Dial-A-Mattress Operating Corp.

Trademark Trial and Appeal Board

Jun 15, 2004

No. 76290744 (T.T.A.B. Jun. 15, 2004)

Mailed: June 15, 2004
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. 76290744
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Susan Okin Goldsmith of Duane Morris LLP for Dial-A-Mattress
Operating Corp.
Andrea D. Saunders, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
____________
Before Hanak, Walters and Drost, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Dial-A-Mattress Operating Corp. has filed an
application to register on the Principal Register the mark
1-800-MATTRESS, with “800” appearing in dotted lines, for,
as amended, “telephone shop-at-home retail services and
retail store services in the field of mattresses and
bedding, namely sheets, mattress pads and pillows,” in
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76290744
2
International Class 35.1 The application includes the
statement that “the drawing is lined to indicate that the
area code will change.” Applicant claims ownership of
Registration Nos. 1,589, 453 ((212)MATTRES with the notation
that the area code may change); 1,728,356 (1-800-MATTRES,
AND LEAVE OFF THE LAST S THAT’S THE S FOR SAVINGS);
1,339,658 (DIAL A MATTRESS); 1,554,222 (DM DIAL A MATTRESS
and design); 1,748,796 (DIAL-A-MATTRESS and design); and
1,757,763 (PHONE-A-MATTRESS).
Additionally, in response to a refusal to register
based on mere descriptiveness, the application was amended
to add a claim of acquired distinctiveness, under Section
2(f) of the Trademark Act, 15 U.S.C. 1052(f), based on use
of the mark for more than five years and ownership of the
above-noted registrations. This claim was accepted by the
Examining Attorney and the mere descriptiveness refusal was
withdrawn.
The Trademark Examining Attorney has issued a final
refusal to register, under Sections 1 and 45 of the
Trademark Act, 15 U.S.C. 1051 and 1127, on the ground that
applicant’s mark “is merely a ‘phantom’ mark because the
applicant seeks registration of more than one mark in an
application.”

1 Serial No. 76290744, filed July 27, 2001, based on use of the mark in
commerce, alleging first use and use in commerce as of December 31,
1995.
Serial No. 76290744
3
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
The Examining Attorney and applicant disagree about the
relevance to the application herein, and the interpretation,
of the decisions issued by our primary reviewing court, the
Court of Appeals for the Federal Circuit, in In re
International Flavors & Fragrances Inc., 183 F.3d 1365, 51
USPQ2d 1513 (1999), and In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807 (2001). Thus, we begin
by reviewing these two decisions.
In International Flavors, supra, applicant sought to
register LIVING XXXX FLAVORS and LIVING XXX.FLAVOR for
essential oils and flavor substances for use in the
manufacture of various products, wherein XXXX denoted “a
specific herb, fruit, plant or vegetable.” The Court agreed
with the Board’s conclusion that the marks at issue were
“phantom” marks and stated that “a phantom trademark is one
in which an integral portion of the mark is generally
represented by a blank or dashed line acting as a
placeholder for a generic term or symbol that changes,
depending on the use of the mark” (id. at 1517). After
reviewing the purpose of federal registration and the
significance of constructive notice, the Court drew the
following conclusion (at 1517 – 1518):
Serial No. 76290744
4
In order to make this constructive notice
meaningful, the mark, as registered, must
accurately reflect the way it is used in commerce
so that someone who searches the registry for the
mark, or a similar mark, will locate the
registered mark. “Phantom” marks with missing
elements, especially those sought to be registered
by [applicant], encompass too many combinations
and permutations to make a thorough and effective
search possible. The registration of such marks
does not provide proper notice to other trademark
users, thus failing to help bring order to the
marketplace and defeating one of the vital
purposes of federal trademark registration.
. . .
Conclusion
Because we hold that under the Lanham Act, a
trademark registrant may seek to register only a
single mark in a registration application, and
trademark applications seeking to register
“phantom” marks violate the one mark per
registration requirement, the decision of the
Board is affirmed.
In Dial-A-Mattress, supra, applicant had filed an
intent-to-use application to register 1-888-M-A-T-R-E-S-S
for “telephone shop-at-home retail services in the field of
mattresses.” Applicant had asserted that its mark is
inherently distinctive or, alternatively, that it had
acquired distinctiveness based on a declaration and its
prior claimed registrations. The Board affirmed the refusal
to register on the ground that the proposed mark is generic
or, alternatively, that it is merely descriptive and
applicant presented insufficient evidence of acquired
distinctiveness. The Court reversed. With respect to
genericness, the Court stated that the proposed mark bears
closer resemblance to a phrase than a compound mark and,
Serial No. 76290744
5
thus, the proper test is that set forth in In re The
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832
(Fed. Cir. 1999); and that the evidence does not support a
conclusion that the proposed mark is generic. The Court
concluded that the proposed mark is merely descriptive and
that the evidence is sufficient to establish acquired
distinctiveness.
In this regard, the Court found that the proposed mark
1-888-M-A-T-R-E-S-S is legally equivalent to the mark
(212)M-A-T-T-R-E-S (with “212” appearing in dotted lines to
indicate that the area code can change) in the prior claimed
registration; and that the respective services are similar.
The USPTO had argued that, because the “212” area code is
subject to change, the mark is a phantom mark that is not
registrable and should be given little weight. The Court
gave the following rationale for permitting applicant to
rely on this registered mark to establish acquired
distinctiveness (at 1813):
Although the registration of the “(212)M-A-T-T-R-
E-S” mark is a “phantom” mark, the use of which we
have questioned, see In re Int’l Flavors &
Fragrances, Inc., [supra], it is apparent in the
present case that the missing information in the
mark is an area code, the possibilities of which
are limited by the offerings of the telephone
companies.
In the case now before us, the same applicant, Dial-A-
Mattress Operating Corp., argues that, “while the Federal
Circuit had ‘questioned’ the registration of phantom marks,
Serial No. 76290744
6
it has never prohibited them entirely” (Brief p. 3).
Applicant contends that the Federal Circuit “has
distinguished this applicant’s registered area code mark
from other phantom marks in which the phantom element is not
an area code.” Applicant states the following (Brief, p.
5):
[T]his applicant has registered a phantom mark
[(212)M-A-T-T-R-E-S, with the drawing lined to
indicate that the area code will change]. The
validity of that mark has been addressed by the
CAFC. The CAFC did not agree with the Director
that the registered area code mark was not
registrable. It was given full weight.
The CAFC itself distinguished the registered area
code mark from phantom marks consisting of word
combinations. The missing information in the
phantom telephone mnemonic mark is a series of
numbers that are area codes. Area codes are
devoid of source-identifying qualities, and the
possible combinations are limited to what is
offered by the phone companies. Indeed, the CAFC
has recognized that a telephone mnemonic mark
consists of seven numbers, not ten or eleven. The
area code portion is really just an indication
that the mark is in fact a telephone mnemonic and
not some other symbol.
Thus, a phantom area code mark has a quality that
sets it apart from the mark considered in
International Flavors. It is immediately apparent
that the phantom portion consists of a three-
number combination which is an area code. There
is no ambiguity. It is a telephone mnemonic.
Applicant contends that its mark herein and its
registered mark (212)M-A-T-T-R-E-S are legally identical and
that the same situation is presented in this case as was
decided by the Federal Circuit in the case discussed herein
involving applicant.
Serial No. 76290744
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On the other hand, the Examining Attorney contends that
the mark involved herein is a phantom mark and, as such, it
is not a single mark; that as a phantom mark, applicant’s
mark is not entitled to registration under the law
enunciated in the International Flavors decision; that the
Dial-A-Mattress decision is inapposite because “the issue
was genericness, not phantom marks.” (Brief, unnumbered
p.4.) The Examining Attorney contends that an area code
mark with a changeable area code is not an exception to the
prohibition against the registration of phantom marks. She
states that “[n]either the fact that the area codes are
limited by the offerings of the telephone companies or the
fact that the number of area codes may be a finite number
alters the reality that the applicant seeks to register
several marks in one application in contravention of the
Trademark Act.” (Brief, unnumbered p. 8.) She further
states the following (Brief, unnumbered p. 10):
[B]ecause the term MATTRESS is a generic term
which merely describes the subject of the
services[,] the examining attorney searching the
mark must focus on the dominant feature, namely,
the area code. However, with an indeterminable
area code a differenct commercial impression is
created each time the area code changes thereby
preventing all the elements of the mark to be
effectively searched.
Clearly, the two decisions discussed by the Examining
Attorney and applicant must be considered together. From
these two decisions it is clear that not all phantom marks
Serial No. 76290744
8
are prohibited, per se, from registration. Further, the
Dial-A-Mattress decision is directly applicable to the case
now before us. To establish herein its claim of acquired
distinctiveness, which the Examining Attorney appears to
have accepted, applicant has relied, again, on its
registration for the valid mark (212)M-A-T-T-R-E-S (with the
“212” appearing in dotted lines to indicate that the area
code may change). Consistent with the law of the Dial-A-
Mattress case, the mark involved herein, 1-800-MATTRESS
(with the “800” appearing in dotted lines to indicate that
the area code may change), is legally equivalent to both the
mark 1-888-M-A-T-R-E-S-S (with the “888” appearing in dotted
lines to indicate that the area code may change) at issue in
that case and to the registered mark relied upon therein,
(212)M-A-T-T-R-E-S.
Contrary to the Examining Attorney’s position, the fact
that the basis for the refusal in the Dial-A-Mattress case
was that the mark was generic does not negate the
applicability of that case to the case now before us. The
Court in the Dial-A-Mattress case noted that the registered
mark was a phantom mark, but concluded that the mark was a
valid trademark and could be relied upon to establish the
acquired distinctiveness of the legally equivalent applied-
for mark. There is no reason for the Board to reach a
different conclusion in this case. Therefore, we find that
Serial No. 76290744
9
on the facts of the case before us, the Examining Attorney
incorrectly refused registration of the mark 1-800-MATTRESS.
Decision: The refusal under Sections 1 and 45 of the
Act is reversed.