The U.S. Court of Appeals for the federal circuit rejected an appeal by 1800Mattress.com which filed an application to trademark the term, Mattress.com, finding that the term was too generic to be trademarked.
The ruling upheld a similar ruling by the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office.
1800Mattress argued that the only generic term for its business was “online mattress stores,” but the appellate court disagreed.
“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”
The appellate court also specifically endorsed the board’s conclusion that the publicbelieves that Mattress.com, signifies any online mattress seller, as opposed to 1800Mattress.com.
The court also rejected 1800Mattress’s claim that Mattress.com wasn’t generic because the “com” in the domain name stood for comfort.
“Substantial evidence supports the Board’s finding that the “.com” tail in Mattress.com does not evoke the quality of comfort in mattresses”
In a similar case the same court rejected Hotels.com bid to trademark its domain as also being too generic
Take it from me; these generic word/domain trademark fights with the PTO are losers and a waste of time and money.
Their next move; if they’re smart; is to try to obtain registration on the Supplemental Register.
Which should provide them with at least defensive rights.
Well, in that case, I can’t understand how they got a typo of this generic term:
http://www.udrpsearch.com/case/D2001-0240
The full list of cases they filed are here:
http://www.udrpsearch.com/index.php?query=Dial-a-Mattress&search=parties
UDRP
Well several things at work here. First of all this is a UDRP and is not a “court action”
Second at the time the UDRP was filed a trademark for the term mattress.com was pending
Third what the hell does the domain mattres.com mean other than a typo of Mattress.com?
The panel found in favor of the Mattress.com folk not because they believed Mattress.com was a protected term as much as the domain owner offered no reasonable explanation of what the domain could stand for other than a typo:
“””Complainant does not, and could not, claim exclusive rights in the generic term “mattress.”
The issue here, however, is not whether Complainant has enforceable rights in a generic term. Rather, the issue is whether Respondent makes fair use of a term that is confusingly similar to Complainant’s slogan.
1. Respondent is using a form of the generic term that is confusingly similar to Complainant’s slogan, and is not using the term in its normal spelling.
Based on this combination of facts, we believe that Respondent’s use of the Domain Name does not meet the requirements of fair use under the Policy.
“””Giving Respondent the benefit of any doubt, it seems clear that Respondent registered the Domain Name because it was likely to lead Internet users to its site where they could be directed to other sites in return for a fee. Given the fame and registration of Complainant’s mark, Respondent knew or should have known that use of the Domain Name would misdirect some Internet users seeking a web site based on confusion with Complainant’s slogan.
“””We . . . conclude that use which intentionally trades on the fame of another can not constitute a “bona fide” offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.
“It appears that Respondent uses the Domain Name as a means of attracting Internet Users to its site where it provides links to retailers selling a variety of products, including mattresses. This is not a case where Respondent is only using Complainant’s mark to describe the products it sells. Instead, it seems the mark is used as “bait” to lead consumers to its site. Given the fame and registration of Complainant’s mark, we find that Respondent either knew or should have known that its use of the Domain Name was likely to trade on Complainant’s goodwill. “””
Hi MHB,
What I meant by that is that I don’t think their UDRP victory was deserved if ultimately ‘mattress’ is considered generic.
I think taking a typo of a generic name should not be bad faith. (ie. wwwtickets.com, ttickets.com, sexx.com, wwwsex.com, etc)
Afterall, isn’t that what the whole .CM registry is about?
For example, the www-shopping.com dispute was denied:
http://www.udrpsearch.com/case/D2000-0439
Hence mattres.com should be fair to operate.
UDRP
Your using the speeding defense.
Your driving in the middle lane at 80 in a 70 mile highway, a guy blasts past you in the left lane, doing 100 and the cop stops you.
You say to the cop didn’t you see the guy in the left lane he was going a lot faster than me, but the cop tells you “but you were speeding too & I don’t have to go after all of them to go after you”
You understand.
Someone with a “trademark” application went after an obvious mis-spell and the owner of that particular domain had no answer for it
.com stands for comfort? That made me laugh in a room all by myself.
http://www.udrpsearch.com/case/D2001-0240
Actually, Respondent stated that the Domain Name is not confusingly similar to Complainant’s marks because they consider “mattress” or its phonetic equivalent “mattres” generic and even cited a court case supporting that.
As a result, if someone took “DIAMON.COM”, I don’t think Diamond.com should be entitled to it.
Many people strategically register typo’s of generic names and simply park them as a legitimate business model. “Mattres.com” should be considered no different.
…or Comedian…
Generic terms can’t be trademarked. My company European Domain Centre is a perfect example. However it is great for seo!
Glad to see a just decision and an important element (“generic”) being upheld. 🙂
Secondly, the suggestion -> “the com in the domain name stood for comfort” … is utterly ridiculous. Do people even try to think?
Both analyses of the mattres.com UDRP decision above miss the mark.
The decision was not based on the pending application (which confers no rights) or any trademark of “MATRESS.COM”. The decision was based on the mark “1-800-MATTRES, LEAVE THE LAST ‘S’ OFF FOR SAVINGS”.
It was also not premised on the fact that the domain name was a typo of mattress.com or that “mattress.com” was a trade or service mark by virtue of filing an application. Anybody can file an application for anything.
Note the overlap between the two panels, and the immediately following decision DENYING transfer of matress.com:
http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0764.html
“We accept that a consumer who is either correctly or wrongly spelling the word “mattress” is most likely and obviously looking for a mattress and that the Respondent should not be unfairly hindered from running a web site directed to the sale of mattresses or the supply of information relating thereto. That is under, the Domain Name.
For these reasons we also find for the Respondent on this ground.”
A typo or phonetic equivalent of a generic term is generic. The only reason the first case went the way it did was because the panel took the “LEAVE OFF THE LAST ‘S'” mark as some sort of directions, instead of viewing it as a mark.
This comes up a lot in “singular v. plural” disputes. The bottom line question is the one stated by the Panel above – what is the consumer looking for? Are they looking for a mattress, or are they looking for a particular vendor of mattresses. IMHO, people typing in any variation of the word “mattress” are probably looking for a Sealy, Serta, etc. or less well known brand of mattress, and are looking to pay the lowest price for it, from whomever happens to be selling them. Mattresses are commodity products which do not inspire a lot of dealer loyalty.
Napolean Barragan, the founder of DIAL-A-MATRESS is the author of “How to Get Rich With a 1-800 Number”, which a few domainers read before getting involved in domains. 800 numbers were something of a smaller prequel to the domain business. He has quite a bit to say in there about the value of “generic words” – which came back to bite him in pursuit of this case.
The trick of “getting rich” appears to be “staying rich”, though… It has not been a good year for Mr. Barragan…
http://www.nydailynews.com/news/ny_crime/2009/05/14/2009-05-14_mattress_kings_wife_is_slain.html
The wife of 1-800-Mattress mogul Napoleon Barragan was murdered in her Long Island home Wednesday, allegedly by her mentally troubled son, police said
…
Kay Barragan, who had been suffering from multiple illnesses recently, played an instrumental role in starting the family bedding company.
She lent her husband $2,000 she earned from a small Avon products business to start Dial-A-Mattress in 1976, which became 1800mattress.com in 1996.
In the early years, she also handled clerical and administrative matters for the company.
“Napoleon had always credited Kay not only for her encouragement, but also for the money she gave him to start the business,” said Joe Vicens, 1800mattress.com’s chief operating officer of national sales.
The once $170-million-a-year company recently fell on hard times and went into bankruptcy in March after sales nosedived. It’s expected to be bought by rival bedder Sleepy’s.
The Barragan home also went on the market two months ago with an asking price of $779,000.
—–
That’s a pretty bad run of luck… to have your business go downhill, and then to suddenly lose the spouse who initially lent you the money to start it, and whom you have always credited for its success…