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Federal Courts Crackdown on Generic Trademarks

Author:  Emily W., William & Mary Intern

In 2009, the U.S. Court of Appeals for the Federal Circuit (CAFC) made two important rulings regarding generic trademarks.  In November, the CAFC rejected an attempt to trademark Mattress.com.  A few months before, a similar ruling was made saying that Hotels.com cannot be trademarked.  The hotel booking website argued before the CAFC that adding a dot-com to the generic word “hotels” makes it specific enough to be given a trademark.

Similarly, the US Patent and Trademark Office first rejected the bedding retailer 1800Mattress’ trademark application for Mattress.com because the “relevant public” would understand the term Mattress.com to refer to all online mattress retailers.  The Trademark Trials and Appeals Board (TTAB) of the USPTO agreed with the initial decision, prompting the company to appeal to CAFC.

The mattress retailer attempted to argue that the “.com” was short for “comfort”, but the court ruled that the company did not provide enough evidence to show that the public actually associated the “.com” with the comfort of their product. Ultimately, the CAFC upheld the decision that was made by the TTAB and established important guidelines for evaluating generic-ness that are to be used in considering all trademark applications:

1. What is the genus for goods or services at issue; and

2. Is the term in question understood by the relevant public primarily to refer to that genus of goods and services?

Under the above guidelines issued by the court, adding “.com” to the generic word does not make it eligible for a trademark, because the public still associated it with all online mattress retailers.

So, what does this ruling mean for online retailers or service providers such as 1800Mattress and Hotels.com?  Many companies use certain terms to trigger ads on online search engines such as Google.  Now, because Hotels.com and Mattress.com are not registered trademarks, other companies can use searches for these terms to advertise their own services.  For example, if you type Mattress.com into Google, the search produces links and advertisements for a variety of other mattress companies such as Mattress Giant and Mattress Warehouse.   This could potentially drive down the sales of 1800Mattress, as online shoppers are automatically presented with other options when they search for Mattress.com.  At the same time, despite the lack of a trademark, Mattress.com will probably still receive plenty of business because shoppers are likely to remember the generic name of “Mattress.com”.  The long term effects of this court ruling remain to be seen, but the guidelines set forth by the court are something for every company to consider when applying for a trademark.

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