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<img class="alignright wp-image-5777" src="https://www.ipintelligencereport.com/wp-content/uploads/sites/11/2022/02/trademark-infringement-GettyImages-1149597075_1200x630-600x315.jpg" alt="" width="428" height="225" />On Feb. 2, 2022, the Federal Circuit decided <a href="https://cafc.uscourts.gov/opinions-orders/21-1496.OPINION.2-2-2022_1902170.pdf"><em>In re Vox Populi Registry Ltd</em></a><em>.</em>, an appeal from the Trademark Trial and Appeal Board’s (Board) affirmance of the refusal to register a stylized version of the term .SUCKS. Vox Populi operates the registry for the .SUCKS generic top-level domain, offering domain names ending in “dot sucks” particularly suited to operation of gripe sites, and it applied to register the term .SUCKS both in standard characters and in a pixelated, stylized version for “domain registry operator services related to the gTLD in the mark.” The examining attorney and the Board refused registration of both versions for failure to function as a mark.

The Federal Circuit found that substantial evidence supported the Board’s finding that consumers will perceive .SUCKS only as a non-source identifying part of a domain name and not as a service mark. Such evidence included examples from Vox Populi’s website, get.sucks, using .SUCKS to identify a product (domain names ending in .SUCKS) rather than a provider of services. Vox Populi’s evidence of advertising and promotional efforts and declarations from domain name registrar customers who testified that they perceive .SUCKS as a service mark were insufficient to overcome this evidence.

As Vox Populi appealed the refusal to register only as to the pixelated, stylized version of the term and not as to the standard-character version, the parties and the court focused on whether the stylization itself provided any source-identifying function. Vox Populi characterized the stylized form of .SUCKS as a “retro, pixelated font that resembles how letters were displayed on early LED screens.” The court acknowledged that design or stylization “may make an otherwise unregistrable mark registrable if the features ‘create an impression on the purchasers separate and apart from the impression made by the words themselves,’” but it found no error in the Board’s determination that the pixelated, stylized form of .SUCKS fails to do so, as all the characters in the mark are the same height and “are merely displayed in a font style that was once mandated by the technological limitations of computer screens” and that consumers would simply view as ordinary pixelated lettering rather than as a source identifier.

While Vox Populi is out of luck for now, the decision left open the possibility that it could show in the future that the stylized term had acquired distinctiveness and therefore become registrable. Because the evidence of record  from customers on their perception of whether .SUCKS was source-identifying did not distinguish between the standard-character version and the stylized version, those declarations could not support such a finding as to the pixelated version in particular.

Given that Vox Populi controls the .SUCKS generic top-level domain, it has other resources at its disposal beyond federal registration of a trademark to ensure that third parties do not misuse the term or adopt a similar term for competing services that would be likely to cause consumer confusion. But perhaps, in view of the Federal Circuit’s guidance, it will try its luck again anyway and come to the USPTO with evidence of acquired distinctiveness that would put its stylized .SUCKS design into the same category of registrability as, for example, BOOKING.COM.

.SUCKS’ Luck Sucks: Federal Circuit Affirms Refusal to Register .SUCKS for Failure to Function