Monday, November 09, 2009

CAFC Affirms TTAB Genericness Ruling re "MATTRESS.COM" for -- Guess What?

The CAFC has affirmed the TTAB's decision in In re Dial-A-Mattress Operating Corp., Serial No. 78976682 (November 13, 2009) [not precedential], in which the Board affirmed a refusal to register the term MATTRESS.COM on the Supplemental Register, for "online retail store services in the field of mattresses, beds and bedding," on the ground of genericness. In re IP, LLC, 92 USPQ2d 1682 (Fed. Cir. 2009) [precedential].

Whether a term is generic is a factual determination, and so the CAFC reviewed the Board's finding for substantial evidence. "Substantial evidence is 'more than a mere scintilla' and 'such relevant evidence as a reasonable mind would accept as adequate' to support a conclusion."

It was agreed that the genus of services is "online retail store services in the field of mattresses, beds, and bedding," and so the term in question is generic "if the relevant public understands MATTRESS.COM to refer to such online retailers."

There was no dispute that "mattress" and ".com" are both generic. The Board then considered the term MATTRESS.COM as a whole, "and determined that the combination added no new meaning, relying on the prevalence of the term '' in the website addresses of several online mattress retailers that provide the same services as Dial-A-Mattress. Such reliance is permissible to illuminate what services the relevant public would understand a website operating under the term '' to provide."

Because websites operate under the term “” to provide mattresses, and they provide them online, the Board properly concluded that the relevant public understands the mark MATTRESS.COM to be no more than the sum of its constituent parts, viz., an online provider of mattresses. Indeed, the Board’s reasoning tracked our later reasoning in In re

The CAFC therefore found substantial evidence to support the Board’s conclusion that "[c]onsumers would see MATTRESS.COM and would immediately recognize it as a term that denotes a commercial website rendering retail services featuring mattresses."

Appellant argued that MATTRESS.COM is not generic because the relevant public would not use that term to refer to online mattress retailers, but he court was not moved: "The test is not only whether the relevant public would itself use the term to describe the genus, but also whether the relevant public would understand the term to be generic."

Finally, the CAFC agreed the ".com ending to MATTRESS.COM does not evoke "the quality of comfort in mattresses and that the mark is not a mnemonic." Applicant presented no evidence that the relevant public finds such a double entendre in the term MATTRESS.COM and no evidence that it acts as a mnemonic.

And so the CAFC affirmed the Board's decision.

TTABlog comment: It annoys me that the CAFC refers to MATTRESS.COM as a "mark." If it's generic, it's not a mark.

Text Copyright John L. Welch 2009.


At 12:09 PM, Blogger Scott Cleere said...

If only one entity can own the registration for a mark, how can the public not see it as a single source of goods? If it's not my website, I'm not going to use the term unless its for comparative advertising. Anyway, the bigger question might be, why do trademark attorneys and businesses keep wasting time and money trying to register domain names as a trademark? Just acquire the domain and keep it; that's all the protection you need.


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