Monday, November 16, 2009

CAFC Affirms TTAB’s Ruling That “Mattress.Com” is Generic

The Court of Appeals for the Federal Circuit (“CAFC”) affirmed the Trademark Trial and Appeal Board’s decision that the term MATTRESS.COM is generic for the retail sale of mattresses, beds and bedding. Thus, the CAFC held that the term is not eligible for registration on the Supplemental Register (the trademark register for descriptive terms that are capable of becoming trademarks one day).

The Board considered whether the combination of the terms MATTRESS and .COM, as a whole, creates nothing more than a generic term. The parties agreed that the genus of services is the online retail sale of mattresses, beds and bedding. When the Board considered the term “Mattress.com” in relation to the relevant services, the Board concluded that because the website operates under the term “mattress.com” to provide mattresses, the relevant public would not perceive that term as a trademark, but rather as a generic term that refers to the online sale of mattresses.

In its attempt to persuade the Court, Appellant argued that the term MATTRESS.COM is not generic because the average purchaser would not use that term to refer to online retailers of mattresses. The Court, however, wisely stated that the test is not only whether the relevant public would itself use the term to describe the genus of products, but also whether the relevant public would understand the term to be generic.

The CAFC found substantial evidence in the record to support the Board’s ruling that “consumers would see MATTRESS.COM and would immediately recognize it as a term that denotes a commercial website rendering retail services featuring mattresses.”

Does the Board’s and CAFC’s ruling mean that the owner of the site Mattress.com does not own a valuable term or domain name? Who else needs to use the term Mattress.com? Who else would promote themselves as Mattress.com? If they did, wouldn’t they drive business to a competitor’s website? Even though the terms “Mattress” and “.Com” are generic terms for online retail sale of mattresses, seems to me that the owner of the domain name holds a monopoly on the generic term “mattress.com,” which, in essense, is tantamount to owning a protectable trademark, yes?

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