CAFC asserts that TTAB: “.SUCKS” (stylized) does not function as a source indicator for domain registry operator services – Intellectual Property

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United States: CAFC asserts that TTAB: “.SUCKS” (stylized) does not function as a source indicator for domain registry operator services

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In October 2020, the TTAB confirmed the refusals for non-functioning of the term .SUCK in standard characters and in stylized form (see below), for gTLD-related domain registry services in the proposed mark. [TTABlogged here]. The applicant Vox Populi only appealed the refusal of the stylized version of the mark, arguing that the stylization makes the proposed mark registrable. However, the court found no error in the Board’s conclusion that the stylized form of .SUCKS fails to create a distinct commercial impression of the unregisterable term .SUCKS. In re Vox Populi Registry Ltd.Appeal No. 2021-1496 (Fed. Cir. February 2, 2022) [precedential (Opinion by Judge Timothy B.
Dyk).

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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
loos 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. 

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The Board noted that in the stylized form of .SUCKS, “[a]All of the characters in Plaintiff’s mark are the same height and width and are simply displayed in a typeface style that was once dictated by the technological limitations of computer screens.” (quoting Examining Counsel).

Thus, the CAFC upheld the Board’s decision. He noted that Vox did not claim acquired distinctiveness and that the stylized .SUCKS version may be registrable “if it can be shown that the particular display that the applicant has adopted has acquired distinctiveness”. Cordoba823 F.3d at 606 (citing Sadoru105 USPQ2d (BL) at 1486).

Read comments and post your comment here.

Comment from TTABlogger: I think the styled version is inherently distinctive and should be registrable with a .SUCKS disclaimer. What do you think?

The TTABlog

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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