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In re 1800mattresses.com ip, LLC, 2009-1188 CAFC Slip Op., Nov. 6, 2009. The decision of the USPTO Trademark Trial and Appeal Board (TTAB ) finding "MATTRESS.COM" generic was affirmed.

Dial-a-Matress applied for the mark MATTRESS.COM for "online retail store services in the field of mattresses, beds and bedding." The registration was refused Dial-a-Mattress appealed to TTAB, which affirmed the refusal to register. The reasoning of TTAB was that "MATTRESS would be understood by the relevant public as the genus of service being offered, and that the top level domain ".COM" would be recognized by consumers as a commercial website offering retail services featuring mattresses. TTAB rejected the argument that ".com" somehow evoked the words "comfort" or "comfortable." Because the addition of ".COM" did nothing to create additional meaning, TTAB affirmed the examiner's rejection.

Follow up:

Dial-a-Mattress argued to the Federal Circuit that the USPTO did not show, by clear evidence, that the relevant public refers to the class of services by the mark "MATTRESS.COM", that TTAB ignored evidence that businesses outside the genus of online retail store services use "MATTRESS.COM" as a component of their domain names, that TTAB erred by looking to the component parts of "MATTRESS.COM" to find it generic, and that the board should not have disregarded the mnemonic nature of the mark "MATTRESS.COM" as being capable of evoking the quality of comfort in mattresses.

CAFC agreed with the USPTO that substantial evidence supported TTAB's conclusion that the mark "MATTRESS.COM" is generic. 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. A two step inquiry is used. 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? The parties agree on the genus of services, and thus, the mark is generic if the relevant public understands "MATTRESS.COM" to refer to such online retailers.

Considering the mark as a whole, no additional meaning different from the generic meaining of its constituent words is added. Because websites operate under the term "MATTRESS.COM" to provide mattresses, and they provide them online, TTAB properly concluded that the relevant public understands the mark "MATTRESS.COM" to be no more than the sum of its constituent part, namely, an online provider of mattresses. Dial-a-Mattress's assertion that them mark "MATTRESS.COM" is not generic because the relevant public would not use the term "mattress.com" to refer to online mattress retailers is not persuasive because the test is not only whether the relevant public would itself use the term to describe the genus, but also whether the relevant public would understand the term to refer primarily to the appropriate genus of goods or services. Dial-a-Mattress's assertion that there can only be one generic term, "online mattress stores," is incorrect, because any term that the relevant public understands to refer to the genus of "online retail store services in the field of mattresses, beds, and bedding" is generic.

Dial-a-Mattress presented no evidence that the relevant public finds a double entendre in the term "MATTRESS.COM", nor did it provide evidence that ".com" evoked anything other than a commercial internet domain. Thus, this is not a case that the CAFC found in which the addition of ".com" affects the genericness of the mark. because Dial-a-Mattress presented no evidence that "MATTRESS.COM" acts as a mnemonic, substantial evidence supports TTAB's finding in that regard.

Because CAFC considered Dial-a-Mattress's remaining arguments and also found them to be unpersuasive, CAFC affirmed TTAB's decision.