Vox Populi Registry Ltd.

Trademark Trial and Appeal Board

Oct 29, 2020

86700941 (T.T.A.B. Oct. 29, 2020)

This Opinion is a
Precedent of the TTAB

Mailed: October 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Vox Populi Registry Ltd.
_____

Serial No. 86700941
Serial No. 87187215
_____

Robert M. O’Connell, Jr. and John P. McCormick of Fish & Richardson, P.C.
for Vox Populi Registry Ltd.

Kim Teresa Moninghoff, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Kuhlke, Wellington and Adlin, Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Applicant, Vox Populi Registry Ltd., has filed an application (“Application ’941”)
seeking registration on the Principal Register of the standard character mark
.SUCKS for the following services:1
Domain registry operator services related to the gTLD in the mark, in
International Class 42; and

1 Application Serial No. 86700941 was filed on July 22, 2015. For the Class 42 services,
Applicant claims first use of the mark anywhere and in commerce on March 30, 2015, under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). For the Class 45 services, Applicant
claims a bona fide intent to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
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Domain name registration services featuring the gTLD in the mark; registration
of domain names for identification of users on a global computer network
featuring the gTLD in the mark, in International Class 45.

Applicant also filed an application (“Application ’215”) to register the mark:
in connection with Class 42 “domain registry operator services related
to the gTLD in the mark.”2
As discussed in more depth in this decision, “gTLD” is an abbreviation for a
generic Top Level Domain (“TLD”). gTLDs serve as components of Internet addresses.
The Trademark Examining Attorney has refused registration of Applicant’s
proposed marks pursuant to Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C.
§§ 1051-1053, 1127, on the ground that, when used in connection with the identified
services, each fails to function as a mark.
Applicant has appealed the refusals and the appeals have been briefed. In view of
the similarity of the marks and in-part identity of services, as well as the shared basis
for refusal, we consolidate the appeals and issue a single decision. See Trademark
Trial and Appeal Board Manual of Procedure (TBMP) § 1214 (June 2020).
I. Application ’941 -- Preliminary Evidentiary Objection

Applicant has raised an evidentiary objection with respect to Application ’941.

2 Application Serial No. 87187215 was filed on September 29, 2016. Applicant claimed first
use of the mark anywhere and in commerce on March 21, 2016, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a).
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By way of background, Applicant concurrently appealed and filed a request for
reconsideration.3 The then-assigned Examining Attorney4 denied the request for
reconsideration, the appeal resumed, and Applicant filed an appeal brief.5 In lieu of
filing an appeal brief, the Examining Attorney requested remand of the application
“so that the examining attorney may inquire as to the nature of the contract between
applicant and ICANN and the applicant’s ownership of the applied -for mark” and
“because of the existence of new evidence that is relevant [to the failure to function
refusal].”6 The Examining Attorney attached to the remand request materials
regarding the Internet Corporation for Assigned Names and Numbers (ICANN), the
organization that helps govern the use of TLDs. The Board granted the remand “in
view of the circumstances set forth therein.”7
On remand, the Examining Attorney issued an Office Action and attached
additional evidence not included with the remand request to support the failure to

3 1 TTABVUE (appeal) and 4-5 TTABVUE (request for reconsideration).
Citations to TTABVUE throughout the decision are to the Board’s public online database
that contains the appeal file, available on the USPTO website, www.USPTO.gov. The first
number represents the docket number in the TTABVUE electronic case file and the second
represents the page number(s).
Citations to the examination record refer to the Trademark Office’s online Trademark Status
and Document Retrieval system (TSDR).
4 Examining Attorney Seth Rappaport was originally assigned responsibility for examination
of the application. The Office re-assigned the application to Examining Attorney Kim
Moninghoff on November 7, 2017. We hereinafter use “Examining Attorney” to refer to either
person.
5 6-7 TTABVUE (denial of request for reconsideration) and 9 TTABVUE (Applicant’s brief).
6 11-20 TTABVUE (request for remand).
7 21 TTABVUE (Board order granting remand).
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function refusal.8 Applicant responded to this Office Action and argued that “the new
evidence [attached to the Office Action] is untimely and improper.”9 Ultimately, no
additional refusal was asserted and proceedings resumed based solely on the failure
to function refusal.10 Applicant filed a supplemental brief and the Examining
Attorney then filed a brief.
In its supplemental brief, Applicant argues that “no valid grounds for remand
existed, and the post-remand Office Action was thus untimely and improper.”11
Applicant specifically objects to copies of online articles that the Examining Attorney
attached to the post-remand Office Action.12 Applicant requests that “all arguments
and evidence raised by the Examining Attorneys in the post-remand Office Action
and the post-remand Final Refusal should be deemed waived and not given any
consideration by the Board.”13
To the extent that Applicant seeks to challenge the Board’s remand order in its
appeal brief, we disagree with Applicant’s assertion that “no valid grounds” existed
for remand. At the very least, good cause for remand existed based on the Examining
Attorney’s request for additional information as to the nature of Applicant’s contract

8 TSDR May 4, 2017 Office Action.
9 TSDR November 2, 2017 Response.
10 23 TTABVUE.
11 24 TTABVUE 7.
12 Applicant refers to the post-remand Office Action issued on May 4, 2017, and articles at
TSDR pp. 30-62. In its supplemental brief, Applicant points out that the Examining Attorney
submitted an “updated screen image of Applicant’s website,” but states that this is
“substantively identical to the screen image already in the record.” 24 TTABVUE 9, Note 1.
13 24 TTABVUE 10.
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with ICANN. Indeed, in the post-remand Office Action, the Examining Attorney
made several such information requests, to which Applicant responded. Accordingly,
the Board’s remand order stands and the materials attached to the motion for remand
have been considered,14 as well as the subsequent information requests contained in
the post-remand Office Action and Applicant’s responses thereto .
With respect to Applicant’s objection to the material attached to the post-remand
Office Action and the arguments made in connection therewith, it is moot because
our findings and holding do not rely on any of this material or argument made in
connection therewith.15
II. Application ’941 -- Failure to Function
There is no dispute that .SUCKS is a generic top level domain (gTLD).16 A gTLD
is identified by the string of letters following the last “dot” in a website or email
address or document on the Internet. In 2011, ICANN authorized a program to
introduce numerous new gTLDs.17 Under this program, ICANN’s Registry
Agreements include specifications that differentiate between gTLD strings composed
of existing trademarks, “brand” gTLDs (Specification 13), and those that are “generic
string” gTLDs (Specification 11). See In re AC Webconnecting Holding B.V., 2020
USPQ2d 11048, 2020 BL 350997 at *4, n.18. Specification 11 defines a “generic

14 We note that although the ICANN materials were not attached to the post-remand Office
Action, Applicant has not objected to these materials.
15 To be clear, we have not considered the evidence attached to the May 4, 2017 Office Action.
16 TSDR November 2, 2017 Response (“Applicant does not dispute that ‘.sucks’ is a gTLD.”).
17 TSDR September 9, 2015 Office Action, p. 11.
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string” gTLD as “a string consisting of a word or term that denominates or describes
a general class of goods, services, groups, organizations or things, as opposed to
distinguishing a specific brand of goods, services, groups, organizations or things from
those of others.”18 By way of a 2014 Registry Agreement between ICANN and
Applicant’s predecessor-in-interest, and a subsequent assignment, Applicant is the
designated “Registry Operator” for the generic string gTLD “.Sucks,” subject to the
terms and conditions of the Registry Agreement.19 Applicant’s Registry Agreement
with ICANN includes Specification 11, applicable to generic string gTLDs, but does
not include Specification 13.20
“Registry operator” services involve “maintain[ing] the master database of all
domain names registered in each top-level domain, and also generat[ing] the ‘zone
file,’ which allows computers to route Internet traffic to and from top-level domains
anywhere in the world.”21 “Registrar” services, on the other hand, involve the
registration of domain names for others, and a gTLD registrar is “responsible for
keeping website contact information records and submitting the technical
information to a central directory (i.e., the ‘registry’).”22

18 12 TTABVUE 5; 4 TTABVUE 179 (Exhibit G to Applicant’s request for reconsideration) .
19 Exhibit G to Applicant’s request for reconsideration. 4 TTABVUE 89-181.
20 Id.; see also TSDR November 2, 2017 Response in which Applicant confirmed that its
registry agreement does not include Specification 13.
21 TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1215.02(d) (October 2018).
22 Id. The TMEP further distinguishes entities like “registry operators” and “registrars” (or
domain name registration services), from domain name “re-sellers,” which are entities that
are authorized by registrars to sell or register particular Internet addresses on a given top-
level domain. See TMEP § 1215.02(d), citing to the ICANN website’s “Glossary”
(http://www.icann.org/en/about/learning/glossary).
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The USPTO set forth its policy guidance with regard to the handling of
applications for marks composed entirely of gTLDs for domain name registry operator
and domain name registration (or “registrar”) services in Section 1215.02(d) of the
TMEP:
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. Therefore, registration of such marks must initially be
refused … on the ground that the gTLD would not be perceived as a mark.

Although the USPTO is not bound by ICANN’s criteria for its program to
introduce new gTLDs, in view of ICANN including in its program new gTLDs based
on existing brand names, the USPTO’s guidance acknowledges that, “in some
circumstances, a gTLD may have source-indicating significance.” Id. The guidance
provides in relevant part that:
[T]he applicant may, in some circumstances, avoid or overcome the refusal
by providing evidence that the mark will be perceived as a source identifier.
In addition, the applicant must show that: (1) it has entered into a
currently valid Registry Agreement with the Internet Corporation for
Assigned Names and Numbers (“ICANN”) designating the applicant as the
Registry Operator for the gTLD identified by the mark and (2) the
identified services will be primarily for the benefit of others.

In both appeals, the Examining Attorney concedes that a current, valid agreement
exists showing that ICANN has designated Applicant as the Registry Operator for
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the gTLD .SUCKS, and that Applicant’s recited services will be for the benefit of
others.23 We therefore do not address these issues in this decision.
However, the Examining Attorney maintains that Applicant is not the owner of a
prior U.S. registration on the Principal Register for the gTLD shown in the mark for
goods/services that are related to the identified subject matter of the websites to be
registered, which TMEP § 1215.02(d)(i) requires an applicant to submit as evidence
to show that the gTLD will be perceived as a source identifier. We observe that a prior
registration is relevant evidence, but not dispositive either way of the ultimate
question before us on appeal, which is whether consumers will perceive .SUCKS as
capable of functioning as a source identifier for domain name registry operator and
domain name registration services. See AC Webconnecting, 2020 USPQ2d 11048, at
*3. As discussed below, we find the record ultimately demonstrates that consumers
perceive .SUCKS as a gTLD and not as a source identifier for Applicant’s services
described in the application – namely, domain name registry operator services and
domain name registration services that feature or relate to the aforementioned
gTLD.24

23 Application ’941 - 26 TTABVUE 14 (Examining Attorney, in the Supplemental brief,
“agrees that the applicant has met the [first and second] requirements of this section [of the
TMEP]”); and Application ’215 – 6 TTABVUE 10, same language.
24 Although we do not rely on the issue of whether Applicant owns a prior registration, we
note that Applicant concedes that it does not own a prior registration for a .SUCKS mark
related to the subject matter of the websites registered with that gTLD. 24 TTABVUE 13
(“Applicant does not itself own a prior registration for ‘.SUCKS’ or ‘SUCKS’’). Furthermore,
Applicant’s objection to the Examining Attorney’s requirement to establish ownership of a
prior registration as untimely (24 TTABVUE 12) is moot in view of Applicant’s concession
that it does not own such a registration. In other words, regardless of the timing of the
requirement being asserted, Applicant would not be able to satisfy the requirement.
Serial Nos. 86700941 and 87187215
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“The Trademark Act is not an act to register mere words, but rather to register
trademarks. Before there can be registration, there must be a trademark, and unless
words have been so used they cannot qualify.” In re Bose Corp., 546 F.2d 893, 192
USPQ 213, 215 (CCPA 1976), quoted in In re Keep A Breast Found., 123 USPQ2d
1869, 1879 (TTAB 2017). To function as a service mark, a proposed mark must, by
definition, “identify and distinguish the services of one person ... from the services of
others and ... indicate the source of the services, even if that source is unknown.” 15
U.S.C. § 1127. “For any proposed mark, including a gTLD, the determination whether
the designation is capable of functioning as a mark focuses on consumer perception.”
AC Webconnecting, 2020 USPQ2d 11048, at *3 and cases cited therein; see also In re
TracFone Wireless, Inc., 2019 USPQ2d 222983, at *1-2 (TTAB 2019) (“The key
question is whether the asserted mark would be perceived as a source indicator for
Applicant’s [goods or] services.”); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862
(TTAB 2006) (“[T]he critical inquiry is whether the asserted mark would be perceived
as a source indicator.”).
Here, the involved application identifies the services as relating to or featuring
the gTLD .SUCKS. In other words, as described in the application, Applicant’s
services involve offering to register domain names ending with the gTLD .SUCKS,
and Applicant will be acting as the registry operator, maintaining the database, for
all domain names that end with the gTLD .SUCKS.
With regard to how consumers perceive proposed marks consisting solely of a
gTLD, we observe that the mere registration of a term as a gTLD does not establish
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that the matter functions as a trademark, just like the mere registration of a term as
a domain name does not establish any trademark rights. See Brookfield
Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50 USPQ
1545, 1555 (9th Cir. 1999). As the Board recently explained in AC Webconnecting,
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,” 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. 2020 USPQ2d 11048, at *3; see also Image Online
Design, Inc. v. CORE Ass’n, 120 F. Supp. 2d 870, 880 (C.D. Cal. 2000) (“Plaintiff’s use
of the mark .web in connection with domain name preregistration services does not
confer trademark protection. As a gTLD, .web does not indicate the source of the
services; instead, it indicates the type of services. The Court finds that .web, as used
here, falls out of the ambit of trademark categorization. Further, even if it could be
categorized, .web is simply a generic term for websites related to the World Wide
Web. Accordingly, the mark is not protectable.”); 1 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition, § 7:17.50 (5th ed. 2019) (a TLD like .com “has
no source indicating significance and cannot serve any trademark purpose”).
The Examining Attorney argues that “because a gTLD serves an inherent purpose
as part of the address at which websites are located, it does not create in the minds
of users an immediate recognizable ‘device’ to indicate the source of the domain
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registry operator and domain registration services.”25 The Examining Attorney
further points out that consumers of Applicant’s services are those “seeking to
register domain names containing the gTLD .SUCKS and registrars providing
registration of domain names containing the gTLD .SUCKS, which ensures
[consumers] would perceive .SUCKS as a gTLD.”26 Referring to the specimen of use
and other printouts from Applicant’s website, the Examining Attorney acknowledges
that .SUCKS is displayed prominently “in the upper left corner where trademarks
and service marks commonly appear,” but asserts that this is not sufficient to
overcome the term’s primary significance as a gTLD and “the content on the page
discussing .SUCKS clearly indicates to consumers that they can register domain
names with this gTLD to voice their displeasure or disapproval with a certain entity,
individual, movement, etc.”27
Applicant, on the other hand, argues that it uses .SUCKS as a source-identifier
and that the evidence shows that it is perceived as such by its customers. Applicant
also contends that it heavily promotes .SUCKS. In support, Applicant submitted the
declaration of its Director and Chief Operating Officer, Aimee Deziel, who avers that
Applicant “has spent substantial sums in the advertising and promotion of its
services under the .SUCKS brand (irrespective of design format).”28 Deziel

25 26 TTABVUE 8.
26 Id.
27 Id. at 9.
28 TSDR November 2, 2017 Response to Office Action, p. 3.
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specifically states that Applicant “spent approximately $200,000 on the promotion of
its mark in the United States in 2015, and will have spent 1,500,000 … in 2016.”29
Applicant’s specimen of use in the application depicts the applied-for mark in the
following manner:
.30
Additional printouts from Applicant’s website show .SUCKS in the following
manners:31

29 Id. Applicant also provided a declaration of Ms. Deziel during the prosecution of Application
’215 (at TSDR April 21, 2017 Response to Office Action, pp. 13-14). Ms. Deziel essentially
provided the same information but with slightly more detail, stating that Applicant spent
$1,500,000 in 2016, “which is roughly broken down into $1,000,000 spent before May 21,
2016, and $500,000 after May 21, 2016, which is the date on which the [applied-for mark in
Application ’215] was first used” and that Applicant “will have spent approximately
$300,000” in 2017, to promote Applicant’s services “under the .SUCKS mark [stylized] mark.”
30 TSDR Specimen p. 1 (filed on July 22, 2015).
31 4 TTABVUE (Applicant’s Request for Reconsideration).
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;32
;33 and

32 Id. at 25.
33 Id. at 27.
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.34
The specimens make clear that Applicant’s domain registry operator and registrar
services relate specifically to Internet addresses that will have the gTLD .SUCKS; to
wit, Applicant identifies what it refers to as, “premium names … hav[ing] exceptional
value in the context of the dotSucks domain. For example, life.sucks and
divorce.sucks.”35 Consumers viewing Applicant’s website will therefore be aware that
.SUCKS is a gTLD and that domain names will be registered and maintained via
Applicant’s domain registry operator and registrar services. In short, as the Registry

34 Id. at 29.
35 Id. at p. 2.
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Operator services, .SUCKS is more akin to Applicant’s product, not its brand. When
a table maker sells tables, the word “table” is simply the common descriptive name
of the table maker’s product; it cannot be the table maker’s brand.
In view of the informal or slang meaning of the term “sucks,”36 Applicant suggests
various ways this gTLD can be used by others. As the above excerpts from Applicant’s
website show, Applicant proposes that others may and will use the gTLD for purposes
such as “cause marketing (e.g., cancer sucks).” However, such manner of use of the
gTLD by various other entities, as contemplated by Applicant, reduces any possibility
that consumers will view Applicant’s use of the gTLD as a source-identifier. That is,
third-party use of the gTLD reduces any distinctiveness of the term and detracts from
it pointing uniquely to Applicant as a single source for domain registry operator and
registrar services.37 In other words, because consumers will possibly be directed to
other sources that could include third-party trademarks in conjunction with the
domain name, this may undermine the ability of the gTLD to serve as a single source
identifier.

36 We take judicial notice that the term is defined in the Merriam-Webster dictionary as
“slang, sometimes vulgar: to be objectionable or inadequate.” MERRIAM-WEBSTER'S
COLLEGIATE DICTIONARY (11th ed.) and www.merriam-webster.com, last accessed on April
1, 2019). Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) (the Board may take judicial notice
of dictionary definitions; In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006) (judicial
notice of online dictionaries that exist in printed format or regular fixed editions).
37 In this regard, Specification 11 in the Registry Agreement prohibits a Registry Operator of
a generic string TLD from imposing eligibility criteria for registering names in the TLD that
limit registrations exclusively to a single person or entity. 4 TTABVUE 179.
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Applicant further relies on three “consumer declarations” submitted with its
request for reconsideration.38 Applicant asserts that the declarants represent
registrars (accredited companies that sell domain names to the public) and thus are
recipients of Applicant’s domain registry operator services. Applicant notes that two
of these registrars represent half of all the others currently providing registration of
the .SUCKS gTLD. Applicant argues these declarations “are significant of how
ordinary consumers of Applicant’s services perceive [the applied-for mark,
.SUCKS].”39
Each declaration consists of six short points and in substance is nearly identical
to the others. Each declaration has the same conclusory sentence – “When I see the
.SUCKS service mark, I immediately recognize it as identifying the domain name
registry services offered by Vox Populi [Applicant].” The declarations are probative;
however, we keep in mind that these registrars are in the business of promoting and
selling domain names with the gTLD .SUCKS to the public. Thus, while the
declarants may be recipients of Applicant’s domain registry operator services, they
also share a pecuniary interest with Applicant, namely the success of the gTLD. They
have entered into an agreement with Applicant that focuses on the marketing of the
gTLD and the nature of their own services involves using .SUCKS as merely a gTLD.
While these declarants may be more knowledgeable than the average consumer
seeking to register a domain name and be aware that Applicant is the sole registry

38 4 TTABVUE 36-39.
39 24 TTABVUE 15.
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operator for .SUCKS gTLD, this does not mean that they will use .SUCKS as a source-
identifying mark for Applicant’s domain registry operator services. Rather, when
these registrars are offering to register potential domain names, .SUCKS will be used
to describe the gTLD, not Applicant, in the domain names to be registered.
The statements made by the declarants are also at odds with evidence submitted
by the Examining Attorney showing how others use .SUCKS in connection with the
gTLD. In support of the denial of Applicant’s request for reconsideration, the
Examining Attorney attached website printouts from three different entities offering
to register .SUCKS domain names.40 For example, United Domains offers to register
.SUCKS domains in the following manner:

40 6-7 TTABVUE; see also evidence attached to TSDR Office Action April 29, 2016.
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;41
with the following information being provided on the same website:
.42
Another example, the Instra Corporation, is one of Applicant’s accredited
registrars and offers domain registration services in the following manner:

41 7 TTABVUE 7.
42 Id. at p. 9.
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.43
This evidence of third-party use by entities involved in selling .SUCKS domain
names shows .SUCKS used only as the gTLD. The applied-for mark is advertised as
merely one possible gTLD in connection with available second level domains.
The Examining Attorney also submitted articles discussing the gTLD .SUCKS
and mentioning Applicant.44 These articles refer to the gTLD only to describe possible
new domain names and not as a source identifier for domain name registration or
registrar services. For example, a 2015 article from the website www.arstechnica.com

43 Id. at 14.
44 6-7 TTABVUE.
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titled “Pricing raises accusations of ‘extortion’ and ‘shake downs,” describes the
advent of the new (at the time) gTLD in the following manner:45
The number of generic top-level domains (gTLDs) available for use has climbed
into the hundreds, and “.sucks” will soon be added to the list. However, angry
customers eager to get their hands on brand-specific domains like
“bestbuy.sucks” or “comcast.sucks” shouldn’t get their hopes up …

The pricing situation around .sucks domain names is complicated. Companies
with registered trademarks will have to pay an astounding $2,499 to register
their trademarked names in .sucks. Registration of non-trademarked names
during [dates] before .sucks goes live will cost …

Companies are typically hypersensitive about brand usage, and few will want
their .sucks domains under someone else’s control. The .sucks pricing scheme
has led to outrage…

Another 2015 article appearing on the Slate website (www.slate.com), “If you want
a ‘.Sucks’ Domain Name, It Could Cost You $2,500,” describes the gTLD in the
following manner:46
Vox Populi [Applicant], the company that will be selling the .sucks website
names, will charge $2,500 for certain registered trademarks with a .sucks name.

There’s some controversy amid the buildup to the release of .sucks domains. …

(Just as an example of what companies should be worried about with “.sucks,”
check out … [website]).

A third online article, from the PC World website (www.pcworld.com), is titled
“The .SUCKS domain is coming soon to an angry website near you,” and notes
ICANN’s approval of the “.SUCKS domain as part of the new gTLD expansions.”47

45 7 TTABVUE 20.
46 6 TTABVUE 10-11.
47 Id. at 12-17.
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The article acknowledges Applicant as “the company behind the .SUCKS TLD” and
the entity “that owns the right to administer the .SUCKS domain,” however, it is also
clear from the article that the gTLD is only just that, a gTLD. Or, due to the slang
meaning of the term “sucks,” the gTLD represents an opportunity “for common people
to make their voices heard” or “a shakedown by selling acerbic domains to companies
at a high price lest they fall into more hateful hands.”48
Weighing all of the evidence of record and arguments, we find that .SUCKS, as
used by Applicant and applied for in standard characters, will not be perceived as a
source identifier for Applicant’s Class 42 domain registry operator services or its
Class 45 domain name registration services. Rather, 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. We acknowledge Applicant’s attempts to use .SUCKS in a manner
that source-identifying marks are used; however, the evidence shows that consumers
will view it as only a non-source identifying part of a domain name, rather than as a
mark.
III. Application ’215 – Failure to Function
A. Analysis of the mark
In evaluating the failure to function refusal with respect to Applicant’s applied-
for mark, we maintain that the .SUCKS element will be perceived as

48 Id.
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merely a gTLD when it is viewed in connection with Applicant’s recited “domain
registry operator services related to the gTLD [.SUCKS] in the proposed mark.” For
the reasons given, supra, and based on the record before us, we do not find the literal
element of this mark, .SUCKS, would be perceived as source-identifying and
distinguishing the applied-for services.
As to the stylization of the literal element .SUCKS, described in the application
as a “font suggesting an LED display,” it has been established that “for a term
otherwise unregistrable to be capable of distinguishing an applicant’s goods, the
presentation of the term must be sufficiently striking, unique or distinctive so as to
overcome its inherent incapacity and render the mark capable of serving as a source
indicator.” In re Cosmetic Factory, Inc., 220 USPQ 1103 (TTAB 1983). The decision of
capability is dependent on the nature of the presentation of the unregistrable matter
in each case.
Where an element of a mark is held unregistrable, as is the case here with
.SUCKS, a design or stylization may render the overall mark registrable if it creates
an impression on purchasers separate and apart from the impression made by the
unregistrable term itself. Cf. In re Cordua Rests., 823 F.3d 594, 118 USPQ2d 1632,
1638-1639 (Fed. Cir. 2016) (affirming Board’s refusal of registration of stylized mark
CHURRASCOS on the Supplemental Register based on finding that the stylization
“does not create a separate commercial impression over and above that made by the
generic term.”). Accordingly, we must determine if the stylization of Applicant’s mark
Serial Nos. 86700941 and 87187215
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creates a separate commercial impression ‘over and above’ that made by the term
.SUCKS.
B. Whether the Proposed Mark’s Stylization Creates a Separate
Commercial Impression

Applicant asserts that its stylization “unmistakably sets the subject mark apart
from marks composed solely of a gTLD.”49 In addition to the description of the mark
in the application, Applicant refers to the stylization as “a ‘retro’ pixelated font that
resembles how letters were displayed on early CRT computer screens .”50 Applicant
cites to prior Board decisions in which a stylization or design was sufficiently
distinctive to create a separate commercial impression and thus make the mark
registrable, such as In re Clutter Control Inc., 231 USPQ 588 (TTAB 1986) (holding
registrable despite component wording found merely
descriptive of goods used to construct personal storage systems), and In re Jackson
Hole Ski Corp., 190 USPQ 175 (TTAB 1976) (stylized mark held
“sufficiently distinctive” and registrable with a disclaimer of the geographically
descriptive wording “Jackson Hole”).
The Examining Attorney acknowledges the “retro pixelated font” that was used
on “early CRT computer screens,” but asserts that the proposed mark “is not
analogous to any of the marks in the cases cited in the applicant’s brief,” pointing out
that “[a]ll of the characters in the applicant’s mark are the same height and width

49 4 TTABVUE 7.
50 Id. at 5.
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and are merely displayed in a font style that was once mandated by the technological
limitations of computer screens.”51
As shown in the excerpts from Applicant’s website, supra, Applicant uses the mark
at the top left-hand corner of the site in a manner that normally would
suggest a trademark and as part of a “pixelated” theme on its webpage.52 The mark
is also used alongside other trademarks in identifying “sponsors” for a “2016 PR Week
Conference ‘The Value Proposition’” as well as on a banner above its booth at the
conference:53

51 Id. at 21
52 4 TTABVUE 25.
53 Id. at 31-32.
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Although this type of evidence helps show Applicant’s intention to present the
mark in manners that are customary for service marks, this does not
mean that consumers will perceive it as such. In this case, we find Applicant’s efforts
in this regard are undercut by the very nature of its domain registry operator services
for the .SUCKS gTLD used in domain names. In other words, the evidence showing
that consumers will perceive .SUCKS as merely a gTLD outweighs Applicant’s
attempts to depict it as a source identifier. With respect to the pixelated design, or
any “retro” suggestion, of Applicant’s mark, it does not create a sufficiently distinct
commercial impression separate from the non-source-identifying element, .SUCKS.
While the pixelated design may be antiquated since it was once “mandated by
technological limitations,” given the ubiquity of the design in the “early days” of
computing, consumers would view pixelated lettering as ordinary. We further note
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that Applicant has not claimed that its mark has acquired distinctiveness under
Section 2(f).
C. Conclusion
Applicant’s mark , in its entirety, fails to function as a trademark for
the recited services. Specifically, the stylized lettering or design element in the mark
does not create a separate commercial impression and is not sufficiently distinctive
to “carry” the overall mark into registrability.
Decision: The refusal to register Applicant’s mark, .SUCKS (subject of
Application ’941) based on its failure to function as a mark is affirmed.
The refusal to register Applicant’s mark (subject of Application ’215)
based on its failure to function as a mark is also affirmed.