Condoms may be key to ‘.sucks’ trademark success, lawyers claim
Lawyers have claimed that the registry managing the .sucks domain may be able to rely on its “aggressive” marketing and handing out of branded condoms to help it get trademark protection for the suffix.
Yesterday, WIPR reported that Vox Populi has applied to register the controversial new string at the US Patent and Trademark Office (USPTO).
Vox Populi’s application, filed on July 22, is intended to cover services for domain registrations and registry operation.
The USPTO’s rules state that: “A mark composed solely of a generic top-level domain (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.”
But the USPTO adds that such applicants may, in some circumstances, avoid or overcome the refusal of their application by providing evidence that the mark will be perceived as a source identifier.
Similar applications for new gTLDs have not found much success at the USPTO in the last couple of years. The office has rejected applications for .luxury, .art and .wedding, which lawyers said could hinder Vox Populi’s application.
Sally Abel, partner at law firm Fenwick & West, said the application “merely describes the subject ... of the domain space”, which means that the USPTO is likely to reject it.
But, she said: “If any gTLD is positioned to overcome the USPTO’s rarely-rebuttable presumption that a gTLD is not a source identifier, .sucks is that gTLD.
“From boisterously handing out .sucks branded condoms at the recent International Trademark Association (INTA) meeting in San Diego to otherwise generally wreaking havoc in the trademark community, Vox Populi has made quite a splash with .sucks,” she added.
Catherine Holland, partner at law firm Knobbe Martens, added that it will be “interesting” to follow the application.
The USPTO’s rules “puts a significant onus on the applicant to prove that its mark will be perceived as a source identifier rather than as a web address,” Holland said.
Holland also pointed to the “aggressive” promotion of the gTLD by Vox Populi at the INTA conference, held in May this year.
“They have certainly placed all of their eggs in one basket, as they have limited their application to the core business of domain name registration services and domain registry operator services.
“If they had included some of the promotional items that they have also distributed, such as T-shirts and condoms to promote domain name registry services, they would have increased the likelihood that a registration will issue for at least some goods,” she added.
“Of course, they would have to be distributing T-shirts and condoms in the ordinary course of their business,” she continued. “Given their pugnacious position with respect to the trademark community, however, the distribution of such items may be part of their long-term game plan.”
John Berard, chief executive of Vox Populi, told WIPR that the application was a “prudent and normal action for any company investing in a brand” to take.
