In the aftermath of the Supreme Court’s “Booking.com” decision, the US Trademark Office continues to grapple with the protectability of domain names as registered trademarks. Earlier this year, the Supreme Court held that under certain circumstances a domain name containing a generic word may be a protectible trademark, rejecting the per se rule that had been applied by the Trademark Office. Recently, the Trademark Trial and Appeal Board had occasion to review a related issue: can a mark consisting solely of a gTLD, a generic top-level domain such as .com or .org, be registered as a mark?
In a precedential opinion issued on October 29, 2020, In re Vox Populi Registry Ltd., the Board held that the mark “.SUCKS” for domain registry operator services and for domain name registration services was unregistrable. As in the “Booking.com” decision, the crux of the decision came down to consumer perception. According to the Board, “a gTLD proposed for registration as a mark for services involving registration of domain names in the specified gTLD typically will not be perceived as a source indicator.” Rather, the “.SUCKS” domain names offered by applicant were “more akin to applicant’s product, not its brand.”
The Board found that some of the domain names described by applicant as possible under its gTLD, such as “life.sucks” and “cancer.sucks,” would not be seen by consumers as coming from applicant. Rather, because consumers would understand those potential sites to come from the registrant of those sites (rather than applicant), the possibility that any consumer would view applicant’s use of “.SUCKS” as a source-identifier relating to applicant was low. The Board rejected the applicant’s argument that consumers would likely view the mark as indicating the company operating the official registry of “.SUCKS” web addresses.
The decision of the Board is a reminder that the Trademark Office remains skeptical of many claims that domain names (or parts of domain names) function as trademarks. To succeed in obtaining protection for potential marks containing or consisting of a domain name, an applicant should be positioned to prove that consumers have come to perceive the mark as a source-identifier for applicant’s goods and services. If it seems that consumers will merely view the mark as a web address or, as here, one of many gTLDs used in domain names, the Trademark Office is very unlikely to permit registration of the mark.