Dial-A-Mattress Operating Corp.

Trademark Trial and Appeal Board

Nov 13, 2008

No. 78976682 (T.T.A.B. Nov. 13, 2008)

Oral Hearing: September 30, 2008 Mailed: November 13, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Dial-A-Mattress Operating Corp.
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Serial No. 78976682
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Robert E. Rosenthal of Plevy, Howard & Darcy, PC for Dial-A-
Mattress Operating Corp.

Steven M. Perez, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Rogers, Walsh and Wellington, Administrative Trademark
Judges.

Opinion by Wellington, Administrative Trademark Judge:

Applicant, Dial-A-Mattress Operating Corp., filed an
application, as amended, to register the mark MATTRESS.COM (in
standard character format) on the Supplemental Register for
services identified as “online retail store services in the
field of mattresses, beds and bedding” in International Class
35.1

1 In response to an Office action refusing registration, applicant
filed a request to divide. The application involved in this appeal is
the “child” application (Serial No. 78976682). The “parent”
application (Serial No. 78511054) for “telephone shop-at-home retail
services, and retail store services in the field of mattresses, beds
and bedding” was also appealed, but was remanded to the examining
THIS OPINION IS A NOT
A PRECEDENT OF THE
TTAB
Serial No. 78976682
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The trademark examining attorney finally refused
registration of applicant’s mark on the Supplemental Register on
the basis that applicant’s mark is generic under Section 23(c)
of the Trademark Act, 15 U.S.C. § 1091(c).2
Applicant appealed, both applicant and the examining
attorney filed briefs, and both participated in oral arguments.
The sole issue on appeal is whether the mark is generic in
relation to the recited services.
The test for determining whether a mark is generic involves
a two-step inquiry. First, what is the genus (category or
class) of goods or services at issue? Second, is the term
sought to be registered understood by the relevant public
primarily to refer to that genus (category or class) of goods or
services? See H. Marvin Ginn Corporation v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528,
530 (Fed. Cir. 1986).
The Office has the burden of proving genericness by "clear
evidence" of the public's understanding thereof. In re Merrill

attorney at his request. The application is currently under a non-
final Office action (issued May 6, 2008) refusing registration.
2 The examining attorney initially refused registration of the mark on
the Principal Register under Section 2(e)(1) of the Trademark Act on
the ground that the mark is merely descriptive of the services, and
that applicant's evidence of acquired distinctiveness under Section
2(f) of the Act was insufficient. Applicant then filed this appeal
and an amendment of the application to seek registration on the
Supplemental Register. The application was remanded by the Board to
the examining attorney to reconsider the refusal in light of
applicant’s amendment. The examining attorney then issued a final
Office action refusing registration on the genericness ground.
Serial No. 78976682
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Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987).
The genus (category or class) of services at issue
Applicant and the examining attorney disagree as to the
genus of applicant's services. The examining attorney contends
that the genus of services “may reasonably be regarded as
‘mattress, bed and bedding stores.’” Brief, (unnumbered) p. 5.
Applicant argues that the genus is not so broad as to include
“brick and mortar” (physical) stores, but should only include
“online retail sales of mattresses, beds and bedding, as recited
in the application.” Brief, p. 6.
We conclude that that applicant’s recitation properly sets
forth the genus of services – that is, online retail store
services in the field of mattresses, beds and bedding. This
obviously does not include “brick and mortar” stores, but does
include online stores selling the same goods, i.e., mattresses,
beds and bedding, as stores selling such goods from a physical
location.
The meaning of MATTRESS.COM to the relevant public
Evidence of the relevant public's understanding of a term
may be obtained from any competent source including consumer
surveys, dictionary definitions, newspapers and other
publications. In re Northland Aluminum Products, Inc., 777 F.2d
1556, 227 USPQ 961, 963 (Fed. Cir. 1985). We have considered
Serial No. 78976682
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all the evidence of record bearing on purchaser perception of
MATTRESS.COM, including the evidence applicant has submitted in
support of its claim of acquired distinctiveness. See In re
Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997); and In re The
Paint Products Co., 8 USPQ2d 1863 (TTAB 1988).
The examining attorney has submitted a dictionary entry
defining "mattress" as "a fabric case filled with resilient
material (as cotton, hair, feathers, foam rubber, or an
arrangement of coiled springs) used either alone as a bed or on
a bedstead."3
The record also includes advertisements for applicant’s
services as well as printouts from applicant’s website.4
Together, these demonstrate that mattresses are the focus, or a
key focus, of applicant’s online retail store services. A wide
variety of mattresses are advertised by applicant for sale to
consumers. Because the term “mattress” identifies such a key
aspect of applicant's services, i.e., applicant's online retail
store services feature mattresses, the term is generic, for
applicant's services. Certainly, if the mark comprised this
term alone, we would have little trouble concluding that it
would be perceived as merely a generic term. See In re Candy

3 Merriam-Webster’s Online Dictionary, printout attached to Office
action dated June 13, 2007.
4 Applicant’s advertisements attached to applicant’s response filed
December 12, 2005. Printouts from applicant’s website
(www.mattress.com) attached by the examining attorney to Office action
dated June 13, 2007.
Serial No. 78976682
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Bouquet International, Inc., 73 USPQ2d 1883 (TTAB 2004) [because
CANDY BOUQUET is generic for gift packages of candy, it also is
generic for applicant's retail, mail and computer ordering
services therefor]; In re A La Vieille Russie Inc., 60 USPQ2d
1895 (TTAB 2001) [RUSSIANART generic for particular field or
type of art and also for dealership services directed to that
field]; and In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB
1999) [because LOG CABIN HOMES is generic for a particular type
of building, it is also generic for architectural design
services directed to that type of building, and for retail
outlets featuring kits for construction of that type of
building].
Applicant, instead, places great emphasis on the fact that
its mark is not MATTRESS, but is MATTRESS.COM, and argues that
because “[t]here is no evidence of record that the mark...is the
name for a product or service,” registration of applicant’s mark
“would not deprive competitors of the name of the service.”
Brief, p. 8. Relying heavily on the Federal Circuit’s decision
in In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d
1832 (Fed. Cir. 1999), applicant argues that the examining
attorney “bears the burden of showing that the mark as a whole,
and not its component parts, are the common name of the
service.” Brief, p. 11. In short, applicant argues against any
attempt by the examining attorney to rely on evidence only of
Serial No. 78976682
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the genericness of the component parts, as in In re Gould Paper
Corp., 835 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE
held generic).
In response, the examining attorney argues that “.com” is
merely an internet address top level domain (TLD) extension and
the addition of this TLD to “mattress” does not alter the
generic nature of the term “mattress” and result in creation of
a mark. In this regard, he relies on a dictionary entry
defining ".com" as an abbreviation designating a “commercial
organization (in Internet addresses)."5 He also submitted
printouts of various pages from several third-party websites
with internet addresses ending in “mattress.com” (or containing
“mattress” and “.com”) which he argues is an indication that
“consumers are not unaccustomed to the combination [of theses
terms] in internet addresses.”6 Brief, p. (unnumbered) 12. It
is also evident from these printouts that the owners of these
websites render the same services as applicant, i.e., online
retail store services featuring mattresses and/or bedding.
Excerpts from these websites include:7

5 The American Heritage Dictionary of the English Language (Fourth
Edition 2000), attached to Office action dated February 2, 2006). A
second definition was also made of record: .COM: INTERNET
ABBREVIATION FOR company; used in some Internet addresses which belong
to companies or businesses. Cambridge Advanced Learner’s Dictionary.
6 Attached to Office action dated February 14, 2008.
7 Other website addresses for which the examining attorney attached
printouts are: www.acmemattress.com, www.antiquemattress.com,
www.alternatingpressuremattress.com, www.brandnamemattress.com,
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www.emattress.com
“Leading the World in Memory Foam Mattress Technology”
[alongside a picture of mattress and bed]; “Price Quote”
tab;

www.bestmattress.com
“...carries a complete line of national brands such as...”;
“The best prices on the Internet”; “Specializing in
teaching customers how to select the perfect mattress”
[accompanied by pictures of mattresses];

www.futonmattress.com
“The Best selection of Futon Mattresses Online!”; “shop by
mattresses”; “part of CSN/Stores”;

www.nationwidemattress.com
“It’s time to treat yourself to a new mattress!”; “Click
here for [brand name] pricing”;

www.sofa-bed-mattress.com
Menus include “Sofa Bed Mattresses” and “Other Mattresses”;
purchasing options include credit cards and PayPal next to
a “View Cart” tab;

www.us-mattress.com
Under a drop-down menu for “mattresses” are a variety of
brand names; sale information on selected Sealy mattresses
and other “shopping options”; “Free Delivery”; “How to
Shop” tab.

This evidence demonstrates that domain names incorporating
the compound term "mattress.com" are used by others to identify
websites and services in the same genus as applicant’s services.
Consumers would see MATTRESS.COM and would immediately recognize
it as a term that denotes a commercial website rendering retail
services featuring mattresses.

www.michigandiscountmattress.com, www.mrmattress.com,
www.dreammattressandbedding.com, www.mattressbarn.com,
www.mattressdirectcartersville.com, www.mattresskingdfw.com,
www.mattressstore.com, and www.themattressstoreonline.com.
Serial No. 78976682
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Based on the record before us, we find the examining
attorney has met his burden of establishing, prima facie, that
the primary meaning of MATTRESS.COM is generic for the involved
services and applicant has not rebutted this showing. Compare
In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d
1378 (Fed. Cir. 2007)(Federal Circuit affirmed refusal to
register LAWYERS.COM as generic for services involving “an
online interactive database featuring information exchange in
the fields of law, legal news, and legal services,” where record
included eight websites besides the applicant’s containing
lawyer.com or lawyers.com) with In re Steelbuilding.com, 415
F.3d 1293, 75 USPQ2d 1420 (Fed. Cir. 2005) (Federal Circuit
reversed Board finding that STEELBUILDING.COM is generic for
“computerized on-line retail services in the field of pre-
engineered metal buildings and roofing systems” where record
included evidence of competitive use of “steel building” and
“steel buildings” but did not “address directly the composite
term STEELBUILDING”).
This Board has acknowledged that, “there is no bright-line
rule that appending a top-level domain name such as ‘.com’ to an
otherwise generic term will never affect registrability.” In re
Hotels.com L.P., 87 USPQ2d 1100, 1105 (TTAB 2008), citing In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir.
2004). Here, however, applicant’s coupling of the TLD “.COM”
Serial No. 78976682
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with MATTRESS, merely signifies that the user of the domain name
is a commercial entity retailing its mattresses via an internet
website, as do the other online mattress retailers, discussed
supra. The instant case is unlike the Steelbuilding.com case,
on which applicant heavily relies, for two significant reasons.
First, the record here shows use by competitors of the composite
mattress.com, whereas there was little evidence in
Steelbuilding.com of use of the composite “Steelbuilding.”
Second, in this case the addition of the “.com” TLD does not
create any additional meaning, which the Federal Circuit found
created by the addition in Steelbuilding.com.
In addition, applicant’s reliance on the Federal Circuit’s
decision in American Fertility Society is misplaced for several
reasons. In that decision, the Federal Circuit found that the
phrase SOCIETY FOR REPRODCUTIVE MEDICINE was not generic and
pointed specifically to the absence of "any evidence that the
phrase as a whole, SOCIETY FOR REPRODUCTIVE MEDICINE, has
acquired no additional meaning to the relevant public than the
terms 'society' and 'reproductive medicine' have individually."
American Fertility Society, 51 USPQ2d at 1837. Here, we have
the compound term, MATTRESS.COM, and not a phrase, and “if the
compound word would plainly have no different meaning from its
constituent words, and dictionaries, or other evidentiary
sources, establish the meaning of those words to be generic,
Serial No. 78976682
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then the compound word too has been proved generic.” Id. at
1836. See also, Hotels.com , 87 USPQ2d at 1105. In any event,
the examining attorney herein has provided evidence, as
discussed above, that mattress.com is being used by others in
their domain names in connection with the same type of services
as those recited in the subject application. Thus, unlike the
record in American Fertility Society, we have ample evidence in
this case on which to conclude that the proposed mark
MATTRESS.COM, as a whole, has a clear meaning to the relevant
public when considered in relation to genus of applicant’s
services, specifically, an online retailer of mattresses. See
Reed Elsevier, 82 USPQ2d 1380-81 (“With respect to the board’s
determination of what services the relevant public would
understand LAWYERS.COM to identify, Reed does not take issue
with its finding that the relevant public ‘would readily
understand the term to identify a commercial web site providing
access to and information about lawyers.’”), and Hotels.com, 87
USPQ2d at 1105 (“It can be seen from the web pages and even from
the more abbreviated excerpts in the search summaries that the
term ‘hotel.com’ or ‘hotels.com’ is frequently used as part of
the domain names of others to denote websites that provide hotel
information and/or hotel reservation services, i.e., the
services provided by applicant’s website.”).
Serial No. 78976682
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We also disagree with applicant’s arguments that the “com”
part of MATTRESS.COM somehow “evokes the words ‘comfort,’ and
‘comfortable’” (brief, p. 16) or that the mark connotes an
online source of information about sleep. Simply put, the
evidence of record is not persuasive on either proposition. In
particular, applicant has presented no evidence or cogent
argument supporting a conclusion that purchasers will perceive
MATTRESS.COM (or the TLD “.com”, by itself) as evoking or being
an abbreviated expression of “comfort” or “comfortable,” or have
the connotation of a website involving general information about
sleep. Here, there is no dispute that the genus of services
does not encompass providing information services about sleep or
sleeping. Rather, applicant itself has stated that the genus of
services is online retail sales of mattresses, beds and bedding.
There is no plausible explanation of how the .COM top-level
domain can be construed as expanding the stated genus of
services to include sleep information services. MATTRESS.COM,
unlike STEELBUILDING.COM, does not lend itself to any multiple
meanings. Despite the fact that applicant may provide sleep
information on its website, we do not see how this detracts from
the genericness of the mark MATTRESS.COM, when the mark is
considered in connection with the genus of services, that is,
the services identified in the application. Ultimately, there
is nothing in the combination of MATTRESS and .COM that results
Serial No. 78976682
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in any new or incongruous meaning, or a different commercial
impression. Each of the terms MATTRESS and .COM has a clear and
readily understood meaning and the combination of the terms,
i.e., applicant’s proposed mark, communicates just as clearly
and directly that applicant operates a commercial website
involving the sale of mattresses.
Finally, applicant also argues that its mark operates as a
mnemonic, “represent[ing] a convenient and memorable approach to
reaching the desired web page, much as a word representing a
portion of a phone number represents a convenient and memorable
sequence of reaching the desired phone number.” Reply brief, p.
8. We agree with the examining attorney that “nothing in the
proposed mark clearly suggests such [mnemonic] significance and
applicant provides no additional information by which [this]
conclusory statement may be judged.” Brief, (unnumbered) p. 14.
In other words, the mark is not a mnemonic; rather, consumers
will perceive the mark as merely a generic reference to a
website selling mattresses. The Board has addressed this
argument before:
...mnemonics representing telephone numbers correspond to
unique ten-digit numbers that can be used by only a single
entity, whereas the precise generic term and TLD
combination employed by applicant can be incorporated into
other domain names. A “blinds and drapery” concern should
not be precluded from combining its name with the generic
compound term BLINDSANDDRAPERY.COM to create thereby a
different domain name from that of applicant.
CyberFinancial, 65 USPQ2d at 1793.
Serial No. 78976682
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In re Eddie Z's Blinds & Drapery Inc., 74 USPQ2d 1037, 1042
(TTAB 2005) (finding BLINDSANDDRAPERY.COM to be generic for
online retail services featuring blinds and draperies), citing
to In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002).
While we acknowledge, as applicant points out, that any doubt
on the question of genericness must resolved in favor of
publishing the mark for opposition, we disagree with applicant
that its evidence is sufficient to raise any such doubt about
the genericness of MATTRESS.COM, which we find to be generic.
Decision: The refusal to register applicant’s mark on the
Supplemental Register under Section 23(c) is affirmed.