Tuesday, November 03, 2020

Precedential No. 37: ".SUCKS" gTLD Fails to Function as Service Mark, Says TTAB

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., 2020 USPQ2d 11289 (TTAB 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:

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

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.”

[T]he applicant may, in some circumstances, avoid or overcome the refusal [on the ground of failure-to-function] 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.

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."

As the Board recently explained in AC Webconnecting, consumers are “highly conditioned” to view a gTLD as signifying its function as a portion of an Internet domain name, and due to this consumer predisposition and the fact that “gTLDs are intended to be used by multiple, often numerous, parties as part of their own domain names,” a gTLD proposed for registration as a mark for services involving registration of domain names in the specified gTLD typically will not be perceived as a source indicator.

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.

[T]he 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. We acknowledge Applicant’s attempts to use .SUCKS in a manner that source-identifying marks are used; however, the evidence shows that consumers will view it as only a non-source identifying part of a domain name, rather than as a mark.

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.

With respect to the pixelated design, or any “retro” suggestion, of Applicant’s mark, it does not create a sufficiently distinct commercial impression separate from the non-source-identifying element, .SUCKS. While the pixelated design may be antiquated since it was once “mandated by technological limitations,” given the ubiquity of the design in the “early days” of computing, consumers would view pixelated lettering as ordinary.

And so the Board affirmed both refusals

Read comments and post your comment here.

TTABlogger comment:Another gTLD bites the dust. What is the reason for trying to register a gTLD as a trademark? So that someone else can't take over the contract?

Text Copyright John L. Welch 2020.


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