Federal Circuit disposition — 2009-1188

United States Court of Appeals for the Federal Circuit
2009-1188
(Serial No. 78/976,682)
IN RE 1800MATTRESS.COM IP, LLC
(substituted for Dial-A-Mattress Operating Corporation)
Francis J. Duffin, Wiggin and Dana LLP, of New Haven, Connecticut, for appellant.
Raymond T. Chen, Solicitor, Office of the Solicitor, United States Patent and
Trademark Office, of Alexandria, Virginia, for the Director of the United States Patent and
Trademark Office. With him on the brief were Christina J. Hieber and Janet A. Gongola,
Associate Solicitors.
Appealed from: United States Patent and Trademark Office
Trademark Trial and Appeal Board

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United States Court of Appeals for the Federal Circuit
2009-1188
(Serial No. 78/976,682)
IN RE 1800MATTRESS.COM IP, LLC (substituted for Dial-A-Mattress Operating
Corporation)
Appeal from the United States Patent and Trademark Office, Trademark
Trial and Appeal Board.
____________________________
DECIDED: November 6, 2009
____________________________
Before LOURIE, FRIEDMAN, and PROST, Circuit Judges.
LOURIE, Circuit Judge.
1800Mattress.com IP, LLC (“1800Mattress.com”), substituted as appellant for
Dial-A-Mattress Operating Corp. (“Dial-A-Mattress”), appeals from the final decision of
the United States Patent and Trademark Office Trademark Trial and Appeal Board (the
“Board”) refusing registration of the mark “MATTRESS.COM.” In re Dial-A-Mattress
Operating Corp., Serial No. 78976682, 2008 TTAB Lexis 437 (T.T.A.B. Nov. 13, 2008).
Because the Board’s decision finding “MATTRESS.COM” generic in relation to the
recited services was supported by substantial evidence, we affirm.
BACKGROUND
On December 9, 2005, Dial-A-Mattress filed U.S. Trademark Application Serial
No. 78/976,682, seeking to register the mark MATTRESS.COM (in standard character
format) for services identified as “online retail store services in the field of mattresses,

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beds, and bedding.” On February 14, 2008, the trademark examiner finally refused
registration of the mark on the basis that it is generic under Section 23(c) of the
Trademark Act, 15 U.S.C. § 1091(c).
Dial-A-Mattress appealed to the Board, which affirmed the examiner’s refusal to
register the mark. The Board reasoned that the genus of services offered by Dial-A-
Mattress was online retail store services in the field of mattresses, beds, and bedding.
In re Dial-A-Mattress, 2008 TTAB Lexis 437, at *3–4. The Board then found that, given
the genus of services offered, the term MATTRESS.COM would be understood by the
relevant public primarily to refer to that genus. According to the Board, Dial-A-
Mattress’s services focused on mattresses. Thus, because “mattress” identified such a
key aspect of Dial-A-Mattress’s services, the Board found the term generic for Dial-A-
Mattress’s services. Id. at *4–6.
The Board then reasoned that the addition of the top level domain extension
“.com” did not affect the term’s genericness. According to the Board, several third party
websites that were also online retail store services featuring mattresses and/or bedding
had internet addresses ending in “mattress.com” or containing “mattress” and “.com.”
Thus, the Board found that consumers would see MATTRESS.COM and would
immediately recognize it as a term that denotes a commercial website rendering retail
services featuring mattresses. Id. at *8–10. In other words, the addition of “.com” did
not affect registrability in this case because it did not create any additional meaning. Id.
at *10–12. The Board rejected Dial-A-Mattress’s argument that “com” somehow evoked
the words “comfort” or “comfortable” and rejected the idea that the mark served as a
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mnemonic. Id. at *13–16. Thus, the Board found MATTRESS.COM generic and
affirmed the refusal to register Dial-A-Mattress’s mark.
Dial-A-Mattress timely appealed to this court. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(4)(B).
DISCUSSION
We review the Board’s legal conclusions de novo and the Board’s factual findings
for substantial evidence. In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003).
“Substantial evidence is ‘more than a mere scintilla’ and ‘such relevant evidence as a
reasonable mind would accept as adequate’ to support a conclusion.” Id. (quoting
Consol. Edison v. NLRB, 305 U.S. 197, 229 (1938)). Whether an asserted mark is
generic is a factual determination made by the Board. In re Pennington Seed, Inc., 466
F.3d 1053, 1056 (Fed. Cir. 2006).
Dial-A-Mattress* argues that the Board’s conclusion of genericness was not
supported by substantial evidence. According to Dial-A-Mattress, the only generic term
that is supported by the evidence for online retail store services in the field of
mattresses, beds, and bedding is “online mattress stores.” Thus, Dial-A-Mattress
argues, the U.S. Patent and Trademark Office (“PTO”) did not show, by clear evidence,
that the relevant public refers to the class of services by the mark MATTRESS.COM.
Dial-A-Mattress further asserts that the Board ignored record evidence that businesses
outside the genus of online retail store services, such as stores that only sell mattresses
* While the case was on appeal, we granted a motion to substitute
1800Mattress.com for Dial-A-Mattress as appellant. However, because the briefs were
filed with Dial-A-Mattress as the named appellant, we refer to the appellant as Dial-A-
Mattress throughout this discussion.
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in person, use “mattress.com” as a component of their domain names. According to
Dial-A-Mattress, the Board also erroneously looked to the component parts of the mark
MATTRESS.COM to find it generic, rather than looking at the mark as a whole. Finally,
Dial-A-Mattress argues that the Board should not have disregarded the nature of the
mark MATTRESS.COM as a mnemonic and as being capable of evoking the quality of
comfort in mattresses.
The PTO responds that substantial evidence establishes that the relevant public
would understand MATTRESS.COM to refer to a commercial website for selling
mattresses, the key focus of the services. According to the PTO, the Board’s
conclusion of genericness was supported by clear and substantial evidence, including
dictionary definitions, use by Dial-A-Mattress, and use of the identical term
“mattress.com” to denote the websites of competitors offering the same services as
Dial-A-Mattress. The PTO argues that the term “mattress” is indisputably generic, and,
absent exceptional circumstances, the addition of the top level domain “.com,”
identifying a commercial website, to an otherwise unregistrable term will not transform
the term into a registrable mark. Further, according to the PTO, there are no
exceptional circumstances, as the separate terms “mattress” and “.com” in combination
have a meaning identical to the common meaning of the separate components. The
PTO adds that, even if “online mattress store” is a generic term, that does not prevent
MATTRESS.COM from also being a generic term for the same services. The PTO also
argues that, even if the term “mattress.com” might have significance for a different set of
services, such as a brick and mortar store, that is irrelevant to whether the term is
perceived by the public as naming the genus of services for which registration is sought,
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i.e., online mattress stores. Additionally, according to the PTO, such brick and mortar
stores all have an online component to their mattress stores. Finally, the PTO asserts
that Dial-A-Mattress presented no evidence that MATTRESS.COM is a double entendre
evoking a quality of comfort, and it is not a mnemonic.
We agree with the PTO that substantial evidence supported the Board’s
conclusion that the mark MATTRESS.COM is generic. We have held that “[t]he 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.” H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989–90
(Fed. Cir. 1986). Thus, we have laid out “a two-step inquiry: 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?” Id. at 990. In this case, the parties agree that the genus of services is
“online retail store services in the field of mattresses, beds, and bedding.” Accordingly,
the mark is generic if the relevant public understands MATTRESS.COM to refer to such
online retailers.
“An inquiry into the public’s understanding of a mark requires consideration of
the mark as a whole. Even if each of the constituent words in a combination mark is
generic, the combination is not generic unless the entire formulation does not add any
meaning to the otherwise generic mark.” In re Steelbuilding.com, 415 F.3d 1293, 1297
(Fed. Cir. 2005); see In re Am. Fertility Soc'y, 188 F.3d 1341, 1347 (Fed. Cir. 1999) (“[I]f
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
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be generic, then the compound word too has been proved generic. No additional proof
of the genericness of the compound word is required.”). In this case, the Board
considered each of the constituent words, “mattress” and “.com,” and determined that
they were both generic. The Board found “mattress” to refer to the same mattresses
referenced by the genus. It found “.com” to refer to an abbreviation designating a
commercial organization in internet addresses. Neither party disputes the genericness
of either component.
The Board then considered the mark as a whole and determined that the
combination added no new meaning, relying on the prevalence of the term
“mattress.com” in the website addresses of several online mattress retailers that provide
the same services as Dial-A-Mattress. Such reliance is permissible to illuminate what
services the relevant public would understand a website operating under the term
“mattress.com” to provide. In re Reed Elsevier Props. Inc., 482 F.3d 1376, 1380 (Fed.
Cir. 2007) (holding that the Board properly considered websites containing “lawyer.com”
or “lawyers.com” in their domain names to determine what the relevant public would
understand LAWYERS.COM to mean); see also In re Hotels.com, 573 F.3d 1300,
1306–06 (Fed. Cir. 2009) (same for the mark HOTELS.COM). Because websites
operate under the term “mattress.com” to provide mattresses, and they provide them
online, the Board properly concluded that the relevant public understands the mark
MATTRESS.COM to be no more than the sum of its constituent parts, viz., an online
provider of mattresses. Indeed, the Board’s reasoning tracked our later reasoning in In
re Hotels.com. In that case, we addressed the Board’s rejection of the mark
HOTELS.COM for hotel reservation services. In re Hotels.com, 573 F.3d at 1301.
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There, as here, the Board had addressed the genericness of each of the constituent
words and then had used the prevalence of “hotel.com” or “hotels.com” in hotel
reservation service websites to find the combination generic. We affirmed the Board’s
giving “controlling weight to the large number of similar uses of ‘hotels’ with a dot-com
suffix, as well as the common meaning and dictionary definition of ‘hotels’ and the
standard usage of ‘.com’ to show a commercial internet domain.” Id. at 1306. Similarly,
here, the Board permissibly gave controlling weight to the large number of similar uses
of “mattress.com” as well as the common meanings of “mattress” and “.com.”
Furthermore, even if, as Dial-A-Mattress asserts, some of the websites
containing “mattress.com” in their domain names do not actually sell mattresses online,
the fact that many of the websites do sell mattresses online supports the Board’s
conclusion that the term “mattress.com” is primarily used to identify services in the
same genus as Dial-A-Mattress’s services. In re Dial-A-Mattress, 2008 TTAB Lexis 437
at *9–10. We therefore find substantial evidence to support the Board’s conclusion that
“[c]onsumers would see MATTRESS.COM and would immediately recognize it as a
term that denotes a commercial website rendering retail services featuring mattresses.”
We further disagree with Dial-A-Mattress’s assertion that the mark
MATTRESS.COM is not generic because the relevant public would not use the term
“mattress.com” to refer to online mattress retailers. 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 be generic. See H. Marvin Ginn, 782 F.2d
at 990 (describing the test as whether the term is “understood by the relevant public
primarily to refer to [the appropriate] genus of goods or services”). Thus, it is irrelevant
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whether the relevant public refers to online mattress retailers as “mattress.com.”
Instead, as the Board properly determined, the correct inquiry is whether the relevant
public would understand, when hearing the term “mattress.com,” that it refers to online
mattress stores. We also disagree with Dial-A-Mattress’s assertion that there can only
be one generic term, which is “online mattress stores.” Instead, 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.
Finally, we agree with the PTO that substantial evidence supports the Board’s
finding that the “.com” tail in MATTRESS.COM does not evoke the quality of comfort in
mattresses and that the mark is not a mnemonic. As the PTO points out, Dial-A-
Mattress presented no evidence that the relevant public finds such a double entendre in
the term MATTRESS.COM. We have stated that “[o]nly in rare instances will the
addition of a [top level domain] indicator to a descriptive term operate to create a
distinctive mark.” In re Steelbuilding.com, 415 F.3d at 1297. Similarly, here, because
Dial-A-Mattress presented no evidence that “.com” evoked anything but a commercial
internet domain, this is not a case in which the addition of “.com” affects the
genericness of the mark. Furthermore, because Dial-A-Mattress presented no evidence
that the mark MATTRESS.COM acts a mnemonic, substantial evidence supports the
Board’s finding in that regard.
We have considered Dial-A-Mattress’s remaining arguments and find them
unpersuasive.
CONCLUSION
Accordingly, we affirm the Board’s decision.
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2009-1188
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AFFIRMED

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