Court denies .sucks trademark bid

Vox Populi Registry has lost its ballsy bid to have its .sucks brand trademarked in the US.

The US Court of Appeals for the Federal Circuit yesterday denied Vox’s latest appeal in its fight with the Patent and Trademark Office, which had rejected two .sucks trademark applications in 2018.

Vox had tried to register the string .sucks itself and also its stylized logo, in which “.SUCKS” appears pixelated. Both were rejected, but the registry appealed on the logo application.

It’s one of a great many trademark attempts by actual and wannabe gTLD registries to be rejected by the USPTO, which usually finds that the marks do not act as “source identifiers”.

The court instead found that people and companies, including registrars, “use .SUCKS to refer to a product being sold to the public rather than as an identifier for Vox’s services”.

In this case, Vox tried to show that it had crossed the line into service mark partly on the basis that its two leading registrars filed declarations swearing it is a distinctive service mark.

Showing that Vox’s chutzpah knows no depths, one of those registrars was its own sister company, Rebel, which is also owned by Momentous. The other was Uniregistrar, years prior to its acquisition by GoDaddy.

But the USPTO wasn’t buying it, and the Federal court agreed with its analysis.

The court also agreed that the stylized .sucks logo was not distinctive enough — too “ordinary” — to allow it to be trademarked.

The case has a layer of irony as .sucks’s biggest customer is a serial cybersquatter that some UDRP panels have speculated is connected to the registry itself.

Read the decision (pdf) here.

New US trademark rules likely to exclude many dot-brand gTLDs

The US Patent and Trademark Office plans to allow domain name registries to get trademarks on their gTLDs.
Changes proposed this week seem to be limited to dot-brand gTLDs and would not appear to allow registries for generic strings — not even “closed” generics — to obtain trademarks.
But the rules are crafted in such a way that single-registrant dot-brands might be excluded.
Under existing USPTO policy, applications for trademarks that consist solely of a gTLD cannot be approved, because they don’t identify the source of goods and services.
If “.com” were a trademark, one might have to assume that the source of Amazon.com’s services was Verisign, which is plainly not the case.
But the new gTLD program has invited in hundreds of gTLDs that exactly match existing trademarks. The USPTO said:

Some of the new gTLDs under consideration may have significance as source identifiers… Accordingly, the USPTO is amending its gTLD policy to allow, in some circumstances, for the registration of a mark consisting of a gTLD for domain-name registration or registry services

In order to have a gTLD trademark approved, the applicant would have to pass several tests, substantially reducing the number of marks that would get the USPTO’s blessing.
First, only companies that have signed a Registry Agreement with ICANN would be able to get a gTLD trademark. That should continue to prohibit “front-running”, in which a gTLD applicant tries to secure an advantage during the application process by getting a trademark first.
Second, the registry would have to own a prior trademark for the gTLD string in question. It would have to exactly match the gTLD, though the dot would not be considered.
It would have to be a word mark, without attached disclaimers, for the same types of goods and services that web sites within the gTLD are supposed to provide.
What this seems to mean is that registries would not be able to get trademarks on closed generics.
You can’t get a US trademark on the word “cheese” if you sell cheese, for example, but you can if you sell a brand of T-shirts called Cheese.
So you could only get a trademark on “.cheese” as a gTLD if the class was something along the lines of “domain name registration services for web sites devoted to selling T-shirts”.
Third, registries would have to present a bunch of other evidence demonstrating that their brand is already so well-known that consumers will automatically assume they also own the gTLD:

Because consumers are so highly conditioned and may be predisposed to view gTLDs as non-source indicating, the applicant must show that consumers already will be so familiar with the wording as a mark, that they will transfer the source recognition even to the domain name registration or registry services.

Fourth, and here’s the kicker, the registry would have to show it provides a “legitimate service for the benefit of others”. The USPTO explained:

To be considered a service within the parameters of the Trademark Act, an activity must, inter alia, be primarily for the benefit of someone other than the applicant.
…
While operating a gTLD registry that is only available for the applicant’s employees or for the applicant’s marketing initiatives alone generally would not qualify as a service, registration for use by the applicant’s affiliated distributors typically would.

In other words, a .ford as a single-registrant gTLD would not qualify for a trademark, but a .ford that allowed its dealerships around the world to register domains would.
That appears to exclude many dot-brand applicants. In the current batch, most dot-brands expect to be the sole registrant as well as the registry, at least at first.
Some applications talk in vague terms about also opening up their namespace to affiliates, but in most applications I’ve read that’s a wait-and-see proposition.
The new USPTO rules, which are open for comment to people who have registered with its web site, would appear to apply to a very small number of applicants at this stage.

.bank trademark canceled after “mistake”

A US trademark on the term “.bank” granted to a likely .bank top-level domain applicant has been canceled just over a week after it was approved.
The Patent & Trademark Office withdrew trademark 4,085,335 yesterday, stating that it had been issued to Asif LLC in error.
The USPTO noticed that the application was for a gTLD string after receiving a letter of protest on January 6, which it forgot to process before granting the trademark.
In a letter to Asif’s lawyers, the USPTO noted that it has a policy of not approving trademarks for TLDs, adding:

The USPTO has broad authority to correct mistakes…
In view of the letter of protest prior to registration and the clear violation of the USPTO’s established policy that marks such as this do not function as trademarks, this registration is canceled as inadvertently issued

Asif, which recently changed its name to Domain Security Company, intends to apply to ICANN for .bank and .secure, but as I reported last week it faces an uphill battle given rival .bank bids.
It used a Wild West Domains reseller account to demonstrate to the USPTO it was using the .bank mark.
It’s not currently clear who was responsible for the letter of protest.