In a precedential decision, the Trademark Trial and Appeal Board refused to register .SUCKS, holding that the generic top-level domain does not operate as a trademark.
Vox Populi launched the .SUCKS domain in 2015, allowing registration and operation of domains with the suffix .sucks. For example, Vox Populi’s own website, www.get.sucks. In 2015, the company filed an application to register the term as a trademark for domain registry operator services and domain name registration services. It later filed an application to register a stylized version of its mark (see below) for substantially the same services.
Under USPTO policy, “a mark composed solely of a gTLD for domain-name registry operator or registrar services fails to function as a trademark because consumers are predisposed to view gTLDs as merely a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services.” Thus, in order to receive a registration, the applicant for a mark composed entirely of a gTLD must provide evidence that consumers view the gTLD as a source identifier.
Here, Vox Populi submitted a declaration from its COO attesting to “substantial sums” spent on advertising, along with samples of its marketing and advertising. It also submitted three consumer declarations. The Board found the consumer declarations probative but not sufficiently persuasive, including because they consisted of six short points, were nearly identical in substance, and were made by parties who “share a pecuniary interest with Applicant, namely the success of the gTLD.”
In short, Vox Populi’s evidence was not sufficient to overcome the Board’s view that “consumers are highly conditioned to view a gTLD as signifying its function as a portion of an Internet domain name, and due to this consumer predisposition and the fact that gTLDs are intended to be used by multiple, often numerous parties as part of their own domain names [sic] the specified gTLD typically will not be perceived as a source indicator.” Further, the suggestion in Vox Populi’s own marketing materials that others will use .sucks in a variety of ways, including to send a message (e.g. cancer.sucks), “reduces any possibility that consumers will view Applicant’s use of the gTLD as a source identifier.”
Accordingly, the Board affirmed the refusal to register the .SUCKS word mark. As for the stylized version of .SUCKS, the Board did not consider the presentation of the term “sufficiently striking, unique or distinctive, so as to overcome its inherent incapacity and render the mark capable of serving as a source indicator." It, thus, refused to register the stylized version of the mark as well.
The entirety of the evidence leads us to conclude that .Sucks, when viewed in the context of domain registry and registrar services, will be perceived merely as one of many gTLDs that are used in domain names.