The Court Finds MATTRESS.COM Generic in Reference to Online Retailer of Mattresses, Beds, and Bedding
November 06, 2009
Last Month at the Federal Circuit - December 2009
Judges: Lourie (author), Friedman, Prost
[Appealed from: TTAB]
In In re 1800Mattress.com IP, LLC (substituted for Dial-A-Mattress Operating Corp.), No. 09-1188 (Fed. Cir. Nov. 6, 2009), the Federal Circuit affirmed the TTAB’s decision finding the mark MATTRESS.COM generic.
Dial-A-Mattress Operating Corp. (“Dial -AMattress”) sought to register the mark MATTRESS.COM for services identified as “online retail store services in the field of mattresses, beds, and bedding.” Slip op. at 1-2. The PTO refused registration of the mark as generic. The TTAB affirmed the PTO’s refusal. The TTAB reasoned that the genus of services offered by Dial-A-Mattress was online retail store services in the field of mattresses, beds, and bedding, and found that, given the genus of services offered, the term MATTRESS.COM would be understood by the relevant public to refer primarily to that genus. The TTAB also noted that the addition of the top level domain extension “.com” did not create any additional meaning and did not therefore affect the term’s genericness. The TTAB rejected Dial-A-Mattress’s argument that “com” somehow evoked the words “comfort” or “comfortable” and rejected the idea that the mark served as a mnemonic.
On appeal, the Federal Circuit found the mark MATTRESS.COM to be generic. As both parties agreed that the genus of services was “online retail store services in the field of mattresses, beds, and bedding,” the Court turned to the relevant public’s understanding of the mark MATTRESS.COM. Neither party disputed the genericness of either “mattress” or “.com.” The Court therefore considered the mark in its entirety to determine whether the combination added new meaning. Given the large number of similar uses of “mattress.com” as well as the common meanings of “mattress” and “.com,” the Court found that the TTAB had properly determined that the relevant public would understand MATTRESS.COM to be no more than the sum of its constituent parts, i.e., an online provider of mattresses.
Dial-A-Mattress argued that the only generic term for its business was “online mattress stores.” Id. at 3. The Court disagreed, however, and found that any term the relevant public understands to refer to the genus of “online retail store services in the fi eld of mattresses, beds, and bedding” is generic. Id. at 8.
The Court also endorsed the TTAB’s conclusion that the “.com” extension in MATTRESS.COM does not evoke the quality of “comfort” in mattresses and that the mark is not a mnemonic. The Court reasoned that because Dial-A-Mattress presented no evidence that “.com” evoked anything but a commercial Internet domain, this was not a case in which the addition of “.com” affects the genericness of the mark. Id.