In a development of immediate interest to businesses that employ mnemonictelephone numbers in their marketing efforts, the Federal Circuit has held that1-888-M-A-T-R-E-S-S may be registered at the United States Patent and TrademarkOffice (USPTO). This decision appears to signal the end of a longstanding USPTOpolicy prohibiting the trademark registration of mnemonic telephone numbers thatincorporate "generic" product descriptors. The holding may also haveimplications with respect to the trademark registration of similarly constructeddomain names. Dial-a-Mattress filed an application to register the mark 1-888-M-A-T-R-E-S-Sfor "telephone shop-at-home retail services in the field ofmattresses" in 1996. The mark was refused registration on grounds that itwas generic and therefore incapable of functioning as a service mark at theexamination level. The Trademark Trial and Appeal Board of the Patent andTrademark Office affirmed the decision of the examiner in the fall of 1999,noting (1) that the area code "888" is by itself is devoid oftrademark significance and (2) the word "mattress" alone is genericfor retail services in the field of mattresses. Dial-a-Mattress subsequentlyappealed. On appeal, the Federal Circuit determined that the Patent and TrademarkOffice erred in separately considering and then discounting the area codedesignation "888" from its analysis and concluding that the mark wasgeneric. The Federal Circuit held, rather, that a proposed mark must be examinedfor generic significance as a whole, and found that the mark1-888-M-A-T-R-E-S-S, as a whole, could not be said to describe telephonemattress retailing services. With respect to mnemonic telephone numbersparticularly, the court also noted (1) a business that has obtained such atelephone number has already effectively precluded its competitors from usingand promoting that number and (2) the law of unfair competition should protectthe first user of a mnemonic telephone number from the use of confusinglysimilar mnemonics by competitors. Finally, the court stressed...
Dialing for Trademarks: Protecting Generic Terms In Phone Numbers and Domain Names
|Author:||Mr Stephen Jeffries|
|Profession:||Holland & Knight LLP|
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