1800Mattress.com IP, LLC (“1800Mat-tress.com”), substituted as appellant for Dial-A-Mattress Operating Corp. (“Dial-A-Mattress”), appeals from the final decision of the United States Patent and
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Trademark Office Trademark Trial and Appeal Board (the “Board”) rеfusing registration of the mark “MATTRESS.COM.”
In re Dial-A-Mattress Operating Corp.,
Serial No. 78976682,
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, beds, and bedding.” On February 14, 2008, the trademark examiner finally refused registration of the mark on the basis that it is generiс 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,
The Board then reasoned that the addition of the top level dоmain extension “.com” did not affect the term’s generieness. 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 сontaining “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 *3, 2008 TTAB Lexis 437, at *8-10. In other words, the addition of “.сom” did not affect registrability in this case because it did not create any additional meaning. Id. at **3-4, 2008 TTAB Lexis 437, 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 mnemonic. Id. at **4-6, 2008 TTAB Lexis 437, 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.,
*1362 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 оf 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 ignоred record evidence that businesses outside the genus of online retail store services, such as stores that only sell mattresses in person, use “mattress.com” as a component of their domain names. According to Dial-A-Mattress, the Bоard 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 mnemоnic 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 fоcus 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 thе 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 whiсh registration is sought, ie., 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 membеrs 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
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Fire Chiefs, Inc.,
“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,
The Board then considered the mark as a whole and determined thаt 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 pеrmissible 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.,
Furthеrmore, 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,
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.cоm” 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,
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 thаt 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,
We have considered Dial-A-Mattrеss’s remaining arguments and find them unpersuasive.
CONCLUSION
Accordingly, we affirm the Board’s decision.
AFFIRMED
Notes
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.