TTAB Rules .SUCKS Domain Does Not Serve as a Trademark
The company behind .SUCKS websites cannot register that term as a trademark, per a precedential ruling of the Trademark Trial & Appeal Board...
TTAB Rules .SUCKS Domain Does Not Serve as a Trademark
<strong>The company behind .SUCKS websites cannot register that term as a trademark, per a precedential ruling of the Trademark Trial & Appeal Board.</strong>..
The company behind .SUCKS websites cannot register that term as a trademark, per a precedential ruling of the Trademark Trial & Appeal Board.
"We find that .SUCKS, as used by applicant and applied for in standard characters, will not be perceived as a source identifier," Judge Thomas W. Wellington wrote on behalf of the Board. "Rather, the entirety of the evidence leads us to conclude that .SUCKS, when viewed in the context of domain registry and registrar services, will be perceived merely as one of many gTLDs that are used in domain names."
Generic Top Level Domains (gTLDs) serve as components of Internet addresses. While .com, ,org, and ,net are arguably the most well-known gTLD’s, many others have emerged since the Internet Corporation for Assigned Names and Numbers (ICANN) authorized a program to introduce numerous new gTLDs in 2011. By way of a 2014 Registry Agreement between ICANN and Applicant’s predecessor-in-interest, and a subsequent assignment, Vox Populi Registry Ltd. (Vox Populi or Applicant) is the designated “Registry Operator” for the generic string gTLD “.Sucks,” subject to the terms and conditions of the Registry Agreement.
In response to the proliferation of new gTLDs, the U.S. Patent and Trademark Office’s (USPTO) Trademark Manual of Examining Procedure (TMEP) addresses applications for marks composed entirely of gTLDs for domain name registry operator and domain name registration services. It states:
A mark composed solely of a gTLD for domain-name registry operator or registrar services fails to function as a trademark because consumers are predisposed to view gTLDs as merely a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services. Therefore, registration of such marks must initially be refused ... on the ground that the gTLD would not be perceived as a mark.
Nonetheless, the TMEP acknowledges that, “in some circumstances, a gTLD may have source-indicating significance.” The guidance provides in relevant part that:
[T]he applicant may, in some circumstances, avoid or overcome the refusal by providing evidence that the mark will be perceived as a source identifier. In addition, the applicant must show that: (1) it has entered into a currently valid Registry Agreement with the Internet Corporation for Assigned Names and Numbers (“ICANN”) designating the applicant as the Registry Operator for the gTLD identified by the mark and (2) the identified services will be primarily for the benefit of others.
Vox Populi filed an application seeking trademark registration of the standard character mark .SUCKS for domain registry operator services related to the gTLD in the mark. The Trademark Examining Attorney refused registration on the ground that, when used in connection with the identified services, .SUCKS fails to function as a mark.
In support of the decision, the Examining Attorney maintained that “because a gTLD serves an inherent purpose as part of the address at which websites are located, it does not create in the minds of users an immediate recognizable ‘device’ to indicate the source of the domain registry operator and domain registration services.” The Examining Attorney further noted that consumers of Applicant’s services are those “seeking to register domain names containing the gTLD .SUCKS and registrars providing registration of domain names containing the gTLD .SUCKS, which ensures [consumers] would perceive .SUCKS as a gTLD.”
In response, Vox Populi argued that it uses .SUCKS as a source-identifier and that it is perceived as such by its customers. The company further contended that it heavily promotes .SUCKS, stating that it “spent approximately $200,000 on the promotion of its mark in the United States in 2015, and will have spent 1,500,000 ... in 2016.”
While TTAB acknowledged that Vox Populi is the valid Registry Operator for the gTLD .SUCKS, it ultimately denied trademark registration after concluding it is not perceived as a source identifier. “We find the record ultimately demonstrates that consumers perceive .SUCKS as a gTLD and not as a source identifier for Applicant’s services described in the application – namely, domain name registry operator services and domain name registration services that feature or relate to the aforementioned gTLD,” the Board wrote.
With regard to the specimen of use and other printouts from Applicant’s website, TTAB concluded that consumers viewing the website will be aware that .SUCKS is a gTLD and that domain names will be registered and maintained via Applicant’s domain registry operator and registrar services. “In short, as the Registry Operator services, .SUCKS is more akin to Applicant’s product, not its brand,” Judge Wellington wrote.
TTAB also concluded that Vox Populi’s examples of the various ways the gTLD can be used by others, such as using the gTLD for purposes such as “cause marketing (e.g., cancer sucks),” actually weigh in favor of denying trademark protection. Further, “Third-party use of the gTLD reduces any distinctiveness of the term and detracts from it pointing uniquely to applicant as a single source," Judge Wellington wrote. "In other words, because consumers will possibly be directed to other sources that could include third-party trademarks in conjunction with the domain name, this may undermine the ability of the gTLD to serve as a single source identifier.”
The TTAB’s decision highlights that the central question when seeking to register a trademark, particularly one involving a gTLD, is whether the mark is perceived by consumers as a source indicator for the applicant’s goods or services. The ruling also shows that spending millions of dollars toward marketing a product does not always yield a registrable trademark.
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If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.
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About Author David A. Einhorn
David Einhorn, Chair of the firm’s Technology Law practice group, handles diverse matters in intellectual property and technology areas. He has obtained successes in many prominent and precedent-setting cases in the fields of patent infringement, trademark infringement, copyright infringement, cybersquatting, trade name misappropriation and insurance coverage.
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