Mattress Firm wins trademark case over ex-partner

Tempur Sealy had said retailer violated their advertising deal

A federal judge this week put to bed a trademark dispute between Mattress Firm and Tempur Sealy International, the latest development in a bitter divorce between the former business partners.

U.S. District Judge Gray Miller on Monday granted a summary judgment to Mattress Firm, which has been closing out its inventory of Tempur-Pedic and Sealy mattresses after the Lexington, Ky.-based manufacturer severed a decadelong partnership with the Houston-based retailer last year.

Tempur Sealy then sued Mattress Firm, arguing the retailer violated a transitional agreement by selling, marketing and advertising Tempur-Pedic and Sealy mattresses after it was forced to stop selling the brands in April 2017.

A Mattress Firm spokeswoman said the company stopped advertising Tempur-Pedic mattresses in early May, removing all exterior signage and nearly 60,000 interior signs from its 3,500 stores nationwide. The retailer, in a filing, countered it has the right to use Tempur-Pedic and Sealy trademarks to advertise the remainder of its inventory.

“What Tempur Sealy claimed that our transitional agreement was an agreement by us to never utter their name again in any type of advertising whatsoever,” said Mattress Firm’s lawyer, John B. Thomas of Hicks Thomas. “They wanted to prohibit us from mentioning Tempur-Pedic in any way whatsoever in advertising and comparative advertising.”

Miller rejected Tempur-Pedic’s interpretation of the agreement, calling it unreasonable.

The judge argued in his ruling that Mattress Firm cannot use Tempur Sealy’s intellectual property since it is no longer an authorized retailer of the manufacturer’s products. However, Mattress Firm can still refer to Tempur Sealy brands and products like

any other competitor, Miller wrote.

“The court cannot foresee a situation in which Mattress Firm could hold itself out as a Tempur Sealy retailer without using, in some manner, a Tempur-Sealy mark or name,” Miller wrote.

Thomas, the attorney, commended the decision.

A Tempur Sealy spokesman declined comment, saying the company does not talk about matters in litigation.

Prior to the trademark lawsuit, Mattress Firm had already sued Tempur Sealy in state District Court in Houston for $50 million over claims that Tempur Sealy intentionally slowed down mattress shipments to Mattress Firm stores. That case is still pending.

The lawsuits began just months after Tempur Sealy dropped Mattress Firm in January 2017. Mattress Firm — under the new ownership of South African conglomerate Steinhoff International Holdings — surprised Tempur Sealy with a contract proposal that included significant economic concessions. The manufacturer balked, and terminated the contract.

It was an unexpected separation. Mattress Firm had historically carried Sealy mattresses. Tempur-Pedic, which acquired Sealy in 2013, had supplied mattresses to the chain for more than a decade.

Mattress Firm, the nation’s largest mattress retailer, is now in a five-year partnership with Serta Simmons, the nation’s largest mattress maker. The companies are developing new product lines and are jointly investing $100 million in marketing.