November 2009 Issue

Civil Cases

In re 1800MATTRESS.COM IP, L.L.C.,
2009 WL 3681828 (Fed. Cir. Nov. 6, 2009)

ABSTRACT
Applicant’s attempt to register MATTRESS.COM on the Supplemental Register for online retail store services for mattresses, beds, and bedding was rejected by the TTAB.  The TTAB found that MATTRESS.COM was generic, because the relevant public would understand the compound term to refer to the genus of Applicant’s services, namely online mattress retailers.  The Federal Circuit affirmed, finding that substantial evidence supported the TTAB’s conclusion that the mark was generic for Applicant’s services.

CASE SUMMARY

FACTS
Dial-A-Mattress, later substituted by 1800Mattress.com IP, L.L.C. (“Applicant”), applied to register the mark MATTRESS.COM on the Supplemental Register for “online retail store services in the field of mattresses, beds, and bedding.”  The Examining Attorney rejected the term as generic under Section 23(c).  On appeal, the TTAB affirmed the refusal to register, agreeing with all of the Examiner’s conclusions except his identification of the genus of Applicant’s services.  The TTAB instead adopted Applicant’s recitation of its genus—online retail store services in the field of mattresses, beds, and bedding, explaining that the relevant public would understand MATTRESS.COM to refer to this genus.  Examining the component terms individually, the TTAB concluded that the term “mattress” identified a key focus of Applicant’s services and thus was generic for its services.  The TTAB also found that the addition of “.com” to “mattress” did not alter its generic nature “because it did not create any additional meaning.”  In reaching this conclusion, the TTAB relied on a dictionary definition of “.com” and competitors’ internet addresses ending in “mattress.com,” both indicating that consumers would recognize MATTRESS.COM as signifying a commercial website focusing on mattress retail services.  The TTAB also agreed with the Examiner’s rejection of Applicant’s arguments that “.com” evoked the words “comfortable” or “comfort” and that MATTRESS.COM functioned as a mnemonic, creating a memorable way to reach Applicant’s website.  In response to the TTAB’s holding, Applicant appealed to the Federal Circuit.

ANALYSIS
On appeal, Applicant argued that the TTAB’s conclusion that MATTRESS.COM was generic was not supported by substantial evidence.  Contending that the correct generic term for online retail store services featuring mattresses was “online mattress stores,” Applicant argued that the TTAB did not show that the public refers to Applicant’s services as MATTRESS.COM.   Applicant also argued that the TTAB ignored evidence that MATTRESS.COM was used in domain names for businesses selling mattresses in-person and thus outside the scope of the genus.  Claiming that the TTAB only analyzed the component parts of the mark to find the mark was generic, Applicant reasoned that failing to look at the mark as a whole was in error.  Finally, Applicant argued that the TTAB incorrectly disregarded Applicant’s contentions that MATTRESS.COM functioned as a mnemonic and as an indicator of comfort in mattresses.

The Federal Circuit affirmed the TTAB’s holding, finding that substantial evidence supported the decision.  The critical issue in determining if an alleged mark is in fact generic, according to the court, is “whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.”  The court recounted the TTAB’s inquiry into public understanding by reviewing the terms “mattress” and “.com” individually and in combination.  As the generic nature of each component term was not disputed, the Federal Circuit reviewed the TTAB’s findings regarding the term as a whole.  The court affirmed the TTAB’s finding that the combination MATTRESS.COM did not add any new meaning beyond those of its component terms.  The Federal Circuit further affirmed the TTAB’s reliance on both the common meanings of the individual terms and the prevalence of MATTRESS.COM in internet addresses of other mattress retailers providing services similar to Applicant’s.  In fact, the court commented that the TTAB’s reasoning tracked that of the Federal Circuit’s April 2009 decision in In re Hotels.com, 573 F.3d 1300 (Fed. Cir. 2009), in which the Federal Circuit gave controlling weight to third-party use of “hotel” with a “.com” suffix for similar services, and to common meanings and dictionary definitions of the component terms.   Finally, Applicant’s contention that some websites containing “mattress.com” in their domain names do not actually sell mattresses was discounted by the court.  The court reasoned that, even if such use occurs, “‘mattress.com’ is still primarily used to identify services in the same genus as [Applicant’s] services,” a commercial website featuring the retail sale of mattresses.

The Federal Circuit also disagreed with Applicant’s assertion that the public would not use the term MATTRESS.COM to refer to online mattress retailers.  The court reiterated that the proper inquiry is not whether the term is used, but rather whether the public would immediately understand that MATTRESS.COM refers to online mattress retailers.  Such understanding alone is sufficient to render the term generic.  Moreover, the court rejected Applicant’s contention that there can only be one generic term for the services, and that the applicable term was already established to be “online mattress stores.”   Again clarifying the test, the court closed the door to Applicant’s restrictive interpretation by stating that “any term that the relevant public understands to refer to the genus” is generic. 

Finally, the Federal Circuit agreed with the TTAB’s conclusion that the “.com” in MATTRESS.COM  does not evoke the comfortable quality of mattresses, nor does MATTRESS.COM function as a mnemonic memory device.  The court noted that Applicant submitted no evidence to support either assertion.  Accordingly, no evidence supported holding that “.com” suggested anything other than a commercial internet domain.  However, the court left open the possibility that evidence could be presented to confer meaning to a top level domain indicator (“.com”) beyond merely as a commercial internet domain.  The Federal Circuit affirmed the TTAB’s holding that MATTRESS.COM is generic for Applicant’s services.

CONCLUSION
This decision confirms the holding of In re Hotels.com that the relevant inquiry in determining whether a mark is generic for its genus of services is not limited to whether the relevant public uses that term, but also considers whether the public understands the term to refer to the genus.  This decision also highlights that, while adding a top level domain indicator (“.com”) does not necessarily transform a generic term into a nongeneric mark, evidence that “.com” evokes more than merely a commercial internet domain may, in fact, have such a transformative effect.