Federal Circuit rejects gTLD Trademark registration of .SUCKS

IN re Vox Populi Registry Ltd. (Fed. Cir. 2021).

A few years ago, ICANN opened the door to all sorts of top-level domains.  Vox jumped on-board with the “.SUCKS” domain, and is the TLD’s domain registry operator.  The setup appears to be a bit of a scam.

Vox is attempting to register a both the standard character service mark .SUCKS and also the stylized version shown in the figure above.  Both were rejected based upon a finding that the mark is merely descriptive and lacks distinctiveness. And, on appeal, the Federal Circuit has also affirmed. (Vox only appealed the for the stylized form).

In particular, the court found substantial evidence supporting the following:

  • Consumers would view .SUCKS as only a non-source identifying part of a domain name.
  • The party is using .SUCKS as a product — i.e., domain name ending in .SUCKS.
  • The stylized version of .SUCKS fails to create a separate commercial impression from the word itself.

This case is related both to TAM, BRUNETTI and also BOOKING.COM, but none of those save-the-day for Vox.  The court does note that the mark may become registrable if Vox is later able to show acquired distinctiveness.  In each of those recent Supreme Court cases, the Trademark Office had attempted to use some shortcut/exception to reject the trademark registration.  Vox is totally different from those cases because the TTAB and Federal Circuit relied upon the core trademark principle of distinctiveness to deny registration.

2 thoughts on “Federal Circuit rejects gTLD Trademark registration of .SUCKS

  1. 2

    Credit where due: The PTO and CAFC got this right.

    Sorry, bucko, but no one gets to trademark a TLD.

    Not as a standard-character mark, anyway.

    And one suspects that — had their (minimally) stylized version been approved — they would have attempted to rely on its registration to shut down anyone else’s use of the TLD.

  2. 1

    This is quite distinguishable from booking.com.

    Here someone is trying to trademark the entire gTLD section, whereas in booking, the court’s errant view opens the door to:
    Booking.su (funny how the George Carlin filter won’t permit the rest of the word, even the editor can use it as a headline),
    AND the myriad of other gTLDs open endedly.

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