CAFC Affirms TTAB’s Ruling That “Mattress.Com” is Generic

The Court of Appeals for the Federal Circuit (“CAFC”) affirmed the Trademark Trial and Appeal Board’s decision that the term MATTRESS.COM is generic for the retail sale of mattresses, beds and bedding. Thus, the CAFC held that the term is not eligible for registration on the Supplemental Register (the trademark register for descriptive terms that are capable of becoming trademarks one day).

The Board considered whether the combination of the terms MATTRESS and .COM, as a whole, creates nothing more than a generic term. The parties agreed that the genus of services is the online retail sale of mattresses, beds and bedding. When the Board considered the term “Mattress.com” in relation to the relevant services, the Board concluded that because the website operates under the term “mattress.com” to provide mattresses, the relevant public would not perceive that term as a trademark, but rather as a generic term that refers to the online sale of mattresses.

In its attempt to persuade the Court, Appellant argued that the term MATTRESS.COM is not generic because the average purchaser would not use that term to refer to online retailers of mattresses. The Court, however, wisely stated that the test is not only whether the relevant public would itself use the term to describe the genus of products, but also whether the relevant public would understand the term to be generic.

The CAFC found substantial evidence in the record to support the Board’s ruling that “consumers would see MATTRESS.COM and would immediately recognize it as a term that denotes a commercial website rendering retail services featuring mattresses.”

Does the Board’s and CAFC’s ruling mean that the owner of the site Mattress.com does not own a valuable term or domain name? Who else needs to use the term Mattress.com? Who else would promote themselves as Mattress.com? If they did, wouldn’t they drive business to a competitor’s website? Even though the terms “Mattress” and “.Com” are generic terms for online retail sale of mattresses, seems to me that the owner of the domain name holds a monopoly on the generic term “mattress.com,” which, in essence, is tantamount to owning a protectable trademark, yes?

Four Reasons Companies Should Care About Their Trademarks

1. Consumers Use Trademarks to Find Products

Properly selected trademarks distinguish companies’ products from those of their competitors. If trademarks don’t adequately distinguish the associated widgets from the competition, their owners will inevitably lose sales. Those trademarks would also be worthless company assets. Companies should carefully select trademarks that will effectively communicate a product’s source, cut through marketing “clutter” and capture consumers’ attention.

2. Trademarks are used to Identify Quality

Consumers use trademarks to identify the quality of products. Once consumers become familiar – and satisfied – with a particular product’s quality and price, consumers will continue to seek out that product time and time again. If a product’s quality is inconsistent, however, consumers will inevitably abandon that product in favor of another. Companies that deliver their products or services at inconsistent levels of quality risk severe damage to their brands. Those that offer their products at a consistent level of quality – and at a fair price – can build strong brands.

3. Trademarks are used as Decision-Making Tools

Trademarks reduce time, cost and effort in the decision-making process by allowing consumers to quickly select products based upon past experiences. Trademarks can convey emotional attributes to consumers that help with the decision-making process. A company’s trademark may convey a certain level of quality or image as well as other messages – such as a lifestyle, aspirations and desires.  Trademark owners should consider what attributes consumers desire from their products when selecting new product names.  Then select a name that starts the positioning process and drives the brand.

4. Trademarks Can Be A Company’s Most Valuable Assets

Trademarks may potentially be a company’s most valuable assets. Trademarks have the potential to increase in value over time. Trademarks can be used as collateral to secure business loans, which can be used for business expansion. Trademarks can also be licensed to third parties to designate new product offerings, which can increase revenues. At last count, the Coca-Cola trademark was estimated to have a value of 70 billion dollars – which is more than all of the company’s tangible assets.

There are plenty of reasons why companies should care about their trademarks. Many more than the four listed above. Simply understanding and appreciating the basic value of trademarks and how they can drive a brand are the best reasons of all and a good place to start.

What are some other reasons to care about trademarks/brand names?