In yet another failure-to-function ruling, the Board affirmed refusals to register the term .SUCKS in the stylized form shown below, as a service mark for "Domain registry operator services related to the gTLD in the mark, in International Class 42," and the standard character mark .SUCKS for those same services and for "Domain name registration services featuring the gTLD in the mark; registration of domain names for identification of users on a global computer network featuring the gTLD in the mark, in International Class 45." Despite applicant's attempts to use .SUCKS in the manner of a source-identifier, "the evidence shows that consumers will view it as only a non-source identifying part of a domain name, rather than as a mark." In re Vox Populi Registry Ltd., Serial Nos. 86700941 and 87187215 (October 29, 2020) [precedential] (Opinion by Judge Thomas W. Wellington).
There was no dispute that .SUCKS is a generic top level domain
(gTLD). By way of a 2014 Registry Agreement between ICANN and
Applicant's predecessor-in-interest, and a subsequent
assignment, Applicant is the designated "Registry
Operator" for the generic string gTLD ".Sucks."
Section 1215.02(d) of the TMEP provides guidance as to the
examination of applications for marks composed entirely of gTLDs
for domain name registry operator and domain name registration (or
"registrar") services:
The TMEP recognizes that, because ICANN allowed the creation of
new gTLDs based on existing brand names, "in some
circumstances, a gTLD may have source-indicating
significance."
Here, in both appeals, Examining Attorney Kim Teresa Moninghoff
conceded that a current, valid agreement exists showing that ICANN
has designated Applicant as the Registry Operator for the gTLD
.SUCKS, and that Applicant's recited services will be for the
benefit of others. Applicant does not own a prior trademark
registration for .SUCKS; a prior registration would have been
relevant evidence, though not conclusive, as to whether consumers
would view the term as a source indicator. See AC
Webconnecting, 2020 USPQ2d 11048, at *3.
Applicant's services involve offering to register domain
names ending with the gTLD .SUCKS, and Applicant will be acting as
the registry operator, maintaining the database, for all domain
names that end with the gTLD ".SUCKS."
Applicant displays the term .SUCKS prominently on its website, in a
position where trademarks often appear, and it claimed to have made
substantial sums in advertising and promotion under the
"brand." However, applicant's specimens of use make
clear that its domain registry operator and registrar services
relate specifically to Internet addresses that will have the gTLD
.SUCKS. Suggested third-party uses such as "cancer.sucks"
would "reduce[] any possibility that consumers will view
Applicant's use of the gTLD as a
source-identifier."
Three third-party declarations submitted by applicant, from
individuals with a stake in the success of applicant's
services, ran counter to the evidence as to how others involved in
selling .SUCKS domain name use the term .SUCKS: as merely one
possible gTLD in connection with available second level domains.
Articles submitted by the Examining Attorney referred to .SUCKS
only as a gTLD.
Turning to the stylized version of the proposed mark, the Board
noted that "[w]here an element of a mark is held
unregistrable, as is the case here with .SUCKS, a design or
stylization may render the overall mark registrable if it creates
an impression on purchasers separate and apart from the impression
made by the unregistrable term itself."
Applicant referred to the stylization of the proposed mark as
"a 'retro' pixelated font that resembles how letters
were displayed on early CRT computer screens." Pointing to
prior Board decisions involving the stylized marks
CONSTRUCT-A-CLOSET and JACKSON HOLE, applicant asserted that its
stylization "unmistakably sets the subject mark apart from
marks composed solely of a gTLD." The Board disagreed.
And so the Board affirmed both refusals
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Originally Published By Wolf Greenfield, November 2020
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