Federal Circuit finds another '.com' mark to be generic

United States of America
In In re 1800Mattress.com IP LLC (Case 09-1188, November 6 2009), in an appeal from the final decision of the Trademark Trial and Appeal Board (TTAB), the US Court of Appeals for the Federal Circuit has affirmed the TTAB’s refusal to register the mark MATTRESS.COM on the grounds that it was generic.   

Dial-A-Mattress filed a US trademark application to register MATTRESS.COM for services identified as “online retail store services in the field of mattresses, beds and bedding”. After the trademark examiner issued a final refusal to register the mark on the basis that it was generic, Dial-A-Mattress appealed to the TTAB. The TTAB affirmed the examiner’s refusal, finding that because 'mattress' identified such a key aspect of Dial-A-Mattress’s services, it was generic for those services. Dial-A-Mattress appealed to the US Court of Appeals for the Federal Circuit.

At the Federal Circuit, Dial-A-Mattress urged that the court find that:
  • the TTAB’s conclusion was not supported by substantial evidence;
  • the TTAB had overlooked evidence that brick-and-mortar stores (ie, businesses outside the genus of online retail services) use 'mattress.com' as a component of their domain names; and
  • the TTAB had improperly looked to the component parts of the mark - instead of the mark as a whole - to determine genericness. 
Dial-A-Mattress also argued that MATTRESS.COM is a mnemonic or double entendre capable of evoking the quality of comfort in a mattress.

The Federal Circuit applied the two-step analysis set forth in H Marvin Ginn Corp v Int’l Ass’n of Fire Chiefs Inc (782 F2d 987) for determining genericness. First, the court had to look at the genus of the goods or services at issue. The court then had to determine whether MATTRESS.COM was understood by the relevant public to refer primarily to that genus of goods or services. The parties agreed that the genus of services was “online retail store services in the field of mattresses, beds, and bedding”. Therefore, the court considered only whether there was sufficient evidence to support the TTAB’s conclusion that the relevant public understood MATTRESS.COM as referring to that genus of services.

Neither party disputed that the components 'mattress' and '.com' are generic. Relying on its decision in In re Hotels.com (Case 08-1429) (for further details please see "Adding '.com' to generic term does not make it registrable, says court"), the Federal Circuit concluded that the mark as a whole was also generic. It cited evidence of multiple websites that operate under the term 'mattress.com' to provide mattresses online. This, the court reasoned, was sufficient evidence for the TTAB to conclude 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”. The court rejected Dial-A-Mattress’s argument that the relevant public would not use the term to describe the genus of online mattresses as an irrelevant inquiry. Instead, the court explained, the proper inquiry was whether the term is understood by the relevant public to refer primarily to the genus of online mattresses. 

The court also rejected Dial-A-Mattress's argument that the '.com' portion of MATTRESS.COM evoked the quality of comfort in mattresses and was therefore a mnemonic. In In re Steelbuilding.com (Case 04-1447), the court had emphasized that “[o]nly in rare instances will the addition of a [top-level domain] indicator to a descriptive term operate to create a distinctive mark” (for further details please see "Descriptive STEELBUILDING.COM application flattened"). In the present case, the Federal Circuit determined that Dial-A-Mattress had not presented evidence that the mark MATTRESS.COM operated as a mnemonic or evoked anything but a commercial internet domain.

Tiffany M Scurry, McDermott Will & Emery LLP, Irvine

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