Fancy Footwork: TTAB Allows Change Of Filing Basis During Appeal

In a maneuver worthy of Rogers & Astaire, Applicant Oppedahl & Larson lithely danced around a PTO refusal to register based on faulty specimens of use. In the midst of appeal from this and several other refusals, O&L changed the filing basis of its application from Section 1(a) use to Section 1(b) intent-to-use -- and then for an encore filed an Amendment to Allege Use accompanied by a new specimen. As explained below, the TTAB looked on approvingly despite the PTO's displeasure.


Oppedahl & Larson LLP is the Dillon, Colorado law firm that provides a wealth of information for intellectual property attorneys at its patents.com website. The usefulness of its Feathers! software for tracking trademark applications (software that is free and downloadable from the firm's website) cannot be overestimated.

Last year the law firm challenged the TTAB's notion that TLDs can never have any trademark significance when incorporated as part of a mark. The CAFC in In re Oppedahl & Larson LLP, 71 USPQ2d 1370 (Fed. Cir. 2004) [PATENTS.COM merely descriptive for Internet-available software for tracking patents], ruled that, although the addition of a TLD to an otherwise unregistrable mark "will typically not add any source-identifying significance," this is not a "bright-line, per se rule;" "exceptional circumstances might yield a different result."

Currently, Oppedahl & Larson is pursuing an application to register the same mark PATENTS.COM for "on-line services in the field of intellectual property law." The PTO has refused registration on various grounds: genericness, mere descriptiveness, and failure of the applied-for mark to function as a service mark. The latter refusal is based on O&L's original specimens: according to the Examining Attorney, the appearance of PATENTS.COM on those specimens "would be perceived only as part of an Internet address for applicant's website."

O&L appealed from the final refusal, and the appeal was suspended pending a decision in the CAFC case. Now that the CAFC has ruled, the Board has returned to this file. Rather than consider the substance of the appeal, however, it first made a few procedural rulings. In re Oppedahl & Larson, Serial No. 75051843 (March 11, 2005) [not citable]

In order to remove the "improper specimen" issue from the case, Oppedahl & Larson made a clever move. First, with its brief on appeal (April 8, 2003), it filed a "Substitution of Basis" to change the filing basis of its application from Section 1(a) use to Section 1(b) intent-to-use. Then, several months after oral argument (held on November 18, 2003), it submitted an Amendment to Allege Use, providing a new (and arguably acceptable) specimen of use, and claiming the same dates of first use (in July 1995) that it had originally claimed when it filed its application way back in February 1996. The new specimen shows the term "patents.com" at the top of the firm's webpage, thusly:


The Examining Attorney maintained that "[i]t is too late to amend the application at the brief stage," but he failed to cite any authority for that position. The Board, however, pointed to Trademark Rule 2.35 and TMEP Section 806.03(c) in observing that nothing in the Trademark Rules prevents such an amendment while the application is on appeal. It therefore entered the amendment.

The Examining Attorney also contended that Oppedahl & Larson's request to change its filing basis was "inapposite" in light of its Section 2(f) claim because "a mark must be in use in order to claim acquired distinctiveness." Wrong again. An ITU applicant can, for example, claim secondary meaning from use of the mark on other goods or services; that secondary meaning will transfer to the applied-for mark when use in commerce commences. See In re Dial-A-Mattress Operating Corp., 57 USPS 1807 (Fed. Car. 2001)

The Board then decided to suspend the appeal and remand the case to the Examining Attorney for consideration of the propriety of the amendment to allege use and the new specimen. See TBMP Section 1206.01 (2d ed. Rev. 2004). The appeal will eventually be resumed and, if necessary, further briefing will be allowed as to any new issues raised by the Examining Attorney's action.

The TTABlog looks forward to O&L's return engagement with the Board, when the firm will attempt both to overturn the PTO's genericness refusal and to convince the Board of the sufficiency of its proof of acquired distinctiveness in the PATENTS.COM mark. That may be a daunting task, but it is one recently completed by McAfee, Inc. in In re Network Associates Technology, Inc., Serial No. 76426050 (January 25, 2005)[VIRUSSCAN], discussed here at the TTABlog.

TTABlog update: On March 17, 2005, the Examining Attorney issued an Office Action accepting O&L's Amendment to Allege Use and withdrawing the refusal to register under Sections 1, 2, and 45 of the Trademark Act. The application has been returned to the Board for resumption of the appeal on the remaining issues.

Further update: On March 31, 2006, the TTAB affirmed the genericness and mere descriptiveness refusals, as well as the rejection of O&L's claim of acquired distinctiveness. See TTABlog entry here.

Text ©John L. Welch 2005. All Rights Reserved.