Dial A Mattress Operating Corp.

Trademark Trial and Appeal Board

Nov 2, 1999

No. 75131355 (T.T.A.B. Nov. 2, 1999)

Paper No. 12
CMB
THIS DISPOSITION IS CITABLE
AS PRECEDENT OF THE TTAB NOVEMBER 2, 1999
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Dial A Mattress Operating Corporation
________
Serial No. 75/131,355
_______
Arthur L. Plevy of Plevy & Associates for Dial A Mattress
Operating Corporation.
Thomas W. Wellington, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
_______
Before Simms, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant has filed an intent-to-use application to
register the designation 1-888-M-A-T-R-E-S-S on the
Principal Register for "telephone shop-at-home retail
services in the field of mattresses."1 Applicant claims

1 Application Serial No. 75/131,355, filed July 9, 1996.
Applicant has claimed ownership of seven Principal Register
registrations, i.e.:
Registration No. 1,339,658, of the mark DIAL A MATTRESS for
"retail outlet services and retail direct sale of mattresses."
Ser. No. 75/131,355
2
that the designation is inherently distinctive and, in the
alternative, that it has acquired distinctiveness and thus

Applicant has disclaimed MATTRESS apart from the mark as
shown. Issued June 4, 1985; combined Section 8 and 15
affidavit accepted and acknowledged.
Registration No. 1,554,222, of the mark DM DIAL A MATTRES (and
design) for "retail outlet services and retail direct sale of
mattresses." Issued August 29, 1989; combined Section 8 and
15 affidavit accepted and acknowledged.
Registration No. 1,728,356, of the mark 1-800-MATTRES, AND
LEAVE OFF THE LAST S THAT’S THE S FOR SAVINGS for "retail
outlet services and retail direct sale of mattresses."
Applicant has disclaimed "1-800" apart from the mark as shown.
Issued October 27, 1992; combined Section 8 and 15 affidavit
filed October 27, 1998, Post-Registration action mailed March
29, 1999.
Registration No. 1,748,796, of the mark DIAL-A-MATTRESS (and
design) for "franchising; namely, providing technical
assistance in the establishment and/or operation of retail
outlet stores for direct sale of mattresses." Issued January
26, 1993.
Registration No. 1,589,453, of the mark (212) M-A-T-T-R-E-S
for "retail outlet services and retail store services
featuring mattresses." Issued March 27, 1990; combined
Section 8 and 15 affidavit accepted and acknowledged. The
"(212)" portion of the mark is depicted on the registration
drawing in broken lines, and the following statement appears
on the registration: "The drawing is lined to indicate that
the area code will change." (Note: throughout the remainder
of this decision, the Board will follow applicant’s practice
of referring to this registration as the "(AREA CODE) M-A-T-T-
R-E-S" registration.)
Registration No. 1,757,763, of the mark PHONE-A-MATTRESS for
"retail outlet services and retail direct sale of mattresses."
Issued March 9, 1993; combined Section 8 and 15 affidavit
accepted and acknowledged.
Registration No. 1,828,682, of the mark DIAL-A-PEDIC for
"telephone shop-at-home retail sales services in the field of
orthopedic mattresses." Issued March 29, 1994.
Ser. No. 75/131,355
3
is registrable on the Principal Register pursuant to
Trademark Act Section 2(f), 15 U.S.C. §1052(f).
The Trademark Examining Attorney has refused
registration under Trademark Act Section 2(e)(1), 15 U.S.C.
§1052(e)(1), on the grounds that the designation applicant
seeks to register is merely descriptive as applied to
applicant's services, that it is generic as applied to
applicant's services, and, if the designation is found not
to be generic, that applicant's evidence of acquired
distinctiveness is insufficient to warrant registration on
the Principal Register pursuant to Section 2(f).
When the refusals were made final, applicant filed
this appeal. Applicant and the Trademark Examining
Attorney have filed main briefs, and applicant has filed a
reply brief. Applicant has not requested an oral hearing.
The evidence of record, which we have considered both
in connection with applicant’s Section 2(f) claim and as
part of our determination of whether applicant’s mark is
merely descriptive and/or generic, see In re Paint Products
Co., 8 USPQ2d 1863, 1866 (TTAB 1988), consists of the
"Declaration of Acquired Distinctiveness" executed pursuant
to 37 C.F.R. §2.20 by Robert A. Isler, applicant's
Assistant General Counsel. Mr. Isler states that applicant
is a well-known company that has been in the business of
Ser. No. 75/131,355
4
selling mattresses over the telephone under the DIAL-A-
MATTRESS mark for more than twenty years, and that
applicant owns the registrations claimed in the application
[see supra at footnote 1]. He also avers that applicant
has advertised its registered service marks, including the
"(AREA CODE) MATTRESS" [sic]2 mark, in national
publications, on nationwide television and on billboards
located along major highways; that applicant operates
franchises for selling its products in major cities located
throughout the East Coast and beyond, including Boston,
Chicago, New York, Philadelphia and Washington, D.C.; that
applicant’s franchisees use, under license, applicant’s
registered marks, including the "(AREA CODE) MATTRESS"
[sic]3 mark; that applicant has spent "literally millions of
dollars" to date "promoting and protecting the (AREA CODE)
MATTRESS [sic]4 mark"; and that applicant’s franchisees also
have promoted the mark. Mr. Isler also states that
applicant filed applications in July 1996 to register the
marks "1-888-MATRESS" [sic],5 "1-800-MATRESS" [sic],6 and

2 The registered mark is (AREA CODE) M-A-T-T-R-E-S, not (AREA
CODE) MATTRESS.
3 See supra at footnote 2.
4 See supra at footnote 2.
5 The application involved in this appeal. The mark depicted in
the application is 1-888-M-A-T-R-E-S-S, not 1-888-MATRESS.
Ser. No. 75/131,355
5
"1-888-MATTRES" [sic],7 and that these applications were
filed because, while it already owns the "(AREA CODE)
MATTRESS" [sic]8 registration, applicant "receives an
inordinate number of telephone calls from customers over
the phone lines 1-800-MATRESS, 1-888-MATRESS and 1-888-
MATTRES. Apparently, many customers are unfamiliar with
the correct spelling of the word ’MATTRESS,’ or they
misdial the number." (Isler Declaration at paragraph 5.)
Finally, he avers that in the sixteen months since the
filing of those three applications in July 1996, applicant
has received one million telephone calls on
the 1-800 MATRESS line, the 1-888-MATRESS
line and the 1-888-MATTRES line. Upon
information and belief, virtually all the
customers who use these lines understand that
the numbers they have dialed, 1-800 MATRESS,
1-888-MATRESS, and 1-888-MATTRES, are owned
by and/or identified with a particular
source, namely, the applicant herein, Dial A
Mattress. In dialing these numbers, the
callers intend to reach DIAL A MATTRESS.
(Isler Declaration at paragraph 6.) Attached to Mr.
Isler’s Declaration of Acquired Distinctiveness are samples

6 Serial No. 75/130,172, abandoned on March 30, 1998 for failure
to respond to an office action. The mark depicted in the
application was 1-800-M-A-T-R-E-S-S, not 1-800-MATRESS.
7 Serial No. 75/131,352, abandoned on March 30, 1998 for failure
to respond to an office action. The mark depicted in the
application was 1-888-M-A-T-T-R-E-S, not 1-888-MATTRES.
8 See supra at footnote 2.
Ser. No. 75/131,355
6
of applicant’s advertisements, each of which depict use of
the designations DIAL-A-MATTRESS and 1-800-MATTRESS in
conjunction with the wording "Leave The Last ’S’ Off For
Savings."
Genericness.
The Court of Appeals for the Federal Circuit has
stated that:
[d]etermining whether a mark is generic . . .
involves a two-step inquiry: First, what is the
genus of 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. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir.
1986). This two-part test is the basis of our analysis in
genericness cases.
Applicant seeks to register an alphanumeric telephone
number as a service mark. Neither the Court of Appeals for
the Federal Circuit nor the Board has specifically
addressed the question of genericness in the context of
such marks. We note, however, that several other courts
have done so.
Ser. No. 75/131,355
7
For example, the decision of the District Court in the
case of 800 Spirits Inc. v. Liquor By Wire, Inc., 14
F.Supp.2d 675 (D.N.J. 1998) is persuasive and instructive.
In that case, the Court held that the plaintiff, which used
the designation "800 SPIRITS" in connection with gift
delivery services in the field of alcoholic beverages,
could not as a matter of law preclude the defendant (its
competitor) from using the toll-free telephone number 1-
800-SPIRITED in connection with similar services, and
accordingly refused to enjoin the defendant’s use of that
telephone number.
Adopting the reasoning of the Third Circuit Court of
Appeals in Dranoff-Perlstein Associates v. Sklar, 967 F.2d
852, 23 USPQ2d 1174 (3d Cir. 1992) and rejecting (as did
the Third Circuit in Dranoff) the contrary reasoning of the
Second Circuit Court of Appeals in Dial-A-Mattress
Franchise Corp. v. Page, 880 F.2d 675, 11 USPQ2d 1644 (2d
Cir. 1989), the District Court in 800 Spirits noted that it
has become increasingly popular to advertise one’s services
through toll-free mnemonic telephone numbers which spell
out words or phrases which are descriptive of or generic
for the services. The Court found that SPIRITS, the non-
numeric portion of the plaintiff’s designation 800 SPIRITS,
was generic for the alcoholic beverage delivery services
Ser. No. 75/131,355
8
provided by the plaintiff, and that, as used in telephone
number designations, the numbers "800," "888," and "877"
are functional terms that represent toll-free area codes.
The Court concluded that, just as generic terms are denied
trademark protection because granting one firm their
exclusive use would place competitors at a serious
competitive disadvantage, "[s]imilarly, if a business were
permitted to preclude the use of a toll-free telephone
number that corresponds to a generic term simply by
developing a service mark of ’800,’ ’888,’ or ’877’
followed by the term, competitors would be denied the
opportunity to take advantage of this often effective
marketing technique." 800 Spirits, supra, 14 F.Supp.2d at
680.
We are persuaded that the analysis and rationale set
forth in Dranoff-Perlstein and 800 Spirits, supra, would
serve as an appropriate complement to the Federal Circuit’s
Ginn two-part test in cases requiring a determination of
the genericness of alphanumeric telephone number marks.
Accordingly, we hold that if 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
matter which, under the Ginn two-part test, is generic for
Ser. No. 75/131,355
9
the identified goods or services, then the mark as a whole
is generic and unregistrable. Stated differently, a
generic term is not transformed into a registrable mark
simply by joining it with a toll-free telephone area code
which itself is devoid of source-indicating significance.
We note that this test is essentially the same test
already used by the Trademark Examining Operation for
determining the registrability of alphanumeric telephone
number marks. The Trademark Manual of Examining Procedure,
following the Third Circuit’s Dranoff decision rather than
the Second Circuit’s Dial-A-Mattress decision, sets forth
the following general guidelines with respect to the
registrability of such telephone number marks:
If an applicant applies to register a
designation that consists of a merely
descriptive or generic term with numerals in
the form of a telephone number, for example,
800, 888 or 900 followed by a word,
registration should be refused under
§2(e)(1). The fact that a designation is in
the form of a telephone number is
insufficient, by itself, to render it
distinctive. See Dranoff-Perlstein
Associates v. Sklar, 23 USPQ2d 1174 (3d Cir.
1992). But see Dial-A-Mattress Franchise
Corp. v. Page, 880 F.2d 675, 11 USPQ2d 1644
(2d Cir. 1989); Murrin v. Midco
Communications Inc., 726 F.Supp. 1195, 13
USPQ2d 1815 (D. Minn. 1989). If the relevant
term is merely descriptive, but not generic,
the mark may be registered on the Principal
Register with a proper showing of acquired
distinctiveness under §2(f) or on the
Ser. No. 75/131,355
10
Supplemental Register. Of course, the
designation must also be used in the manner
of a mark.9 If the relevant term is generic,
the designation is unregistrable on either
the Principal or the Supplemental Register.
TMEP section 1209.01(b)(12). Furthermore, it appears that
a similar analysis has been adopted by the Office for
examination of the ever-increasing number of marks which
consist of or incorporate those portions of Internet domain
names which are devoid of any source-indicating
significance, such as “http,” “www” and “.com”. See
Examination Guide No. 2-99, issued September 29, 1999,
entitled “Marks Composed, in Whole or in Part, of Domain
Names.”10
Applying this analysis to the present case, we find
that applicant’s mark 1-888-M-A-T-R-E-S-S is generic and
unregistrable, inasmuch as it consists merely of a generic

9 Applicant’s application is based on intent-to-use, and
applicant has not yet filed its allegation of use and provided
the Office with specimens showing the manner of its use of the
matter sought to be registered. Therefore, the issue of whether
the matter sought to be registered is being used as, and
functions as, a mark (rather than as merely a telephone number,
e.g.), is not before us in this case.
10 Additionally, we note that the Board has used a similar
analysis in the analogous situation of marks which are comprised
solely of generic matter combined or joined with an entity
designation such as “Inc.” or “Co.” In such cases, the entity
designation is found to be devoid of source-indicating
significance, and its presence in the mark does not suffice to
transform otherwise generic matter into a registrable mark. See,
e.g., In re The Paint Products Co., supra; In re E.I. Kane, Inc.,
221 USPQ 1203 (TTAB 1984).
Ser. No. 75/131,355
11
term combined with a telephone area code. See Dranoff-
Perlstein, supra, and 800 Spirits, supra.
Specifically, we find that "M-A-T-R-E-S-S" is the
legal equivalent of the word "mattress.” See In re Hubbard
Milling Co., 6 USPQ2d 1239 (TTAB 1987); see also In re
Wyandotte Chemicals Corporation, 155 USPQ 100 (TTAB 1967),
and In re Initial Teaching Alphabet Publications, Inc., 153
USPQ 684 (TTAB 1967). Applicant does not contend
otherwise. We further find that the genus of the services
involved in this case is that of “telephone shop-at-home
retail mattress sales,” and that M-A-T-R-E-S-S, the legal
equivalent of the word “mattress,” would be understood by
the relevant purchasing public to refer primarily to that
genus of services. Accordingly, we find that M-A-T-R-E-S-S
is generic for such services under the Ginn two-part test.
See In re Bonni Keller Collections Ltd., 6 USPQ2d 1224
(TTAB 1987)(LA LINGERIE generic for “retail store services
in the field of clothing”); In re Wickerware, Inc., 227
USPQ 970 (TTAB 1985)(WICKERWARE generic for “mail order and
distributorship services in the field of products made of
wicker”); In re Half Price Books, Records, Magazines,
Incorporated, 225 USPQ 219 (TTAB 1984)(HALF PRICE BOOKS
RECORDS MAGAZINES generic for “retail book and record store
services”).
Ser. No. 75/131,355
12
Furthermore, we take judicial notice, see Fed. R.
Evid. 201(b) and Trademark Rule 2.122(a), that toll-free
telephone area codes such as "1-888" are used by numerous
persons and businesses, and accordingly we find that such
telephone area codes are devoid of any source-indicating
significance.11 The presence of this non-distinctive
telephone area code in applicant’s mark does not negate the
genericness of the term M-A-T-R-E-S-S, nor does it
transform that generic term into a registrable mark. See
Dranoff-Perlstein, supra, and 800 Spirits, supra.
Because applicant’s mark consists merely of a generic
term combined with a non-distinctive toll-free telephone

11 See, e.g., Newton’s Telecom Dictionary (15th Ed. 1999) at 16-
17:
800 Service Eight-hundred service. A generic and common
(and not trademarked) term for AT&T’s, MCI’s, Sprint’s and
the Bell operating companies’ IN-WATS service. All these
IN-WATS services have 800 and 888 as their "area code,"
with 877 numbers scheduled for 1998 release. Dialing an
800-number is free to the person making the call. The call
is billed to the person or company being called . . . 800
Service works like this: You’re somewhere in North America.
You dial 1-800 or 1-888 and seven digits. . . .
. . .
888 Service When North America ran out of 800 numbers, it
adopted a new prefix - 888. The first 888 number came in
around April 1996. 877 numbers will begin in April of
1998. The 877 and 888 prefixes have all the
characteristics of today’s 800 Service.
Ser. No. 75/131,355
13
area code, we find the mark as a whole to be generic and
unregistrable.12

12 We are cognizant of the recent decision of the Court of
Appeals for the Federal Circuit in the case of In re American
Fertility Society, ___ F.3d ___, 51 USPQ2d 1832 (Fed. Cir. 1999).
In that case, the Board, relying on In re Gould Paper Corp., 835
F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) and citing evidence
establishing that the individual terms SOCIETY and REPRODUCTIVE
MEDICINE were each generic, had found the phrase SOCIETY FOR
REPRODUCTIVE MEDICINE to be generic for “association services,
namely promoting the interests of the reproductive medicine
industry.” On appeal, the Court held that the Board had applied
the wrong legal test, which it had derived from Gould, to the
facts of the case. The Court explained that the Gould test,
which allows the Office to satisfy its genericness evidentiary
burden by producing “evidence including dictionary definitions
that the separate words joined to form a compound have a meaning
[to the relevant public] identical to the meaning common usage
would ascribe to those words as a compound,” Gould, supra, 5
USPQ2d at 1111-12, is applicable only to marks comprised of
compound words such as the mark involved in Gould, i.e.,
SCREENWIPE [also SCREEN WIPE - the Gould Court specifically
stated, see 5 USPQ2d at 1112, that the presence or absence of a
space between the words was not determinative of its status as a
“compound word”]. The Court stated: “Gould is limited, on its
facts, language, and holding, to compound terms formed by the
union of words. It is legally erroneous to attempt to apply the
[Gould test] to phrases consisting of multiple terms, which are
not ‘joined’ in any sense other than appearing as a phrase.” In
re American Fertility, 51 USPQ2d at 1837. The Court remanded the
case to the Board for application of:
[t]he correct legal test for genericness of phrases,
as set forth in Marvin Ginn, [which] requires evidence
of ‘the genus of goods or services at issue’ and the
understanding by the general public that the mark
refers primarily to ‘that genus of goods or
services.’” . . . The Board must now apply the Marvin
Ginn test to the phrase as a whole, and not focus only
on the individual terms.”
Id.
However, In re American Fertility Society did not involve
an alphanumeric telephone number mark, and the holding and
analysis of that case do not seem to be readily applicable in the
context of determining the genericness of such marks. That is,
to the extent that the decision holds that a finding of
genericness requires a showing that the designation in question,
Ser. No. 75/131,355
14

in its entirety, has actually been used in a generic manner by
the applicant or by others, it would appear that an alphanumeric
telephone number mark could never be proven to be generic. Such
a mark is comprised of a telephone number which has been assigned
or allocated solely to one person or business, and which thus
will have been used only by that one person or business. In view
thereof, there would have been no opportunity in the marketplace
for others to have used the asserted mark at issue, and it is
highly unlikely that the Office, or a plaintiff in an inter
partes proceeding before the Board, would ever be able to produce
the requisite evidence of such use of the asserted mark by
others. Cf. Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992)(absence of evidence of actual confusion is of
little probative weight in likelihood of confusion analysis where
it does not appear that there has been any meaningful opportunity
for actual confusion to have occurred).
The result under such an analysis would amount essentially
to a per se rule that telephone number marks consisting solely of
generic matter combined with a toll-free telephone area code
(and, by logical extension, “domain name” marks consisting solely
of generic terms combined with “.com” or other non-distinctive
matter) can never be refused registration on the ground of
genericness. For the reasons discussed by the respective courts
in Dranoff-Perlstein, supra, and 800 Spirits, supra, we do not
believe that such a rule would be appropriate, and we instead
have adopted the analysis set forth in those cases, as a
supplement to the Ginn two-step genericness test in this case.
Moreover, to the extent that, contrary to our assumption,
In re American Fertility Society is deemed to be applicable to
the determination of whether alphanumeric telephone number marks
are generic, we believe that our genericness finding in this case
is consistent with the Court’s teaching and decision. As noted
above, in its discussion of the proper tests to be used in
determining genericness, the Court distinguishes between “phrase”
marks and “compound word” marks. In cases involving compound
marks, “Gould provides additional assistance” to the Office in
the Office’s efforts to satisfy the Ginn two-part genericness
test, by relieving the Office of the burden of producing evidence
of generic use of the compound term, per se. Instead, such marks
may be proved to be generic if the evidence of record establishes
that each of the constituent words which makes up the compound is
itself generic under the Ginn two-part test, and that the
compound created by joining those constituent generic words has
no different or additional meaning than the constituent words
themselves have. In re American Fertility Society, supra at
1836-37.
As between a “phrase” mark and a “compound” mark, an
alphanumeric telephone number mark such as applicant’s clearly is
more akin to a “compound” mark, inasmuch as it is comprised of
two constituent elements (a generic word and a telephone area
Ser. No. 75/131,355
15
Applicant’s arguments in opposition to the
genericness refusal are unpersuasive. Essentially,
applicant argues that the Third Circuit’s Dranoff decision
is the “minority rule” with respect to telephone number
marks, and that the Office instead should follow the Second
Circuit's Dial-A-Mattress decision and allow telephone
numbers incorporating generic terms to be registered as
marks. We disagree, for the reasons set forth by the Third
Circuit in Dranoff and by the District Court in 800
Spirits, discussed above.13 Instead, we find that the

code) which are joined to form a single compound term.
Therefore, in attempting to establish that an alphanumeric
telephone number mark is generic under the two-part test of Ginn,
supra, the Office should be entitled to the “additional
assistance” provided by Gould in cases involving compound marks,
and should not be required to present evidence that the compound
term, per se, has been used generically by applicant or others.
In the present case, the record shows that each of the
components of applicant’s compound mark, i.e., the toll-free
telephone area code “1-888” and the term “mattress” or its
equivalent “M-A-T-R-E-S-S,” is generic and non-distinctive in
itself. The meaning purchasers would attribute to the compound
formed by the joinder of these generic and non-distinctive
components is identical to the meaning of the components
themselves. Thus, to the extent that In re American Fertility
Society, supra, is applicable to alphanumeric telephone number
marks such as applicant’s, we find that applicant’s mark is
generic under the analysis set forth in that case.
13 Applicant also has attached to its appeal brief a copy of a
page from the March 11, 1997 issue of the Official Gazette,
offered to show that the Office has approved for publication two
marks consisting of alphanumeric telephone numbers (i.e., the
marks 1-800 YOUR HMO and 1-888 YOUR HMO, both of which are for
"health care services," and in both of which the term "HMO" has
been disclaimed). Applicant argues that such approvals are
contrary to the Office's stated policy regarding the
registrability of such marks as set forth in TMEP section
1209.01(b)(12), see supra, and that applicant's application
Ser. No. 75/131,355
16
Trademark Examining Attorney’s refusal on the ground of
genericness was proper, and accordingly we affirm that
refusal.
Mere descriptiveness.
As discussed above, we have found applicant’s mark to
be generic for the recited services. However, assuming
arguendo that applicant’s mark is not generic, we also find
that it is merely descriptive, indeed that it is highly
descriptive, of the recited services. Accordingly, we also
affirm the Trademark Examining Attorney’s mere
descriptiveness refusal.
In a recently-published decision, the Board found the
mark 888 PATENTS to be merely descriptive of services
recited as "legal services, namely, patent research,
prosecution and enforcement; patent searching." In re
Page, 51 USPQ2d 1660 (TTAB 1999). The Board held that the
mark was merely descriptive because it consisted solely of
the merely descriptive term PATENTS preceded by the
numerals 888, which were found to be devoid of source-

accordingly should be approved for publication as well. This
evidence is untimely, see Trademark Rule 2.142(d). Moreover,
even if we assume (and we do not) that publication of these marks
is contrary to the Office’s policy, that fact is not
determinative in the present case. See TMEP section
1209.01(b)(1); In re Scholastic Testing Service, Inc., 196 USPQ
517 (TTAB 1977).
Ser. No. 75/131,355
17
indicating significance inasmuch as they would readily be
perceived as nothing more than the prefix used in a toll-
free telephone number. Id. at 1664-65.
Likewise in the present case, we find that the
designation "M-A-T-R-E-S-S" is the legal equivalent of the
word "mattress”; that applicant's recited services involve
the retail sale of mattresses by telephone; that the word
"mattress" or its legal equivalent M-A-T-R-E-S-S merely
describes this aspect or feature of applicant's services;
that the toll-free telephone area code "1-888" is devoid of
any source-indicating significance; and that applicant's
joining of the non-distinctive toll-free telephone area
code "1-888" and the merely descriptive term "mattress" or
M-A-T-R-E-S-S does not transform these non-distinctive
components into an inherently distinctive compound mark.
We are not persuaded by applicant’s arguments, set
forth in its briefs, in opposition to the Trademark
Examining Attorney’s mere descriptiveness refusal.
Contrary to applicant's contention, it is not determinative
that purchasers might not be able to immediately discern
from applicant’s mark all of the specific features of the
services applicant offers in connection with its sale of
mattresses, i.e., that applicant offers same-day service,
two-hour delivery, and warranties on its mattresses. See
Ser. No. 75/131,355
18
In re Patent & Trademark Services Inc., 49 USPQ2d 1537
(TTAB 1998); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
In re MBAssociates, 180 USPQ 338 (TTAB 1973). Likewise,
the purported availability of other terms which applicant’s
competitors might use in connection with their sale of
mattresses does not negate the mere descriptiveness of the
matter applicant seeks to register. See In re The
Officers’ Organization For Economic Benefits, Limited, 221
USPQ 184 (TTAB 1984). Finally, the fact that applicant
owns an incontestable registration on the Principal
Register of the mark DIAL A MATTRESS does not mandate a
finding in the present case that the 1-888-M-A-T-R-E-S-S
mark is inherently distinctive. DIAL A MATTRESS and 1-888-
M-A-T-R-E-S-S clearly are different marks.14

14 Certain statements in applicant’s brief and in its response
to the Trademark Examining Attorney’s first Office action might
be construed as applicant’s attempt to argue that its ownership
of incontestable registrations of certain of its other marks
precludes or estops the Office from refusing registration of
applicant’s present mark on the grounds of mere descriptiveness,
under In re American Sail Training Association, 230 USPQ 879
(TTAB 1986). Applicant does not make this argument specifically,
nor does applicant ever cite the In re American Sail Training
decision. However, in the interest of completeness, we will
address the argument here.
In re American Sail Training is inapposite to this case. As
discussed infra with respect to applicant’s Section 2(f) claim,
the mark applicant now seeks to register is not the same mark as
the marks previously registered by applicant. Furthermore, the
services recited in the present application are not the same
services as those recited in the previous registrations, but
rather are additional and different services. Accordingly, to
the extent that applicant is attempting to make a "Tall Ships"-
type argument in this case, we reject that argument. See In re
Ser. No. 75/131,355
19
Section 2(f).
Because we have found applicant’s 1-888-M-A-T-R-E-S-S
designation to be generic as applied to the services
recited in the application, applicant’s alternative request
for registration pursuant to Section 2(f) is unavailing.
That is, because the designation is generic and incapable
of functioning as a service mark, no amount of evidence of
acquired distinctiveness would be sufficient to warrant its
registration as a mark. See, e.g., H. Marvin Ginn Corp.,
supra, 782 F.2d at 989, 228 USPQ at 530. In the interest
of completeness, however, we will decide whether
applicant’s evidence of acquired distinctiveness would be
sufficient, if applicant’s designation were to be
determined not to be generic, to warrant registration of
the designation under Section 2(f).
Generally, the higher the degree of descriptiveness of
the mark involved, the greater the amount and quality of
evidence of acquired distinctiveness that is required to
warrant registration under Section 2(f). See Yamaha
International v. Hoshino Gakki, 840 F.2d 1572, 6 USPQ2d
1001, 1008 (Fed. Cir. 1988). Furthermore, because

Loew’s Theaters, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir.
1985); In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994); In re
Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988);
In re BankAmerica Corp., 231 USPQ 873 (TTAB 1996).
Ser. No. 75/131,355
20
applicant’s application is an intent-to-use application,
applicant would be entitled to registration under Section
2(f) only if applicant establishes that, as a result of
applicant’s use of the mark on related goods or services,
the mark has become distinctive as to those other goods or
services and that this previously created distinctiveness
will transfer to the services recited in the present
application when the mark is used in connection with those
services. See TMEP section 1212.09(a).
In support of its Section 2(f) claim that the
designation 1-888-M-A-T-R-E-S-S will have acquired
distinctiveness as a service mark for "telephone shop-at-
home retail services in the field of mattresses" once it is
used in connection with those services, applicant relies on
its ownership of the registered marks claimed in its
application, see supra at footnote 1, especially its
registrations of the marks DIAL-A-MATTRESS for "retail
outlet services and retail direct sale of mattresses" (Reg.
No. 1,339,658), 1-800-MATTRES, AND LEAVE OFF THE LAST S
THAT’S THE S FOR SAVINGS for "retail outlet services and
retail direct sale of mattresses" (Reg. No. 1,728,356), and
the "phantom" mark (AREA CODE) M-A-T-T-R-E-S for "retail
outlet services and retail store services featuring
mattresses" (Reg. No. 1,589,453). Applicant also relies on
Ser. No. 75/131,355
21
the 37 C.F.R. §2.20 "Declaration of Acquired
Distinctiveness" executed by Robert A. Isler, discussed and
quoted from earlier in this opinion.
We turn first to applicant's prior registrations.
Trademark Rule 2.41(b) provides, in relevant part, that "in
appropriate cases, ownership of one or more prior
registrations on the Principal Register or under the Act of
1905 of the same mark may be accepted as prima facie
evidence of distinctiveness." However, the rule also
provides that the Office may require further evidence of
acquired distinctiveness. The Trademark Examining Attorney
has discretion whether to accept prior registrations as
prima facie evidence of acquired distinctiveness under the
rule, especially where the mark and/or the goods and
services of the existing registrations are not the same as
the mark and/or the goods and services in the application.
See In re Best Products Co., Inc., 231 USPQ 988, 989 fn. 6
(TTAB 1986); TMEP section 1212.04.
The Trademark Examining Attorney has refused to accept
applicant's prior registrations as prima facie evidence of
acquired distinctiveness in this case, arguing that
applicant's previously registered marks are not "the same
mark" as the mark applicant seeks to register in the
Ser. No. 75/131,355
22
present application.15 Applicant, in turn, argues that its
prior registrations are sufficient as prima facie evidence
of acquired distinctiveness. Applicant contends that the
mark it now seeks to register, 1-888-M-A-T-R-E-S-S, is the
legal equivalent of its previously registered marks,
especially its (AREA CODE) MATTRES mark and its 1-800-
MATTRES, AND LEAVE OFF THE LAST S THAT’S THE S FOR SAVINGS
mark, and that any differences between its present mark and
these registered marks, i.e., the inclusion of the 1-888
area code and the different misspelling of the word
"mattress," are immaterial and inconsequential. In its
reply brief, however, applicant acknowledges that "[t]he
public will not view the mark sought to be registered to be
the 'same' as the registered marks,” but also argues that
“the public will recognize the source, and will thereby
recognize the marks as the 'same' as an indicia [sic] of
origin for Applicant's goods and services." (Reply brief
at p. 3.)
The analysis used to determine whether applicant's
present mark is "the same mark" as its previously

15 The Trademark Examining Attorney’s rejection of applicant’s
prior registrations as prima facie evidence of acquired
distinctiveness is based solely on the asserted dissimilarities
between applicant’s present mark and the registered marks, and
not on any argument that the services recited in the present
application are unrelated to the services recited in the prior
registrations. See In re Best Products Co., Inc., supra.
Ser. No. 75/131,355
23
registered marks, for purposes of Trademark Rule 2.41(b),
is similar to the analysis used in "tacking" cases to
determine whether a party may rely, for purposes of
establishing priority, on its prior use of a mark which is
not identical to its present mark, and also to the analysis
used to determine whether a proposed amendment to a mark
would constitute an impermissible material alteration. See
TMEP section 1212.04. In all of these situations, the
issue is whether the present mark and the previous mark are
"legal equivalents," i.e., whether they create the same,
continuing commercial impression such that the consumer
would consider both as the same mark. See Van Dyne-Crotty
Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866
(Fed. Cir. 1991). If the marks would be perceived as two
distinct marks, then they are not legal equivalents or "the
same mark," even if they are so similar that purchasers
would assume them to be owned and used by a single source.
See Compania Insular Tabacalera v. Camacho Cigars, Inc.,
167 USPQ 299, 303 (TTAB 1970).
For purposes of Trademark Rule 2.41(b), we find that
applicant’s present mark, 1-888-M-A-T-R-E-S-S, is not "the
same mark" as applicant’s previously registered marks. In
its appeal brief and reply brief, applicant does not
seriously contend that its registered marks DIAL A
Ser. No. 75/131,355
24
MATTRESS, DM DIAL A MATTRES (and design), DIAL-A-MATTRESS,
PHONE-A-MATTRESS, and DIAL-A-PEDIC are the legal
equivalents of its present mark 1-888-M-A-T-R-E-S-S, and we
see no basis for finding any such legal equivalency.
Instead, applicant has specifically relied on the mark 1-
800-MATTRES, AND LEAVE OFF THE LAST S THAT’S THE S FOR
SAVINGS, and the mark (AREA CODE) M-A-T-T-R-E-S.
We find that the registered mark 1-800-MATTRES, AND
LEAVE OFF THE LAST S THAT’S THE S FOR SAVINGS is not the
same mark as 1-888-M-A-T-R-E-S-S, and that it thus does not
suffice as prima facie evidence of acquired distinctiveness
under Trademark Rule 2.41(b).16 First, we note that the
registration includes applicant’s disclaimer of the
exclusive right to use the toll-free telephone area code
portion of the registered mark, "1-800." To that extent,
certainly, this registration is of limited probative value
as evidence of acquired distinctiveness.
Furthermore, the registered mark also includes
significant wording, i.e., AND LEAVE OFF THE LAST S THAT’S
THE S FOR SAVINGS, which is not present in the mark 1-888-

16 Also, as noted above, it currently appears from the Office’s
records that applicant’s Section 8 affidavit with respect to Reg.
No. 1,728,356 has not yet been accepted by the Office. If the
registration were to be cancelled under Section 8, it would not
constitute evidence of acquired distinctiveness under Trademark
Rule 2.41(b). See In re BankAmerica Corp., 229 USPQ 852, 853
(TTAB 1986); TMEP section 1212.04(d).
Ser. No. 75/131,355
25
M-A-T-R-E-S-S. The commercial impression created by
applicant’s registered mark emphasizes the telephone
number’s omission of the second "S" in the word MATTRESS.
Indeed, this omission of the second "S" appears to be the
dominant focus of applicant’s advertising strategy, as
demonstrated by the sample advertisements submitted as
exhibits to Mr. Isler’s Declaration. Significantly,
however, the second "S" is not omitted from the word
MATTRESS in the telephone number depicted in the new mark
1-888-M-A-T-R-E-S-S, a fact reflected and reinforced by
that mark’s omission of the wording LEAVE OFF THE LAST S
THAT’S THE S FOR SAVINGS.
Thus, even if purchasers might understand that both of
these marks are owned and used by applicant, they
nonetheless would perceive them as two separate marks, not
“the same mark,” as required by Trademark Rule 2.41(b).
Likewise, we find that applicant’s registered mark
(AREA CODE) M-A-T-T-R-E-S is not the legal equivalent of
the mark 1-888-M-A-T-R-E-S-S. Again, this registered mark
omits the second "S" from the word MATTRESS. This is in
keeping with the fact that a consistent and dominant
feature of applicant's advertising campaign is the
invitation to purchasers to "Leave The Last 'S' Off For
Savings." Applicant's new mark 1-888-M-A-T-R-E-S-S,
Ser. No. 75/131,355
26
significantly, does not omit the second "S" from the word
MATTRESS, and for that reason it is readily distinguishable
from the (AREA CODE) M-A-T-T-R-E-S mark. Even if
purchasers might understand that the 1-888-M-A-T-R-E-S-S
mark and the registered mark (AREA CODE) M-A-T-T-R-E-S are
owned and used by a single source, i.e., applicant, we find
that they nonetheless would perceive the marks as two
distinct marks, rather than “the same mark.”17
In short, we find that applicant's 1-888-M-A-T-R-E-S-S
mark is not "the same mark" as any of the marks previously
registered by applicant. Accordingly, we agree with the
Trademark Examining Attorney that applicant’s prior
registrations are not sufficient, in themselves, to make
out a prima facie showing of acquired distinctiveness which
would entitle applicant to register its 1-888-M-A-T-R-E-S-S
mark pursuant to Trademark Act Section 2(f).
We therefore must consider whether applicant’s
additional evidence in support of its claim of acquired
distinctiveness, i.e., the Declaration of Robert Isler,

17 Additionally, we note that the mark (AREA CODE) M-A-T-T-R-E-S
is a “phantom” mark in which the “(AREA CODE)” designation in the
mark is said to represent the use of any and all area codes. The
probative value of this registration as evidence of the acquired
distinctiveness of the particular mark at issue in this case
certainly has not been enhanced by the Federal Circuit's recent
holding that such "phantom" marks are not registrable. See In re
International Flavors & Fragrances Inc., ___ F.3d ___, 51 USPQ2d
1513 (Fed. Cir. 1999), aff’g 47 USPQ2d 1314 (TTAB 1998).
Ser. No. 75/131,355
27
when combined with applicant’s ownership of its prior
registrations, is sufficient to establish acquired
distinctiveness and to warrant registration under Section
2(f). We find that it is not.
To the extent that applicant is relying on Mr. Isler’s
averments regarding applicant’s use and advertising of its
other marks as evidence of the acquired distinctiveness of
the present mark, applicant's reliance is misplaced. As
discussed above, because the mark involved herein is not
the same mark as those other marks, any acquired
distinctiveness which may have been attained by those other
marks is not transferable to the present mark.
Mr. Isler states in his declaration that applicant has
made available to its customers the toll-free number which
comprises the mark, i.e., 1-888-MATRESS, along with two
other toll-free numbers, i.e., 1-800-MATRESS and 1-888-
MATTRES; that applicant has received one million telephone
calls on these three telephone lines in the sixteen months
following July 1996; and that, "upon information and
belief, virtually all the customers who use these lines
understand that the numbers they have dialed . . . are
owned by and/or identified with a particular source,
namely, the applicant herein, Dial A Mattress. In dialing

Ser. No. 75/131,355
28
these numbers, the callers intend to reach DIAL A
MATTRESS."
Mr. Isler’s statements are of limited probative and
persuasive value in determining whether 1-888-M-A-T-R-E-S-S
has acquired distinctiveness as a service mark (or that it
will have acquired distinctiveness upon its use in
commerce). Mr. Isler does not state how many of the above-
referenced one million calls were received over the
telephone number at issue in this case, as opposed to the
other two telephone numbers. Moreover, it appears that the
telephone calls applicant received over the 1-888-MATRESS
line were from persons who were intending to dial
applicant's other, primary mnemonic telephone number, i.e.,
(AREA CODE) M-A-T-T-R-E-S, but who "are unfamiliar with the
correct spelling of the word ‘MATTRESS,’ or they misdial
the number." Although this may be evidence that purchasers
may misspell the word "mattress" and may misdial
applicant's primary mnemonic telephone number, it is not
persuasive evidence that purchasers perceive the
designation 1-888-M-A-T-R-E-S-S, per se, as applicant's
service mark.
More fundamentally, however, it is not determinative
that customers may understand that the telephone number
they have dialed, 1-888-MATRESS, is "owned by and/or
Ser. No. 75/131,355
29
identified with a particular source, namely, the applicant
herein, Dial A Mattress," and that by dialing that number,
customers "intend to reach" applicant. The same would be
true for any telephone number. When a person dials a
telephone number, he or she is assuming that that telephone
number is "identified with" a particular person or
business, and is intending to reach that person or
business. Contrary to applicant’s apparent belief, those
assumptions on the part of the caller are not evidence that
the caller regards the telephone number being called as the
service mark of the person or business being called.
In short, if we assume, contrary to our finding in
this case, that 1-888-M-A-T-R-E-S-S is not generic as
applied to applicant’s services, it nonetheless clearly is
highly descriptive of the services. Accordingly, a higher
quantum and quality of evidence is required in order to
find that the mark has acquired distinctiveness. See Yamaha
International v. Hoshino Gakki, supra. We have considered
all of applicant’s evidence of acquired distinctiveness,
and find that it is insufficient to establish that
registration under Section 2(f) is warranted.
In summary, after careful consideration of the
relevant authorities and the evidence and arguments
submitted by applicant, we find that the matter applicant
Ser. No. 75/131,355
30
seeks to register, i.e., 1-888-M-A-T-R-E-S-S, is merely
descriptive of, and generic for, the services recited in
the application. Moreover, assuming that the matter is not
generic, we find that applicant has failed to submit
sufficient evidence of acquired distinctiveness to warrant
registration pursuant to Trademark Act Section 2(f).
Decision: The refusals to register are affirmed.
R. L. Simms
P. T. Hairston
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board