The Court of Appeals for the Federal Circuit recently revisited the question of how to determine whether an applied-for mark is generic for the goods or services claimed in the application. Concluding that the critical issue in a genericness case is whether members of the relevant public primarily would use and understand the term sought to be registered to refer to the genus of the goods or services in question, the court agreed with the Trademark Trial and Appeal Board that the term MATTRESS.COM was generic for on-line retail store services in the field of mattresses, beds and bedding.
In 1800Mattress.com, the Applicant appealed the refusal to register the term MATTRESS.COM for online retail services, arguing that the conclusion that the term was generic was not supported by substantial evidence. Specifically, Applicant argued that "online mattress stores" – and not the claimed services – were the only services that could be generic for MATTRESS.COM, and further that MATTRESS.COM was not generic for the claimed services because, according to the Applicant, the Trademark Office had not shown by clear and convincing evidence that the relevant mattresspurchasing public referred to on-line retail mattress services as "Mattress.com". Applicant also argued that the mark was registrable because it was allegedly viewed as a mnemonic evoking quality and comfort. Neither the Board nor the Appeals Court were persuaded.
As to the genericness question, the court reiterated that the test for determining whether a proposed mark is a generic term involves first determining the "genus of [the] goods or services at issue", and second, determining whether the term sought to be registered is "understood by the relevant public [to refer] primarily . . . to that genus of goods or services." Regarding the genus, the Trademark Office and the Applicant had agreed that the appropriate genus was "online retail store services in the field of mattresses, beds, and bedding." The question thus became whether the relevant public understood the proposed mark to refer to such services.
In concluding that the term was so understood by the appropriate public, the court recognized that the inquiry should be as to the mark as a whole because notwithstanding the fact that elements of a mark could be generic, it is possible that an overall combination adds enough to the mark to raise it above mere genericness. Unfortunately for the Applicant, the court agreed with the Trademark Office that the combination of the generic term "mattress" with the generic top level domain indicator ".com", did not add any new meaning to the combination MATTRESS.COM, primarily because there was substantial evidence of record to support the conclusion that the term would be immediately recognized as a "commercial website rendering retail services featuring mattresses." Clarifying, the court stated that the question 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 be generic." (emphasis in original).
Finally, as to Applicant's mnemonic argument, the court held that substantial evidence supported the Board's finding that the addition to ".com" to "Mattress" did not result in a mark that was viewed by the public as evoking quality and comfort in mattresses. The court agreed with the Trademark Office and the Board that Applicant had not presented evidence to support its claim that the relevant public "finds such a double-entendre in the term MATTRESS.COM." Further, the court pointed out that the addition of the ".com" indicator to a descriptive term will only very rarely result in a distinctive mark. In this case, because the Applicant had not pointed to any evidence to support its contention that the term ".com" evoked any meaning other than its meaning as an internet domain indicator, and because there was no evidence to support the claim that the public viewed the mark as a mnemonic, there was sufficient evidence for the Trademark Office and the Board to have concluded that the term was generic and to have refused registration.
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