Dialing for Trademarks: Protecting Generic Terms In Phone Numbers and Domain Names

Author:Mr Stephen Jeffries
Profession:Holland & Knight LLP

In a development of immediate interest to businesses that employ mnemonic

telephone numbers in their marketing efforts, the Federal Circuit has held that

1-888-M-A-T-R-E-S-S may be registered at the United States Patent and Trademark

Office (USPTO). This decision appears to signal the end of a longstanding USPTO

policy prohibiting the trademark registration of mnemonic telephone numbers that

incorporate "generic" product descriptors. The holding may also have

implications with respect to the trademark registration of similarly constructed

domain names.

Dial-a-Mattress filed an application to register the mark 1-888-M-A-T-R-E-S-S

for "telephone shop-at-home retail services in the field of

mattresses" in 1996. The mark was refused registration on grounds that it

was generic and therefore incapable of functioning as a service mark at the

examination level. The Trademark Trial and Appeal Board of the Patent and

Trademark Office affirmed the decision of the examiner in the fall of 1999,

noting (1) that the area code "888" is by itself is devoid of

trademark significance and (2) the word "mattress" alone is generic

for retail services in the field of mattresses. Dial-a-Mattress subsequently


On appeal, the Federal Circuit determined that the Patent and Trademark

Office erred in separately considering and then discounting the area code

designation "888" from its analysis and concluding that the mark was

generic. The Federal Circuit held, rather, that a proposed mark must be examined

for generic significance as a whole, and found that the mark

1-888-M-A-T-R-E-S-S, as a whole, could not be said to describe telephone

mattress retailing services. With respect to mnemonic telephone numbers

particularly, the court also noted (1) a business that has obtained such a

telephone number has already effectively precluded its competitors from using

and promoting that number and (2) the law of unfair competition should protect

the first user of a mnemonic telephone number from the use of confusingly

similar mnemonics by competitors. Finally, the court stressed that mnemonic

telephone numbers consisting primarily of descriptive or generic matter should

be registered only upon the presentation of evidence of consumer recognition.

In view of past practice, it should be anticipated that the Patent and

Trademark Office, at least initially, will adopt only the narrowest

interpretation of the 1-888-M-A-T-R-E-S-S decision in determining registrability.

It is...

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