericness, with the question of whether to
treat the designation "PATENTS.COM" as a compound term, for which
proof along the lines of that held sufficient in Gould may
suffice, or whether to analyze such designation instead as a
phrase, for which evidence of use thereof by the relevant public
to refer to a category, genus or class of services like those
offered by applicant would be necessary under American Fertility
Society. To us, it is the former approach that is appropriate
for analyzing an Internet domain name designation which is
composed of a word, with an ordinary or commonly understood
dictionary meaning, as the domain name together with a top-level
domain ("TLD") indicator. See, e.g., In re Eddie Z's Blinds &
Drapery Inc., 74 USPQ2d 1037, 1041-42 (TTAB 2005); In re
CyberFinancial.Net Inc., supra at 65 USPQ2d 1794; and In re
Martin Container, supra at 65 USPQ2d 1061. Treating a
combination such as "PATENTS.COM" as a compound term rather than
as if it were the phrase "PATENTS COM" is preferable since, due
(presumably) to the technical requirements of Internet domain
name addresses,11 in our experience there can be no space

11 For instance, as noted in In re DNI Holdings Ltd., supra at 1440-41:

Ser. No. 75051843
22
separating any of the individual terms which comprise an Internet
address. Hence, because there could not ever be any third-party
use of phrases such as, for example, "drugstore com" for on-line
drugstore services, "bank com" for web-based commercial bank
services or "supermarket com" for on-line retail supermarket
services, a strict application of American Fertility Society
rather than Gould plainly leads to the anomalous result that such
unquestionably generic terms as "drugstore," "bank" or
"supermarket," when coupled with the top level domain name
".com," could never be considered generic terms for the providing
by a commercial entity, via the Internet, of, respectively,
drugstore, commercial bank or retail supermarket services.
Public policy, including the unfettered use of the English
language, demands, however, in our view that in the context of
the Internet, such terms as "DRUGSTORE.COM," "BANK.COM" or
"SUPERMARKET.COM" should be treated as generic, just as the words
"drugstore," "bank" or "supermarket" are generic for the
corresponding brick and mortar enterprises. To do otherwise, and
thus "[t]o allow trademark [or service mark] protection for
generic terms, i.e., names which describe the genus of goods [or
services] being sold, even when these have become identified with
a first user, would grant the owner of the mark a monopoly, since

As to domain names, presumably international protocols
define a limited range of printable characters for second
level domain names, including that they cannot contain
spaces. We observe that, generally, adjacent words are
simply run together in domain names (or at the very least,
any spaces occurring naturally in normal English language
text must be replaced with a hyphen or similarly-approved
characters [(e.g., an underscore: _)].

Ser. No. 75051843
23
a competitor could not describe his goods [or services] as what
they are." In re Merrill Lynch, Pierce, Fenner, & Smith, Inc.,
supra at 4 USPQ2d 1142.
Accordingly, turning to the critical inquiry of
whether, under the second prong of the test for genericness, the
compound term "PATENTS.COM" is understood by the public for
applicant's services to refer primarily to a category or class
(i.e., a genus) of providing legal information about patents, as
well as other kinds of intellectual property, through a website,
we find that the Examining Attorney has shown by clear evidence
that such is indeed the case. Obviously, the relevant public for
applicant's services encompasses anyone interested in obtaining
legal information about patents, whether such a person is, to
cite a few examples, a new inventor or layman entrepreneur, an
engineer or scientific researcher, or a patent agent or attorney.
The dictionary definitions of "patents" and ".com" are sufficient
to demonstrate that, when such terms are combined to form the
designation "PATENTS.COM," they have a meaning in combination
which, to the relevant public for applicant's services, is
identical to the meaning which common usage by members of such
public would ascribe to those words as a compound.
Specifically, the relevant public clearly understands
the individual terms "patents" and ".com" to be generic for,
respectively, a class or category of (i) intellectual property
relating to or dealing in governmental grants, known as letters
patents, that confer upon inventors the sole right to make, use,
and sell their inventions for a set period of time and (ii) a
Ser. No. 75051843
24
top-level domain identifier of, in Internet addresses, any
commercial organization or (as admitted by applicant) other
commercial entity. Because the term "patents" is the generic
name for a class or category of intellectual property which
constitutes, in significant part, the subject matter of its legal
services of providing information about patents and other kinds
of intellectual property law through a website, such term is
likewise a generic name for those informational services as well.
See, e.g., In re Candy Bouquet International Inc., 73 USPQ2d
1883, 1888 (TTAB 2004) ["[i]nasmuch as applicant is seeking to
register a service mark ..., an additional principle applicable
to our genericness determination in this case is that a term
which is generic for a particular class of goods is also deemed
to be generic for the services of selling those goods"]; In re
CyberFinancial.Net Inc., supra at 65 USPQ2d 1790-92;12 and In re

12 Along the same line, the Board in particular noted therein that:

The Board has held in the past that a term which is the
generic name of a particular category of goods is likewise
generic for any services which are directed to ... that
class of goods. See: In re A La Vieille Russie Inc., 60
USPQ2d 1895 (TTAB 2001) [RUSSIANART generic for particular
field or type of art and also for dealership services
directed to that field]; In re Log Cabin Homes Ltd., 52
USPQ2d 1206 (TTAB 1999) [because LOG CABIN HOMES is generic
for a particular type of building, it is also generic for
architectural design services directed to that type of
building, and for retail outlets featuring kits for
construction of that type of building]; In re Web
Communications, 49 USPQ2d 1478 (TTAB 1998) [because WEB
COMMUNICATIONS is generic for publication and communication
via the World Wide Web, it is also generic for consulting
services directed to assisting customers in setting up their
own Web sites for such publication and communication); and
In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB
1984) [LAW & BUSINESS incapable of distinguishing
applicant’s services of arranging and conducting seminars in
the field of business law].

Ser. No. 75051843
25
Martin Container, supra at 65 USPQ2d 1060. Similarly, because
the top-level domain indicator ".com" is a generic designation
for an Internet address or website run or sponsored by a
commercial organization or entity, as opposed to, for instance,
the government (".gov"), the military (."mil"), an educational
institution (".edu") or a non-profit organization (".org"), the
use thereof in connection with the applicant's services of
providing information about the law of patents and other kinds of
intellectual property through a website generically signifies
that such legal services are provided by a commercial entity or
business. See, e.g., In re CyberFinancial.Net Inc., supra at 65
USPQ2d 1792 ["[s]imply put, the TLD '.com,' as shown by the ...
evidence, signifies to the public that the ... domain name
constitutes a commercial entity"];13 and In re Martin Container,
supra at 65 USPQ2d 1060 [term ".com," "to the average customer
..., would immediately indicate a commercial web site on the
Internet"].
In view thereof, joining the terms "patents" and ".com"
to form the designation "PATENTS.COM" results in a compound term

In re CyberFinancial.Net Inc., supra at 65 USPQ2d 1791.

13 The Board, inter alia, noted therein that, as to such evidence:

The term ".com" is defined in the following ways: "a domain
type used for Internet locations that are part of a
business or commercial enterprise"[--]CNET Glossary (1998);
"abbreviation of commercial organization (in Internet
addresses)"[--]The American Heritage Dictionary of the English
Language (4th ed. 2000); and "Internet abbreviation for
company: used to show that an Internet address belongs to a
company or business"[--]Cambridge Dictionaries Online (2001).

In re CyberFinancial.Net Inc., supra at 65 USPQ2d 1791.
Ser. No. 75051843
26
which, to the relevant public for applicant's services of
providing legal information about patents, as well as other kinds
of intellectual property, through a website, primarily signifies
a commercial website which provides legal information about
patents. See, e.g., In re Reed Elsevier Properties Inc., supra
at 77 USPQ2d 1656 ["relevant public, including both lawyers and
non-lawyers, when they consider LAWYERS.COM in conjunction with
the class of involved services [which includes providing a
website with a database of information covering the topics of
law, legal news and legal services], would readily understand the
term to identify a commercial web site providing access to and
information about lawyers"]; CyberFinancial.Net Inc., supra at 65
USPQ2d 1794 ["finding that the designation BONDS.COM as a whole
is no less generic than its constituents" with respect to
information and electronic commerce services regarding financial
products, including bonds, provided by way of the Internet]; and
In re Martin Container, supra at 65 USPQ2d 1060 ["to the average
consumer seeking to buy or rent containers, 'CONTAINER.COM' would
immediately indicate a commercial web site on the Internet which
provides containers"].
The relevant public for applicant's legal services,
furthermore, would clearly understand that the joining of the
individual terms "patents" and ".com" into the compound term
"PATENTS.COM" lends no additional meaning to such term as a
whole. While we are cognizant that our principal reviewing court
in In re Steelbuilding.com, supra at 75 USPQ2d 1423, found that

Ser. No. 75051843
27
the composite term "STEELBUILDING.COM" was not generic because,
"[i]n this unusual case, the addition of the TLD indicator
expanded the meaning of the mark to include goods and services
beyond the mere sale of steel buildings,"14 we fail to find any
evidence on this record that the compound term "PATENTS.COM"
analogously presents such exceptional circumstances. To be sure,
in understanding such term as meaning primarily a commercial
website which provides information about patent law, some members
of the relevant public would think of a website which provides
information about obtaining patents, that is, how to patent
inventions, while other members, for example, would view the term
"PATENTS.COM" as a website which provides information about
particular patents which have issued and/or the status of pending
patent applications. Still others, no doubt, would understand
such term primarily as signifying a commercial website which
provides essentially any type of information concerning patents,
including both of the kinds of information mentioned above. Any
of these understandings, however, would be generic inasmuch as,
unlike the situation in Steelbuilding.com, in each instance the
subject matter of applicant's commercial website is still the

14 The court, in this regard, further insisted with respect to "the
effect of attaching the term '.COM' to 'STEELBUILDING'" that:

Specifically, the TLD expanded the mark to include internet
services that include "building" or designing steel
structures on the web site and then calculating an
appropriate price before ordering the unique structure. The
record, therefore, does not contain evidence sufficient to
support the board's finding that "STEELBUILDING.COM" is
generic for applicant's services.

In re In re Steelbuilding.com, supra at 75 USPQ2d 1423.

Ser. No. 75051843
28
same--information about patents. See, e.g., In re Reed Elsevier
Properties Inc., supra at 77 USPQ2d 1656 ["the likelihood that
some members of the relevant public would think of a web site
providing online access to lawyers while others might think of a
web site providing online information about lawyers does not
render LAWYERS.COM non-generic. Either understanding of the term
would be generic and the fact that a term may have two generic
meanings when considered in connection with a particular class of
services does not mean it is not generic" (emphasis in original)]
and cases cited therein.
We concede that the record contains no examples of
third-party use of either the designation "patents.com" or the
phrase "patents com,"15 nor has the Examining Attorney made of
record any instances of third-party use, in connection with
commercially provided on-line information services concerning
patents, of Internet domain name addresses which incorporate the

15 However, as previously noted in this opinion, evidence thereof
simply is not likely to exist in the context of the Internet due to
the technical requirement that there can be no space in the elements
comprising a domain name. Thus, as applicant admits in its main
brief:

In re Gould offers the Examiner one other way to
justify a genericness refusal, namely to "show ... that the
public uses it to identify goods [or services] of other
producers as well." Such a showing would be exceedingly
unlikely, given that at most one entity may possess any
particular domain name. Were some other entity to offer
"on-line information services in the field of intellectual
property law provided via [an] interconnected computer
network linked by common protocols" using the expression
PATENTS.COM (perhaps in some way unrelated to a domain name,
such as in the text of a web page), that entity would only
serve to popularize the web site at which applicant offers
the identified services. In any event the Examiner has made
no such showing.

Ser. No. 75051843
29
expression "patents.com" (such as, hypothetically speaking,
"www.freeinformationaboutpatents.com," "www.internet-patents.com"
or "www.law_firm_name_patents.com"). Such is not necessary,
however, in order to for us to find that the primary significance
of the term "PATENTS.COM" to the relevant public for applicant's
services is as a reference to a category or class (i.e., a genus)
of providing legal information about patents, as well as other
kinds of intellectual property, through a commercial website.
Nonetheless, in addition to our finding of genericness, we will
now decide the remaining issues in this appeal (notwithstanding
the absence of any briefing thereof by the Examining Attorney)16
in the interest of rendering a complete opinion on all of the
issues presented.
Mere Descriptiveness
Considering next, therefore, the issue of whether the
term "PATENTS.COM" is merely descriptive of the subject matter of
its services, applicant argues among other things that, for
technical reasons, any Internet domain name is inherently
distinctive and thus cannot be merely descriptive. Specifically,
applicant asserts in its main brief that "[e]very member of the
public is well aware that only one entity is capable of owning
any particular Internet domain name" (emphasis in original).

16 As indicated earlier, the failure of the Examining Attorney to brief
the remaining issues in this appeal, due to his insistence that the
term "PATENTS.COM" is generic and that, as such, it cannot acquire
distinctiveness, is not a concession of the remaining issues herein.
However, to reiterate, the better practice would have been for the
Examining Attorney to have briefed the alternative issues and not to
rely solely upon an ultimate finding that the term "PATENTS.COM" is
generic.

Ser. No. 75051843
30
Applicant consequently contends that "[i]n this context, anyone
who sees 'PATENTS.COM' (or any other particular domain name)
knows, therefore, that PATENTS.COM can be associated with only
one entity, and that it cannot possibly be associated with more
than one entity. As such it is automatically distinctive."
Applicant also points out that:
In this context it should be noted that
the Examiner has not cited even a single use
of the term PATENTS.COM in a descriptive
sense, for example[,] by means of a Nexis
computer search. It should also be noted
that the Examiner has not cited even a single
use of the term PATENTS.COM referring to
goods or services of anyone other than the
applicant.

As set forth in In re Oppedahl & Larson LLP, supra at
71 USPQ2d 1371-72, a recent case in which (as pointed out
earlier) our principal reviewing court in applicant's companion
application17 affirmed the Board's decision holding that the term
"PATENTS.COM" is merely descriptive of "computer software for
managing a database of records and for tracking the status of the
records by means of the Internet":
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 (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[, 57 USPQ2d at
1812]. 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

17 See footnote 4.

Ser. No. 75051843
31
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[, 23 USPQ2d 1081, 1083-84]
(1992).

....

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[, 224 USPQ 749, 751] (Fed. Cir.
1985). Thus, the [US]PTO may properly
consider the meaning of "patents" and the
meaning of ".com" with respect to the goods
[or services] identified in the application.
However, if those two portions individually
are merely descriptive of an aspect of
appellant’s goods [or services], the [US]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.

In particular, as to the Board's finding of mere
descriptiveness, our principal reviewing court further indicated
and held that:
In this case, the Board concluded that
".com" conveys to the public that the mark is
owned or used by a commercial entity or
business. To support that conclusion, the
Board cites various dictionary definitions
indicating that ".com" is an abbreviation for
"company" used in Internet addresses.
Appellant argues that domain name registries
no longer enforce the use of particular TLDs
based on the type of entity seeking to
register the domain name, i.e., ".com" for
companies and ".org" for non-profit
organizations. Regardless of the current
state of Internet governance, the Board is
correct that the overall impression of ".com"
Ser. No. 75051843
32
conveys to consumers the impression of a
company or commercial entity on the Internet.
"Any competent source suffices to show the
relevant purchasing public’s understanding of
a contested term, including ... dictionary
definitions." Dial-A-Mattress, 240 F.3d at
1345[, 57 USPQ2d at 1810]. Accordingly,
substantial evidence supports the Board’s
conclusion that ".com" indicates a commercial
entity. Moreover, ... as qualified above,
that impression bears no trademark
significance. The dictionary definitions in
the record also establish that ".com" conveys
the use of the Internet in association with
the mark. Appellant’s identification of
goods includes the use of the Internet.
Accordingly, ".com" is descriptive of this
feature of the goods listed in the
application. Substantial record evidence
also supports the Board’s finding that
"patents" is descriptive of a feature of the
appellant’s goods. Appellant’s website shows
that it offers software to track, inter alia,
patent applications and issued patents using
the Internet. Tracking patents falls within
the scope of the goods identified in the
application, i.e., "tracking records." Thus,
the term "patents" describes a feature of the
goods offered.

The Board also concluded that the
combination of "patents" and ".com" does not
render the mark as a whole distinctive and
registrable. The Board reached this
conclusion based on its application of the
[Goodyear's India Rubber Glove Manufacturing
Co. v.] Goodyear [Rubber Co., 128 U.S. 598,
602-03 (1988)] analysis, i.e., finding that
".com" holds no source-indicating
significance just as [is the case with the
term] "Corp." An analysis of the commercial
impression of the mark as a whole as required
under the analysis stated above still yields
the same result on this record. ....

....

Appellant’s goods include patent
tracking software by means of the Internet.
The term patents.com merely describes patent-
related goods in connection with the
Internet. The two terms combined do not
create a different impression. Rather, the
Ser. No. 75051843
33
addition of ".com" to the term "patents" only
strengthens the descriptiveness of the mark
in light of the designation of goods in the
application. "Patents" alone describes one
feature of the goods--that of tracking patent
applications and issued patents. Adding
".com" to the mark adds a further description
of the Internet feature of the identified
goods. Thus, appellant’s argument to
consider the mark as a whole only strengthens
the descriptiveness finding.

Id. at 71 USPQ2d 1373-74.
Moreover, as to applicant's argument, also raised
herein, that a domain name such as "PATENTS.COM" cannot be merely
descriptive because it is inherently distinctive, our principal
reviewing court specifically pointed out and found with respect
thereto that:
Appellant asserts that domain names are
inherently distinctive because they can only
be associated with one entity or source at a
time. The simple fact that domain names can
only be owned by one entity does not of
itself make them distinctive or source
identifying. Telephone numbers and street
addresses are also unique, but they do not by
themselves convey to the public the source of
specific goods or services. Thus, this court
declines to adopt a per se rule that would
extend trademark protection to all Internet
domain names regardless of their use.
Trademark law requires evaluation of a
proposed mark to ascertain the commercial
impression conveyed in light of the goods or
services associated with the mark, not a
simple check for ownership of an Internet
address.

....

When examining domain name marks, the
[US]PTO must evaluate the commercial
impression of the mark as a whole, including
the TLD indicator. The addition of a TLD
such as ".com" or ".org" to an otherwise
unregistrable mark will typically not add any
source-identifying significance, similar to
Ser. No. 75051843
34
the analysis of "Corp." and "Inc." in
Goodyear’s [India] Rubber [Glove]
Manufacturing Co., 128 U.S. at 602. This,
however, is not a bright-line, per se rule.
In exceptional circumstances, a TLD may
render an otherwise descriptive term
sufficiently distinctive for trademark
registration. In this case, the mark
patents.com, as a whole, is merely
descriptive of appellant’s goods. The
decision of the Board is affirmed.

Id. at 71 USPQ2d 1374.
In light of the above, and based on the dictionary
definitions and other evidence before us, it is apparent that the
term "PATENTS.COM" is merely descriptive of applicant's "on-line
information services in the field of intellectual property law
provided via [an] interconnected computer network linked by
common protocols." Plainly, patents are one of the principal
subjects of applicant's Internet-based intellectual property law
information services as evidenced by, for instance, the third
specimen of use, which applicant submitted with its amendment to
allege use. Among other things, such specimen, which consists of
a screen-print of applicant's "Welcome to the patents.com
Intellectual Property Law Web Server" webpage (italics in
original), states that "Oppedahl & Larson LLP is a law firm
offering patent, copyright, trademark, trade secret, and other
intellectual property services"; recites that "This Web server is
intended to provide information about intellectual property and
about the firm"; and contains a link entitled "General
information about patents" as the first in a listing of four
links, which also include those denominated "General information
about copyrights," "General information about trademarks" and
Ser. No. 75051843
35
"General information about trade secrets." Clearly, as was
analogously the case in Oppedahl, the term "PATENTS.COM" merely
describes patent-related legal services in connection with the
Internet. Specifically, to the relevant public for applicant's
services, including laymen interested in obtaining information
about patents, such as general information about patent law,
combining the terms "PATENTS" and ".COM" into the compound term
"PATENTS.COM" results in a designation which would only signify a
commercial website which provides legal information about
patents. Id. at 71 USPQ2d 1374.
The combination, moreover, of the terms "PATENTS" and
".COM" to form the compound term "PATENTS.COM" does not create a
different connotation which is suggestive or otherwise source-
indicative. Rather, the addition of ".COM" to the word "PATENTS"
serves to strengthen the mere descriptiveness of the term
"PATENTS.COM" in light of applicant's services as recited in its
application. The word "PATENTS" alone merely describes one
significant feature of such legal services--that of commercially
providing information on the subject of patents. Adding ".COM"
thereto merely adds a further description of the Internet or web-
based feature of applicant's services. Thus, as was found in
Oppedahl, considering the term "PATENTS.COM" "as a whole only
strengthens the descriptiveness finding." Id. at 71 USPQ2d 1374.
Likewise, as indicated in the even more recent case of In re
Steelbuilding.com, supra at 75 USPQ2d 1423-24, our principal
reviewing court, in upholding the Board's finding of mere
descriptiveness with respect to the term "STEELBUILDING.COM" for,
Ser. No. 75051843
36
inter alia, computerized on-line retail services in the field of
pre-engineered metal buildings and roofing systems,18 held that:
The Board also considered how the TLD
indicator may have affected descriptiveness.
The Board correctly observed that adding
".COM" to "STEELBUILDING" "simply means that
services ... are performed in an on-line or
'e-commerce' environment." .... Indeed, the
TLD indicator describes a significant feature
of applicant's services, namely, the Internet
commerce connection. Thus, the record
sustains the Board's determination that
applicant's mark is "merely descriptive" for
the on-line services specified in the
application.

Furthermore, we fail to see anything in the evidentiary
record herein which presents such exceptional circumstances that
the combined term "PATENTS.COM," when used in connection with
applicant's services, would not be considered merely descriptive
because the combination of the terms "PATENTS" and ".COM" results
in a whole greater than the sum of its parts. In particular, as

18 In particular, the court found among other things that:

The Board also considered whether the mark
STEELBUILDING.COM was, if not generic, then at least merely
descriptive. The applicant’s web site lists as its first
feature: "Design your steel building with our advanced
interactive system." (Emphasis added). One of applicant’s
advertisements includes the following sentence: "E-Commerce
website offers instant pricing and on-line sales of steel
buildings, mini storage systems, building accessories,
component parts and all-steel homes." (Emphases added).
Based on this evidence and more in the record, this court
concurs in the statement of the Board: "[w]e, frankly, are
at a loss to understand that if the retail sale of steel
buildings is not the primary feature of applicant’s
services, what is. However, whether steel buildings are the
'primary feature' of applicant’s services is not
determinative, because they are at least a significant
feature of applicant’s services." Steelbuilding.com, 2003
WL 23350100, at *9. For descriptiveness, the record shows
that a consumer would recognize the compound word
"STEELBUILDING" as conveying the same impression, at least
for trademark purposes, as the phrase "steel buildings."

Ser. No. 75051843
37
noted in this regard by our principal reviewing court in In re
Steelbuilding.com, supra at 75 USPQ2d 1422:
Only in rare instances will the addition
of a TLD indicator to a [merely] descriptive
term operate to create a distinctive mark.
Oppedahl, 373 F.3d at 1175[, 71 USPQ2d at
1373]. In those rare instances, a term that
is not distinctive by itself may acquire some
additional meaning from the addition of a
TLD, such as ".com," ".net," etc. See id. at
1175-76[, 71 USPQ2d at 1373-74.] In those
unusual circumstances, the addition of the
TLD can show Internet-related
distinctiveness, intimating some "Internet
feature" of the item. See id. at 1178[, 71
USPQ2d at 1374.] Because the evaluation of a
mark proposed for registration requires
consideration of the mark as a whole, the
distinctiveness derived from a connection to
the Internet, as indicated by the TLD
indicator, is a part of the calculus for
registration.

Here, however, as explained above, the addition of the TLD
indicator ".COM" to the word "PATENTS" to form the term
"PATENTS.COM" adds nothing more than merely describing the
Internet or web-based feature of applicant's commercially
provided legal information services on the subject of patents.
See In re Oppedahl & Larson LLP, supra at 71 USPQ2d 1374.
Finally, as to applicant's contention that the
Examining Attorney has failed to submit any evidence of third-
party use of the term "PATENTS.COM" in a descriptive manner,
suffice it to say that it is well settled that the fact that
applicant may be the first and/or sole user of a merely
descriptive term does not entitle it to registration thereof
where, as here, the other evidence of record demonstrates that
the term projects only a merely descriptive significance in the
Ser. No. 75051843
38
context of applicant's services. See, e.g., In re National
Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB
1983); and In re Mark A. Gould, M.D., 173 USPQ 243, 245 (TTAB
1972).
Acquired Distinctiveness
This brings us to consideration of the sufficiency of
applicant's alternative claim that the term "PATENTS.COM" has
acquired distinctiveness through use thereof in commerce.
Applicant argues in its main brief that it has submitted
sufficient evidence of acquired distinctiveness, including an
"uncontroverted" declaration by Carl Oppedahl, dated July 10,
2000, which in relevant part attests that "[t]he mark PATENTS.COM
has become distinctive of the goods (or services) through the
applicant's substantially exclusive and continuous use in
commerce for at least the five years immediately before the date
of this statement." Applicant, while maintaining that such
declaration per se is sufficient to demonstrate acquired
distinctiveness, also asserts that "the record shows thousands of
instances of uses by third parties of PATENTS.COM to refer
specifically to goods or services of the applicant" and insists
that "[n]othing in the present record controverts the myriad
objective indicia of distinctiveness shown in these submissions."
In consequence of all the evidence which it has furnished,
applicant urges that it "has provided extensive evidence of
public recognition of PATENTS.COM as a source of services that
relate to the providing of information about intellectual
property."
Ser. No. 75051843
39
In support of its position, applicant has submitted, in
addition to the above-noted declaration of Carl Oppedahl,19 the
declarations, with exhibits, of Marina T. Larson, dated April 3,
1997, and Stanley D. Ference III, dated December 23, 1997. Ms.
Larson's declaration, inter alia, attests that she is a general
partner in applicant; that as shown by the statistics page
attached as Exhibit A, which shows "the number of visitors to the
patents.com web site since February 1996," such site "has had
more than 44,000 [visitors] in just over a year, or an average of
more than 100 visitors per day"; that "[m]ost of these visitors
either typed the name 'patents.com' or highlighted a selection in
a web page," which "highlighting generally results in the name of
the web site ... being displayed on the web browser being
employed"; that "the patents.com web site has been cited by over
300 other web sites, including web sites maintained by the U.S.
House of Representatives, and the US Patent and Trademark Office
(before it stopped mentioning any law firm wen [sic] sites"; that
"[p]rintouts of several web pages which refer to the patents.com

19 The record also contains an earlier declaration from Mr. Oppedahl
which applicant briefly mentions in its main brief. Specifically,
such declaration recites that "[a]ttached is a page showing the
results of a search on Altavista which" he "personally performed
today, August 27, 1998"; that he "searched for web sites satisfying
the condition: www.patents.com and not host:patents.com"; that
"[t]his condition finds web pages that link to the patents.com web
site"; that "[o]n most of these pages, the link occurred because
someone made the individual decision to create the link," that is,
"the link is not the result of some automated process but is the
conscious act of the webmaster for the particular page"; and that
"[t]his is objectively measurable proof of the secondary meaning
associated with the mark." None of the examples of such links, we
observe, evidence any use of the term "PATENTS.COM" itself, however.
At best, such evidence may only show recognition of www.patents.com as
a website address and does not show recognition of "PATENTS.COM" as a
service mark.

Ser. No. 75051843
40
web site are attached as Exhibit B"; that a "list of web sites
which now cite or in the past (the web is fluid and changes
frequently) have cited the patents.com web site is attached as
Exhibit C"; that the "patents.com web site has been referred to
in magazines and newspaper articles as a source of information
about intellectual property law"; and that copies "of some of
these references are attached as Exhibit D."
Ms. Larson also avers in her declaration that, as shown
by Exhibit E, the "patents.com web site has been used as source
material in eleven college courses relating to intellectual
property and web law"; that such site "has been cited in USENET
postings and in e-mail as a source of information on a variety of
topics relating to intellectual property law"; that copies of
"[s]ome of these communications are attached as Exhibit F"; that
as shown in the copies of an accompanying e-mail submitted as a
substitute specimen, such e-mail "contained a footer directing
recipients of the e-mail to patents.com as a source of
information about intellectual property"; that footers "of this
type are automatically appended to outgoing e-mail messages"; and
that "[t]his footer was in use and being appended to outgoing e-
mail messages prior to the filing of the present application.
We observe, however, that with only one exception, none
of the exhibits evidences use of "patents.com," much less the use
of such term in the manner of a service mark. Instead, with
respect to certain links, they either consist of other words,
e.g., "Oppedahl & Larson" or "Intellectual Property Law Web Site
created by the good people at the Oppedahl & Larson patent law
Ser. No. 75051843
41
firm," with an accompanying hand-written notation such as, for
instance, "points to patents.com," or they simply show use
thereof in a way which would be perceived as nothing more than
applicant's domain name address or location on the Internet where
applicant's website appears, that is, as "http://www.patents.com"
or "www.patents.com." See, e.g., In re Eilberg, 49 USPQ2d 1955,
1957 (TTAB 1998) [term "WWW.EILBERG.COM" fails to function as a
service mark for legal services because, as used on letterhead
stationery, "the asserted mark identifies applicant's Internet
domain name, by use of which one can access applicant's Web
site," that is, it "merely indicates the location on the Internet
where applicant's Web site appears"]. The single exception is a
reference to "Patents.com by Oppedahl & Larson," which appears on
a webpage provided by "Computer Tutor, Inc. of Fort Collins[,]
Colorado" under the notation "Links to additional trademark
information:" along with several other references, including
"U.S. Patent & Trademark Office (USPTO)," "General Information
about Web Law by Oppedahl & Larson," "Trademarks & Business
Goodwill by Franklin Pierce Law Center GOOD INFO!" and "Avoiding
Trademark Infringement by Franklin Pierce Law Center EXCELLENT!"
(emphasis in original). Furthermore, as to the averment that
"the number of visitors to the patents.com web site since
February 1996" has amounted to "more than 44,000 in just over a
year, or an average of more than 100 visitors per day," we note
that tellingly there is not a single example of the manner, if
any, in which the term "PATENTS.COM" was featured or otherwise
Ser. No. 75051843
42
displayed on any webpages at applicant's website during such
period.
The declaration of Mr. Ference recites, in relevant
part, that he is "a partner of the law firm of Oppedahl &
Larson"; that "[a]ttached as Exhibit A is a copy of the InfoWorld
HotSites listing for the week of November 3, 1997, which includes
Applicant's patents.com web site"; that such exhibit also
includes "a copy of the HotSites Archive, which is a collection
of over 500 sites described as pertinent to InfoWorld readers"
and which shows that "[t]he patents.com site is the only site
listed for providing legal information"; that "[a]ttached as
Exhibit B is a copy of the homepage of the National Council of
Intellectual Property Associations," which "organization lists
four private web sites for obtaining information on intellectual
property law, one of which is Applicant's patents.com web site";
that "[a]ttached as Exhibit C is a printout of the intellectual
property online resources page from the Nolo Press web site";
that "[f]ive web sites are listed, two of which are maintained by
private law firms," of which "[o]ne of these web sites is
Applicant's patents.com web site"; that "[a]ttached as Exhibit D
is a printout of the intellectual property firms indexed by the
yahoo.com Internet search engine"; that such printout "lists over
190 law firms, the listings for only 11 of which indicate the web
site provides any information above and beyond information
concerning the firm"; and that "[o]ne of these 11 web sites is
Applicant's patents.com web site."
Ser. No. 75051843
43
Mr. Ference further states in his declaration that
"Network Solutions, Inc. is the domain name registrar for the
.COM domain among others"; that, on information and belief, "as
of November 1997 the size of Network Solution's registration
database was approximately 1,300,000"; that "[a]ttached as
Exhibit E is a copy of a statistics page showing the number of
visitors to the patents.com web site since February 1996, as of
August 27, 1997"; that such page "shows that during the preceding
two week period Applicant's patents.com web site had over 12,000
hits"; that "[a]ttached as Exhibit F is a copy of a statistics
page showing the number of visitors to the patents.com web site
since February 1996, as of December 22, 1997"; and that such page
"shows that during the preceding two week period Applicant's
patents.com web site had over 51,700 hits."
While we note that the printout of the "HotSites" page
from the "InfoWorld" website (reproduced in relevant part
previously in this opinion) does indeed evidence use of the term
"Patents.com," as a link to applicant's "http://www.patents.com"
website, in the manner of a service mark, the "HotSites Archive"
to which Mr. Ference refers does not contain a separate listing
of law firms or websites providing legal information. Instead,
its listings are broken down under the five separate categories
of "Major Computer Vendors," "Software Companies," "Hardware
Companies," "Networking Companies" and "Technology and the
Internet," of which none would seem likely to list providers of
legal information. As to the reference to applicant's website in
the homepage of the National Council of Intellectual Property
Ser. No. 75051843
44
Associations, we observe that such page does not refer to the
term "patents.com" in a service mark manner but instead uses
applicant's Internet domain name address as part of the following
statement: "Oppedahl and Larson, Yorktown Heights, NY - General
IP info. (E. Cabic); www.patents.com." We likewise note that the
Nolo Press printout does not evidence use of "patents.com" in the
manner of a service mark; instead, it utilizes applicant's
Internet domain name address as part of the following statement:
"http://www.patents.com/ The patent law firm of Oppedahl and
Larson is a good place to start when researching patent law."
The yahoo.com Internet search engine printout, we notice, does
not contain any reference to either "patents.com" or applicant's
Internet domain name address; rather, it simply sets forth the
following statement: "Oppedahl & Larson Patent Law Firm -
answers to frequently asked patent questions."
Moreover, with respect to the sworn allegations that
the number of visitors to the patents.com web site during the two
weeks prior to August 27, 1997 was recorded as amounting to "over
12,000 hits" and that the number of such visitors during the two
weeks prior to December 22, 1997 was recorded as growing to "over
51,700 hits, we observe that notably there is not even one
example of the way, if any, in which the term "PATENTS.COM" was
featured or otherwise displayed on any webpages at applicant's
website during such periods. The sole instance, on this record,
in which the term "PATENTS.COM" is in fact used in the manner of
a service mark for applicant's services of providing information
on patents and other types of intellectual property is, we note,
Ser. No. 75051843
45
the third specimen of use (described previously in this opinion
in connection with the discussion of mere descriptiveness), which
applicant submitted with the amendment to allege use which it
filed on June 28, 2004.
As pointed out by our principal reviewing court in In
re Steelbuilding.com, supra at 75 USPQ2d 1424, in upholding the
Board's finding that acquired distinctiveness had not been shown
with respect to the merely descriptive term "STEELBUILDING.COM:
[T]he Board considered whether the mark
had acquired distinctiveness, or secondary
meaning. In determining whether secondary
meaning has been acquired, the Board may
examine copying, advertising expenditures,
sales success, length and exclusivity of use,
unsolicited media coverage, and consumer
studies (linking the name to a source).
Cicena Ltd. v. Columbia Telecomms Group, 900
F.2d 1546, 1551[, 14 USPQ2d 1401, 1406] (Fed.
Cir. 1990). On this list, no single factor
is determinative. A showing of secondary
meaning need not consider each of these
elements. Rather, the determination examines
all of the circumstances involving the use of
the mark. See Thompson Med. Co., Inc. v.
Pfizer Inc., 753 F.2d 208, 217[, 225 USPQ
124, 132] (Fed. [sic; 2d] Cir. 1985).
Finally, the applicant’s burden of showing
acquired distinctiveness increases with the
level of descriptiveness; a more descriptive
term requires more evidence of secondary
meaning. In re Bongrain Intern. (Am.) Corp.,
894 F.2d 1316, 1317[, 13 USPQ2d 1727, 1729]
(Fed. Cir. 1990) ("the greater the degree of
descriptiveness the term has, the heavier the
burden to prove it has attained secondary
meaning").

In particular, after agreeing with the Board's finding therein
that a survey "did not show sufficient reliability to constitute
sufficient evidence of acquired distinctiveness" (since among
other things, as indicated by the Board, "occasionally, people
Ser. No. 75051843
46
may recognize applicant's term as a trademark but much of this
evidence may be attributable to domain name recognition"), the
court further noted and held that:
The Board considered other evidence as well,
but none of that evidence established the
proposed mark's distinctiveness. The
proposed mark is highly descriptive.
Therefore, applicant had the burden to show a
concomitantly high level of secondary
meaning. The Board correctly determined
that, on this record, "applicant's evidence
falls far short of its burden." ....

Id.
By the same token, applicant's evidence herein falls
far short of its burden of demonstrating acquired distinctiveness
with respect to the term "PATENTS.COM," which we find to be
highly descriptive of applicant's services of providing
information about patents and other intellectual property law
topics via a commercial website. Given that "the greater the
degree of descriptiveness the term has, the heavier the burden to
prove it has attained secondary meaning," Yamaha International
Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001,
1008 (Fed. Cir. 1988), applicant's mere claim of five years
substantially exclusive and continuous use of the term
"PATENTS.COM" alone is plainly insufficient as proof of acquired
distinctiveness. See TMEP Section 1212.05(a) (4th ed. 2005)
["[i]f the mark is highly descriptive ... of the ... services
named in the application, the statement of five years' use alone
will be deemed insufficient to establish acquired
distinctiveness"], citing inter alia In re Kalmbach Publishing
Co., 14 USPQ2d 1490, 1492 (TTAB 1989) and In re Gray Inc., 3
Ser. No. 75051843
47
USPQ2d 1558, 1559 (TTAB 1987). Buttressing our conclusion in
this regard is the fact that neither of the specimens of use
which applicant submitted during the five-year time period
covered by the Oppedahl declaration of substantially exclusive
and continuous use demonstrates use of the term "PATENTS.COM" in
the manner of a service mark; instead (as mentioned previously),
such term is used solely as part of the Internet domain name
address for applicant's commercial patent and other intellectual
property law website, namely, "http://www.patents.com."20
In fact, except for two instances, none of the third-
party promotional references to applicant's services utilizes the
term "PATENTS.COM" in the manner of a service mark. Of those two
instances, moreover, there is nothing in the record to indicate
how extensive such uses have been and hence, no way to gauge
their impact, if any, on the relevant public for applicant's
services. Specifically, while the previously noted reference to
"Patents.com by Oppedahl & Larson," which appears on a webpage
provided by "Computer Tutor, Inc. of Fort Collins[,] Colorado"
under the notation "Links to additional trademark information:,"
as well as the previously mentioned "HotSites" page from the

20 As recognized, however, by the Board in In re Eilberg, supra:

This is not to say that, if used appropriately, the
asserted mark or portions thereof may not be trademarks or
service marks. For example, if applicant's law firm name
were, say, EILBERG.COM and were presented prominently on
applicant's letterheads and business cards as the name under
which applicant was rendering its legal services, then the
mark may well be registrable. However, this is not the case
before us.

Likewise, except for the few instances noted above, the same is true
herein with respect to the term "PATENTS.COM.
Ser. No. 75051843
48
"InfoWorld" website, which utilizes the term "Patents.com" as a
link to applicant's "http://www.patents.com" website, use the
term "Patents.com" in the manner of a service mark, there is no
indication as how frequently such links have been visited or even
how long they have existed (if in fact they did exist for more
than a short period of time). As Ms. Larson parenthetically but
significantly admits in her declaration, "the web is fluid and
changes frequently."
Furthermore, with respect to applicant's evidence
concerning the number of hits or visits to its website and the
various third-party websites that link to applicant's website,
suffice it to say that aside from the deficiencies previously
noted therein, such evidence, like sales figures, is on this
record at best only an indication of the popularity of
applicant's Internet-based intellectual property law services
among those seeking information about patents and does not serve
to establish that the term "PATENTS.COM" has acquired
distinctiveness. That is, absent evidence showing that such term
is used in the manner of a service mark, website traffic data and
third-party linkage figures are more indicative of the relevant
public's interest in locating information about patents and other
intellectual property law subjects than a demonstration that the
highly descriptive term "PATENTS.COM" has indeed come to be
regarded as a brand or source identifier for informational
services of the kind provided by applicant through its commercial
website. Here, the sole evidence furnished by applicant of its

Ser. No. 75051843
49
use of such term in a service mark manner is the third specimen
of use, which it submitted with its amendment to allege use on
June 28, 2004, but there is absolutely no evidence as to how long
the term "PATENTS.COM" has been so used nor is there any evidence
that applicant has advertised or otherwise promoted its services.
Applicant, therefore, has failed to provide sufficient proof that
the highly descriptive term "PATENTS.COM" has acquired
distinctiveness. See, e.g., In re Steelbuilding.com, supra at 75
USPQ2d 1424.
Decision: The refusals to register are affirmed.