Generic Terms Not Registrable – In re 1800Mattress.com

The Court of Appeals for the Federal Circuit recently revisited the question of how to determine whether an applied-for mark is generic for the goods or services claimed in the application. Concluding that the critical issue in a genericness case is whether members of the relevant public primarily would use and understand the term sought to be registered to refer to the genus of the goods or services in question, the court agreed with the Trademark Trial and Appeal Board that the term MATTRESS.COM was generic for on-line retail store services in the field of mattresses, beds and bedding.

In 1800Mattress.com, the Applicant appealed the refusal to register the term MATTRESS.COM for online retail services, arguing that the conclusion that the term was generic was not supported by substantial evidence. Specifically, Applicant argued that "online mattress stores" – and not the claimed services – were the only services that could be generic for MATTRESS.COM, and further