That Sucks! Otherwise Generic gTLD Still Non-Registrable Because Not Attached with Preceding Domain Name

1st amendment distinctiveness failure to function genericism trademark
Applicant’s proposed stylized mark with pixelation

On February 2, 2022, the Court of Appeals for the Federal Circuit affirmed in In re Vox Populi Registry Ltd.,[1] the decision of the USPTO’s Trademark Trial and Appeal Board (TTAB) refusing registration to .SUCKS as a service mark for Vox’s domain name registry services. However, the Fed Circuit agreed with the TTAB in that merely a generic top-level domain (gTLD) without a preceding domain name does not give it acquired distinctiveness to warrant secondary meaning and therefore registrable as a service mark. Further, the .SUCKS mark was being used as a good, i.e., the gTLD itself is a product, rather than sourcing of that service. In other words, the .SUCKS mark failed to function as a source identifier of services. This was supported by evidence presented in the TTAB case that Vox charged domain name registrants $2,500 wishing to buy a .SUCKS gTLD. Finally, mere stylization of an otherwise unregistrable generic mark does not give it enough creative features to create an impression in a consumer’s mind separate from the mark by itself and therefore to warrant registration.

This case implicates several legal issues.

First, this case is distinguishable from the recent USPTO v. B.V.,[2] case decided by the U.S. Supreme Court in 2020. Our blog fully discussed the case in an earlier post. The BOOKING.COM mark was used simultaneously as a domain name and a service mark, which changed an otherwise generic mark into one with acquired distinctiveness to qualify for registration. On the other hand, .SUCKS is just merely a gTLD without any attached domain name and nothing changes it from being a generic mark that is otherwise unregistrable under the Lanham Act.

Second, a gTLD could be a source of commentary or criticism, à la Tam[3] or Brunetti,[4] but the use of .SUCKS was not being used in a First Amendment context. Our discussions on the blog of the Tam case is here and of Brunetti is here. Rather, Vox used .SUCKS as a commercial product itself, rather than commenting on a particular issue, e.g., MIAMI SUCKSTM, published for opposition on November 30, 2021, in International Class 25 for various clothing items, or #MOVINGSUCKS®, registrered on September 22, 2020, in International Class 36, for real estate services. Both of these two marks provided sufficient commentary or criticism on their respective subject matters, i.e., the city of Miami or relocating home residences. However, Vox was not using .SUCKS for First Amendment purposes but rather for a potentially highly commercial product.

Third, the appeal to the Fed Circuit itself did not implicate any res judicata, collateral estoppel or doctrine of administrative preclusion issues because the substance of the TTAB’s finding was affirmed. Normally, decisions on patent or trademark applications rendered by the USPTO are deemed final decisions and given deference in a subsequent court action. As mentioned, the procedural aspects did not need to be addressed since the underlying substantive trademark registration issues were not in error. Our further discussion on the blog of trademarks in a post-Tam and Brunetti era is here.

For any questions on trademark registration, please contact Yonaxis I.P. Law Group.

[1] ___F.4th___ (Fed. Cir. 2022), aff’g In re Vox Populi Registry Ltd., Ser. Nos. 86700941 & 87187215 (T.T.A.B. Oct. 29, 2020).

[2] 591 U.S.___ (2020) (slip op.), aff’g B.V. v. USPTO, 915 F.3d 171 (4th Cir. 2019).

[3] See Matal v. Tam, 582 U.S.___, 137 S. Ct. 1744 (2017) (slip op.), aff’g 808 F.3d 1321 (Fed. Cir. 2015).

[4] See Iancu v. Brunetti, 588 U.S.___ (2019) (slip op.), aff’g 877 F.3d 1330 (Fed. Cir. 2018).