“Although design or stylization can 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,’ such an analysis is ‘necessarily a subjective matter which must be determined based on a viewer’s first impression,’ said the CAFC.”
The U.S. Court of Appeals for the Federal Circuit ruled earlier today that a stylized form of the trademark for the .SUCKS domain name failed to create a “separate commercial impression” warranting registration by the U.S. Patent and Trademark Office (USPTO).
Vox Populi Registry Ltd. is the domain registry operator for the controversial .SUCKS generic top-level domain (gTLD). The USPTO’s Trademark Trial and Appeal Board (TTAB) in October 2020 affirmed an examiner’s decision to refuse the stylized mark, as well as the standard character word mark for .SUCKS.
The stylized version of the mark consisted of the word .SUCKS in “‘retro,’ pixelated font that resembles how letters were displayed on early LED screens” (see below).
The TTAB rejected the word mark on the ground that .SUCKS “will not be perceived as a source identifier” but “merely as one of many gTLDs that are used in domain names.” And as to the stylized version of the mark, the Board said the design was not sufficiently distinctive to “carry the overall mark into registrability.”
Vox only appealed the TTAB’s decision with respect to the stylized mark. The registry argued that its customers had testified via declarations that they “perceive .SUCKS – on its own, regardless of stylization – as a service mark of [Vox].” Vox also cited to a prior TTAB decision, In re Serial Podcast, LLC, 126 U.S.P.Q.2d (BL) 1061 (T.T.A.B. 2018), in which the Board found a stylized version of the SERIAL mark was registrable.
However, the CAFC said that Vox’s customer declarations were unpersuasive because they were made without regard to the stylization, which is the relevant inquiry. The court also distinguished In re Serial because, there, the Board found that, while the “wording, lettering, coloring, and geometric background components of [the SERIAL mark] were not inherently distinctive and that ‘even viewed all together’ were ‘on the less distinctive part of the spectrum,’” ultimately, “the stylized marks had acquired distinctiveness for a podcast in a serialized format and were therefore registrable.”
The Board in its decision 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.” Although design or stylization can 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,” such an analysis is “necessarily a subjective matter which must be determined based on a viewer’s first impression,” said the CAFC, citing TTAB precedent.
Even though Vox did not appeal the rejection of the standard character mark for .SUCKS, the CAFC weighed in on whether there was substantial evidence that the Board erred in its factual findings 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,” finding that “[w]e cannot conclude that the Board’s weighing of the evidence was unreasonable.” Despite Vox’s attempt to present a declaration from its COO that the registry has “spent substantial sums in the advertising and promotion of its services under the .SUCKS brand (irrespective of design format),” the Board, and ultimately, the CAFC, found that, such evidence does not automatically translate to consumer perception. “[T]he evidence showing that consumers will perceive .SUCKS as merely a gTLD outweighs [Vox’s] attempts to depict it as a source identifier,” said the Board.