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November 2009

SPECIAL ALERT

Mattress.com Ruled Generic

The Federal Circuit Court of Appeals ruled on Friday that Mattress.com is generic for online retail sales of mattresses, beds, and bedding.   The ruling upholds the finding of the Trademark Trial and Appeal Board that “consumers would see Mattress.com and would immediately recognize it as a term that denotes a commercial Web site rendering retail services featuring mattresses.”  To determine how the public understood the mark, the court considered the mark as a whole.  Since “mattress” and “.com” were each admittedly generic, the question was whether the combination added any new meaning.  The fact that many Web sites used mattress.com as part of their domain names, convinced them that the relevant public would understand the term to refer to online mattress stores.  The court affirmed its similar holding regarding Hotels.com  earlier this year. In re Hotels.com, 573 F. 3d 1300, 1306 (Fed. Cir. 2009). The test, the court said, was not necessarily whether the public referred to sites selling mattresses as “mattress.coms,” but whether they understood Mattress.com to denote such a Web site.  This suggests that a site, pastries.com, might be generic for a site selling pastries, even if the site itself isn’t edible!

Tip:  Add a fanciful term to your descriptor in your domain name in order to create a protectible “.com”  trademark.  If you use a single word suggestive of your business, consider how the public will understand that term.

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