CAFC Affirms TTAB: ".SUCKS" (Stylized) Fails to Function as a Source Indicator for Domain Registry Operator Services
In October 2020, the TTAB upheld failure-to-function refusals of the term .SUCKS in standard character and in stylized form (shown below), for domain registry services related to the gTLD in the proposed mark. [TTABlogged here]. Applicant Vox Populi appealed to the CAFC only with respect to the refusal of the stylized version of the mark, arguing that the stylization makes the proposed mark registrable. The court, however, found no error in the Board's conclusion that the stylized form of .SUCKS fails to create a commercial impression separate from the unregistrable term .SUCKS. In re Vox Populi Registry Ltd., 2022 USPQ2d 115 (Fed. Cir. 2022) [precedential (Opinion by Judge Timothy B. Dyk).
Vox Populi did not appeal from the Board's ruling that the standard character mark .SUCKS "will not be perceived as a source indicator," but instead "will be perceived merely as one of many gTLDs that are used in domain names." Vox did challenge the ruling regarding its "'retro,' pixelated font mark. The Board found that "the stylized lettering or design element in the mark does not create a separate commercial impression and is not sufficiently distinctive to 'carry' the overall mark into registrability."
The court noted that it has had "limited occasion" to address the failure-to-function issue. However, TTAB cases "provide helpful additional detail on source identifiers." The Board focuses on consumer perception and looks to the specimens of use and marketplace evidence to determine how a particular designation would be perceived by relevant consumers. Certain categories of proposed marks fail to function as source identifiers: e.g., informational messages or general information about the goods or services.
Although it did not appeal from the refusal of the standard character mark, Vox raised the issue of distinctiveness of .SUCKS in its opening brief. The court, however, found that substantial evidence supported the Board's finding that "consumers will view the standard character mark .SUCKS as only a non-source identifying part of a domain name, rather than as a mark."
The question, then, was whether the stylization of the stylized form rendered that mark registrable.The court observed that this issue requires a subjective determination "based on a viewer's first impression." The court cited several well known TTAB decisions as examples (stylized versions of CONSTRUCT-A-CLOSET (registrable), JACKSON HOLE (registrable), BUNDT (unregistrable), and SADORU (unregistrable), and then concluded that the Board did not err in ruling that the stylized form of .SUCKS fails to create a separate commercial impression.
The Board noted that in the stylized form of .SUCKS, “[a]ll of the characters in the applicant’s mark are the same height and width and are merely displayed in a font style that was once mandated by the technological limitations of computer screens.”(quoting the examining attorney).
And so, the CAFC affirmed the Board's decision. It noted that Vox did not make a claim of acquired distinctiveness, and the .SUCKS stylized version may be registrable "if it can be shown that the particular display which the applicant has adopted has acquired distinctiveness." Cordua, 823 F.3d at 606 (quoting Sadoru, 105 U.S.P.Q.2d (BL) at 1486).
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TTABlogger comment: I think the stylized version is inherently distinctive and should be registrable with a disclaimer of .SUCKS. What do you think?
Text Copyright John L. Welch 2022.
posted by John L. Welch @ 2/03/2022
6 comments
6 Comments:
I agree 100%!
In answer to your question, if a proposed mark does not in fact function as a mark, and is therefore unregistrable for that reason, then, logically, it is not registrable with a disclaimer.
Then the CAFC misspoke when it said the .SUCKS stylized version may be registrable "if it can be shown that the particular display which the applicant has adopted has acquired distinctiveness."
In my opinion, the CAFC got it right when it indicated the mark would be registrable upon a showing of acquired distinctiveness. If the applied-for term has acquired distinctiveness -- i.e., in point of fact, consumers do view it as a trademark -- then it necessarily follows that the term functions as a trademark. It makes no sense to say that a term shown to be functioning as a source indicator is not functioning as a trademark. Board precedent indicating that a failure-to-function refusal cannot be overcome via 2(f) is wrong.
In answer to your comment above, yes, I think the Court did misspeak in the last footnote. Neither a "generic mark" (the Court's words) nor matter which does not function as a mark should be registrable even if it is displayed in a stylized way. If the generic word BICYCLE (for bicycles) is displayed in a stylized way or if the phrase "I LOVE D.C." is displayed in a stylized way on T-shirts, I don't think they should be registered even with a disclaimer. I don't know if the law supports that position but I think, for public policy reasons, this kind of matter (generic and matter that does not function as a mark) should not be registered. We don't want anyone using the registration symbol next to a stylized display of BICYCLE on bicycles or a stylized display of "I LOVE D.C." on T-shirts. Neither generic matter nor matter that does not function as a mark should be registered regardless of the manner of display. Let owners come up with better marks than that. In fact, the Court in the footnote in question seems to be saying that a "generic mark" would not be registrable even with a stylized display that has become distinctive.
I'm not unsympathetic to your point, but that's not the way the law is. See, e.g., the CONSUMER PROTECTION FIRM case from the TTAB: generic term in stylized form registrable on Supplemental Register with disclaimer:
https://thettablog.blogspot.com/2021/03/precedential-no-4-ttab-deems-consumer.html
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