Citation Edit

In re, 586 F.3d 1359 (Fed. Cir. 2009) (full-text).

Factual Background Edit

In 2005 Dial-A-Mattress filed a U.S. trademark application to register the mark "MATTRESS.COM" for “online retail store services in the field of mattress, beds, and bedding.” The application was refused by the trademark examiner because it was generic. The Trademark Trial and Appeal Board affirmed this decision.

Federal Circuit Proceedings Edit

The Federal Circuit affirmed the decision denying registration of the mark. The court reasoned that the relevant public would understand that term referred to a business that focused on mattresses, and that ".com" did not affect the genericness of the mark. Dial-A-Mattress argued that the conclusion of genericness was not supported, and that the general public would not associate this with a website. The appellant also argued that the Board did not look at the mark as a whole. Finally, the appellant argued that the mark could be considered a mnemonic device to indicate comfort.

“The critical issue in genericness cases 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.”[1] The courts apply a two-part test to determine genericness:

First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?[2]

Here, the court reasoned that the genus is the online retail sale of mattresses and the mark is generic if the relevant public understands it to refer to mattress online retailers. The court also reasoned that when looking at the mark as a whole, the .com added no additional meaning that changed their analysis.

References Edit

  1. H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 U.S.P.Q. (BNA) 528 (Fed Cir. 1986) (full-text).
  2. Id. at 990.

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