Re Dial-a-Mattress Operating Corp

• Citation: 240 F.3d 1341,57 USPQ2d 1807
• Decision Date: 13 February 2001
• Docket Number: No. 75,DIAL-A-MATTRESS,75
• Parties: (Fed. Cir. 2001) IN REOPERATING CORPORATION (Serial/131,355) 00-1197 DECIDED:
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1341

240 F.3d 1341 (Fed. Cir. 2001)

IN RE DIAL-A-MATTRESS OPERATING CORPORATION (Serial No. 75/131,355)

00-1197

United States Court of Appeals for the Federal Circuit

DECIDED: February 13, 2001

Appealed from: Patent and Trademark Office Trademark Trial and Appeal Board

[Copyrighted Material Omitted]

Arthur L. Plevy, Buchanan Ingersoll, P.C., of Princeton, New Jersey, argued for appellant. With him on the brief was Susan J. Goldsmith.

Albin F. Drost, Acting Solicitor, Office of the Solicitor, of Arlington, Virginia, argued for appellee. With him on the brief were Nancy C. Slutter, Acting Deputy Solicitor; Steven Walsh, and Eric Grimes, Associates Solicitors. Of counsel was John M. Whealan, Solicitor.

Before MAYER, Chief Judge, NEWMAN and SCHALL, Circuit Judges.

MAYER, Chief Judge.

Dial-A-Mattress Operating Corporation (Dial-A-Mattress) appeals the judgment of the Trademark Trial and Appeal Board affirming an examiner's rejection of its intent-to-use application to register "1-888-M-A-T-R-E-S-S" as a service mark. Because the mark is descriptive of the relevant services, and has acquired prima facie distinctiveness as the legal equivalent of one of Dial-A-Mattress' previously-registered marks, we reverse.

Background

Dial-A-Mattress sells mattresses and related bedding through retail stores and a telephone "shop-at-home" service. In 1996, it filed an intent-to-use application to register "1-888-M-A-T-R-E-S-S" as a service mark for "telephone shop-at-home retail services in the field of mattresses." It claimed that the proposed mark is inherently distinctive, or alternatively, that it acquired distinctiveness and was registerable pursuant to section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). In support of its application, Dial-A-Mattress cited a number of its previously-registered marks, including: "DM DIAL A MATRES" (and design) (Registration No. 1,554,222, obtained August 29, 1989); "(212) M-A-T-T-R-E-S" (Registration No. 1,589,453, obtained March 27, 1990) (the "(212)" portion of the mark is depicted with broken lines to indicate that "the area code will change"); "1-800-MATTRES, AND LEAVE OFF THE LAST S THAT'S THE S FOR SAVINGS" (Registration No. 1,728,356, obtained October 27, 1992); and "DIAL A MATTRESS," (Registration No. 1,339,658, obtained January 26, 1993).

Dial-A-Mattress also presented a declaration of its assistant general counsel, Robert Isler, in which he said that it nationally advertised the (212) M-A-T-T-R-E-S mark, and provided exemplars of that mark's use. He said that Dial-A-Mattress sought to register "1-800-MATRESS," "1-888-MATRESS" and "1-888-MATTRES" to further protect its existing marks, and because it received an "inordinate number" of customer calls on these lines (one million in sixteen months after July 1996). Isler inferred that people who called on these lines were attempting to reach Dial-A-Mattress, but were either unfamiliar with the correct spelling of "mattress" or misdialed.

After several office actions, the examiner rejected the "1-888-M-A-T-R-E-S-S" application because the mark is generic for the relevant services and therefore unregisterable. The examiner found that even if it is not generic, it is "merely descriptive" and Dial-A-Mattress presented insufficient evidence of acquired distinctiveness to permit registration of the mark under section 2(f) of the Trademark Act.

Dial-A-Mattress appealed the rejection to the Trademark Trial and Appeal Board, which affirmed. Because there was no dispute that the (888) toll-free area code designation is devoid of source-indicating significance, that "M-A-T-R-E-S-S" is the legal equivalent of the word "mattress," and that "mattress" is generic for the identified service, the board determined that the mnemonic "1-888-M-A-T-R-E-S-S" is generic.

The board also affirmed in the alternative, holding that the proposed mark is descriptive, and that Dial-A-Mattress presented insufficient evidence of acquired distinctiveness to permit registration. It determined that none of Dial-A-Mattress' previously-registered marks were the legal equivalents of its proposed mark; therefore they were not prima facie evidence of acquired distinctiveness. It also found the Isler declaration insufficient to demonstrate acquired distinctiveness because it did not show that customers who called the 1-888-M-A-T-R-E-S-S line understood it to be identified with Dial-A-Mattress. This appeal followed.

Discussion

We review the board's conclusions of law de novo and affirm its findings of fact if they are supported by substantial evidence. On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). We first address whether the mark "1-888-M-A-T-R-E-S-S" is generic and therefore unregisterable as a trademark. Generic terms are common names that the relevant purchasing public understands primarily as describing the genus of goods or services being sold. See In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1569-70, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986). They are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so "would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are." In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d at 1559, 4 USPQ2d at 1142.

The determination of whether a mark is generic is made according to a two-part inquiry: "First, what is the genus of the goods or services at issue? Second, is the term sought to be registered . . . understood by the relevant public primarily to refer to that genus of goods or services?" H. Marvin Ginn Corp., 782 F.2d at 990, 228 USPQ at 530. Placement of a term on the fanciful-suggestive-descriptive-generic continuum is a question of fact. In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d at 1569-70, 4 USPQ2d at 1142-43. The Director of the United States Patent and Trademark Office (Director) bears the burden of proving a term generic. In re The Am. Fertility Soc'y, 188 F.3d 1341, 1345, 51 USPQ2d 1832, 1834 (Fed. Cir. 1999). Any competent source suffices to show the relevant purchasing public's understanding of a contested term, including purchaser testimony, consumer surveys, dictionary definitions, trade journals, newspapers and other publications. In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d at 1570, 4 USPQ2d at 1143; In re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 USPQ 818, 819 (Fed. Cir. 1986).

Where a term is a "compound word" (such as "Screenwipe"), the Director may satisfy his burden of proving it generic by producing evidence that each of the constituent words is generic, and that "the separate words joined to form a compound have a meaning identical to the meaning common usage would ascribe to those words as a compound." In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1110 (Fed. Cir. 1987). However, where the proposed mark is a phrase (such as "Society for Reproductive Medicine"), the board "cannot simply cite definitions and generic uses of the constituent terms of a mark"; it must conduct an inquiry into "the meaning of the disputed phrase as a whole." In re The Am. Fertility Soc'y, 188 F.3d at 1347, 51 USPQ2d at 1836. The In re Gould test is applicable only to "compound terms formed by the union of words" where the public understands the individual terms to be generic for a genus of goods or services, and the joining of the individual terms into one compound word lends "no additional meaning to the term." Id. at 1348-49, 51 USPQ2d at 1837.

Here, there is no dispute that the genus is telephone shop-at-home services for retail mattresses. Nor does Dial-A-Mattress contest the following evidence and legal conclusions offered by the Director: (1) the area code designation (888) in the proposed mark by itself is devoid of source-indicating significance; (2) "matress" is the legal "equivalent" of the word "mattress"; and (3) the word "mattress" standing alone is generic for retail services in the field of mattresses.

Instead, Dial-A-Mattress contends that the board erred in holding this quantum of evidence sufficient to demonstrate that the term "1-888-MA-T-R-E-S-S" is generic. It specifically challenges the rule the board adopted in rendering its decision: "[I]f the mark sought to be registered is comprised solely of the combination of a designation (such as a toll-free telephone area code) which is devoid of source-indicating significance, joined with material which, under the Ginn two-part test, is generic for the identified goods or services, then the mark as a whole is generic and unregisterable." In re Dial A Mattress Operating Corp., 52 USPQ2d at 1913. Dial-A-Mattress argues thatGinn and In re The American Fertility Society, require evidence that the proposed mark as a whole is understood by the relevant public to refer to the relevant genus of goods or services. Because the Director offered no proof of the meaning the relevant purchasing public ascribes to the term in its entirety, Dial-A-Mattress contends the term is not generic.

The Director says the board's test is consistent with In re Gould arguing that the proposed mark is more akin to a compound word than to a phrase. He argues that because it is undisputed that both (888) and "MATRESS" are generic, joining the two together creates a term with no additional meaning than the individual meanings of each of its constituent parts. However, the Director provides no justification for this conclusion. Instead, he relies on the reasoning of Dranoff-Perlstein Assocs. v. Sklar, 967 F.2d 852, 859-60, 23 USPQ2d 1174, 1180 (3rd Cir. 1992), that trademark protection should not be granted to telephone numbers composed of a generic mnemonic word because it would preclude...