United States:
CAFC Affirms TTAB: “.SUCKS” (Stylized) Fails To Function As A Source Indicator For Domain Registry Operator Services
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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 only 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., Appeal No. 2021-1496 (Fed. Cir.
February 2, 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
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.
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).
Read comments and post your comment here.
TTABlogger comment: I think the stylized
version is inherently distinctive and should be registrable with a
disclaimer of .SUCKS. What do you think?
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