4 February 2022Trademarks

Fed Circuit rejects domain registry’s .sucks appeal

The US Court of Appeals for the Federal Circuit has dismissed Vox Populi Registry’s bid to register its stylised ‘.sucks’ as a trademark.

On Wednesday, February 2, the Federal Circuit upheld the US Trademark Trial and Appeal Board’s (TTAB) 2020 rejection of the ‘.sucks’ trademark, described as a “‘retro,’ pixelated font that resembles how letters were displayed on early LED screens”.

Vox, the domain registry operator for the .sucks generic top-level domain (gTLD), had sought to register the trademark in class 42 for “domain registry operator services related to the gTLD in the mark”.

In addition to its US trademark application serial number 87/187,215 for a stylised version of .sucks, Vox had also sought to register that standard character mark ‘.sucks’ in classes 42 and 45 under trademark application serial number 86/700,941.

The examining attorney had refused both trademark applications “on the ground that, when used in connection with the identified services, each fails to function as a mark”.

Vox appealed against these refusals to the TTAB, but the board rejected both trademarks. On the ’941 application, the board held that the standard character mark .sucks “will not be perceived as a source identifier” and instead “will be perceived merely as one of many gTLDs that are used in domain names”.

The board incorporated this same reasoning on the ‘215 application, but also found that “the stylised 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”.

Again, Vox appealed, but only against the ‘215 refusal. Earlier this week, the Federal Circuit affirmed the trademark registration refusal.

According to the Federal Circuit, even though Vox didn’t appeal the rejection of the standard character mark .sucks in the ‘941 application, the registry did spend much of its opening brief arguing that “even if . . . we disregard the distinctive design elements in the [stylised form of .SUCKS], . . . the evidence of record establishes that the mark still functions as a service mark and is entitled to registration.”

“To the extent that the board’s factual findings with respect to the standard character mark .sucks are at issue, we review them for substantial evidence,” said the court, before finding that there was substantial evidence supporting the TTAB’s finding that consumers will view the mark as only a non-source identifying part of a domain name, rather than a trademark.

Circuit Judge Timothy Dyk, on behalf of the Federal Circuit, said: “We cannot conclude that the board’s weighing of the evidence was unreasonable. Where the board has reasonably weighed the evidence, it is not the role of this court to reweigh evidence to reach a different conclusion, and we do not do so here.”

Turning to the ‘215 trademark, the court concluded that the stylised design did not make the stylised form of .sucks registrable.

“We see no error in the board’s determination that the stylised form of .sucks fails to create a separate commercial impression. The board noted that in the stylised 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,” said Dyk.

The TTAB’s decision rejecting the ‘215 application was affirmed.

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