November 6, 2009

Federal Circuit Affirms that is Generic

In Re IP, LLC, No. 2009-1188 (Fed. Cir. Nov. 6, 2009)

Federal Circuit affirmed Trademark Trial and Appeal Board’s opinion that MATTRESS.COM is generic for “online retail store services in the field of mattresses, beds, and bedding” and is thus not entitled to registration.  

The Federal Circuit reiterated that 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.”  To determine if a mark is generic, the Court uses the following 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?”  The parties agreed that the genus of services for MATTRESS.COM is “online retail store services in the field of mattresses, beds, and bedding.”  The Federal Circuit held that MATTRESS.COM is generic because the relevant public understands the mark to refer to such online retailers. 

While the relevant inquiry into the public’s understanding of a mark requires consideration of the mark as a whole, the Court held that the Board did not error in first considering “mattress” and “.com” separately, finding them to be generic, and then determining that combination of the terms added no new meaning that would render the mark non-generic.  The Court held that the mark is generic because while the public may not use the mark generically, when exposed to the mark the public will understand that it refers to online mattress stores in a generic sense.  Finally, no evidence was presented showing that “.com” evoked anything but a commercial internet domain, thus the addition of “.com” did not affect the genericness of the mark.