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Name and title: Michael Stern, vice president and general counsel. Stern is also a member of the management and finance committees. Age: 67 Mattress King: Based in Long Island City, N.Y., Dial-A-Mattress Operating Corp. has carved out an annual $100 million niche in the $7 billion a year U.S. mattress market. It sells mattresses and related products by phone, over the Internet and through 41 retail outlets. Employing “certified bedding consultants” to sell major brand names, a private-label brand, headboards and a selection of futons, Dial-A-Mattress guarantees speedy delivery with savings of up to 60% on department store prices. It boasts that “people in Chicago called both a Chinese restaurant and our 1-800 number and the mattress arrived before the food did!” Trademark travails: Dial-A-Mattress is knee-deep in incidents where rivals have allegedly used telephone numbers, misspelled names and domain variations to misdirect Dial-A-Mattress’ inquiries, sometimes forcing the company to reacquire the rights to its trademarks. Combating this “squatting,” said Stern, is especially critical for his firm in that “as much as 20% to 25% of our business” is from misdialed numbers by customers who intend to reach it but mistakenly dial a variation of its main numbers, 1-800- and 1-888-MATTRES. Dial-A-Mattress, the first in the industry to offer a toll-free phone number, has many similar telephone numbers, all feeding into its call center, to corral such buyers. Defending against cybersquatters, Stern added, is also vital, as “our Web site is becoming more and more active and we’re doing more and more of a percentage of our business on it.” Several lawsuits have evolved from competitors’ assaults on Dial-A-Mattress’ primary number and service mark. In Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675 (2d Cir. 1989), the court ruled that even though such letters spell a generic term, the company should still be protected against “confusingly similar usage by another.” Deciding an issue of first impression, the U.S. Court of Appeals for the Federal Circuit in In re Dial-A-Mattress Operating Corp., 240 F.3d 1341 (Fed. Cir. 2001), overturned a decision by the U.S. Patent and Trademark Office’s Trial and Appeal Board, concluding that they had wrongly found 1-888-MATRESS to be unprotectable on the ground that it is merely a descriptive and generic mnemonic word. The court allowed Dial-A-Mattress to register 1-888-MATRESS as a service mark, ruling that the number had acquired distinctiveness or “secondary meaning.” Stern represented his company in this case, along with intellectual property specialists Arthur L. Plevy and Susan Okin Goldsmith. Web poaching: Dial-A-Mattress’ paramount Web site, www.mattress.com, is also poached by competitors, Stern said. “We fight back,” he said. “As we discover them, we try to police the situation and stop them. This sometimes can be done with WIPO, which has been successful in a couple of situations, but others might require litigation.” WIPO is the World Intellectual Property Organization. One such case saw Stern and the Philadelphia firm Duane Morris litigating in federal court against respondents operating in Hong Kong. In Dial-A-Mattress Operating Corp. v. Noname.com Inc., a WIPO arbitrator denied a claim by a Fremont, Calif., company that its use of mattres.com was in good faith, ruling that it was using the domain name as an attention-getting device to improperly divert business from Dial-A-Mattress, the rightful holder of the rights. It had wrongfully registered the name on a site that provided links to other retailers. A dispute over the ownership of emattress.com was at the crux of a prolonged battle against franchise owner Adam Kidan, who, ultimately lost, filed for Chapter 11 bankruptcy and ceded the Washington/Maryland territory back to Dial-A-Mattress. A true generalist: Stern’s job gives him “pretty good exposure to a broad spectrum of issues, so he’s become a true generalist,” he said. In addition to his work in the aforementioned cases, he interacts with consumer protection groups, the Better Business Bureau, the attorney general’s office and fraud investigators when there are customer complaints, “but these are very few and far between,” he points out. Dial-A-Mattress is not involved in major mergers and acquisitions activity, but the GC has participated in deals to acquire a couple of small retail bedding chains. He is responsible as well for working out distribution and delivery agreements with trucking companies. He also reviews telemarketers’ scripts, although his firm is unaffected by restrictions spawned by the newly enacted Do Not Call List, since its telemarketing is initiated by its customers and thus is considered inbound-only. Stern reports directly to firm founder and sole owner Napoleon Barragan, who, inspired by the success of Dial-A-Steak, dreamed up the Dial-A-Mattress concept. Legal department: Stern and Mara Romano, “an experienced practitioner,” constitute Dial-A-Mattress’ legal staff. “I delegate the work load as I see fit and as availability permits.” Most work is done in-house and “we’ve been successful in keeping down our legal costs, but there are times when it is necessary to go outside.” New York’s Kaufman Feiner handles his company’s franchising, filings and agreements. Stern also used Buchanan Ingersoll of Pittsburgh, but since its counsel, Arthur Plevy, moved to the Princeton, N.J., office of Duane Morris, he now uses that firm. Route to the top: The Boston-born Stern graduated from Brown University in 1957 and then served as a U.S. Navy officer. Returning to civilian life, he attended Boston College Law School and subsequently engaged in private practice with the firms Stember & Blodnick and Breskin and Stern in Mt. Vernon, N.Y. After “doing a lot of work in the real estate development field,” he joined Dial-A-Mattress in 1993 as general counsel. The firm’s involvement in retailing was a change for him, Stern admits, but his extensive real estate experience is useful in his current job, as it involves “a lot of real estate activity with stores, warehouses and the home office.” Family: Stern and his wife, Joanne, have two grown sons: Jeffrey, 37, and Richard, almost 36. Last book and movie: Leadership, by Rudolph Giuliani and Ken Kurson, and The Hours.

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