That Sucks: Appeals Court Finds Pixelated “.SUCKS” Mark to Lack Trademark Functionality
February 7, 2022
Michael J. Pistorio
In re Vox Populi Registry, Ltd. Fed Cir. 2021-1496
On Feb. 2, 2022, the Court of Appeals for the Federal Circuit (CAFC) shot down appellant Vox Populi Registry’s bid for a trademark on a retro-pixilated word mark “.SUCKS”, agreeing with the USPTO that the mark doesn’t meet the standard of “functionality” for trademarks.
Vox is the domain registry operator for .SUCKS top-level domain websites, and filed a trademark application for the stylized .SUCKS mark in classes related to domain name registration services, which was refused by the USPTO.
A service mark must function to “identify and distinguish the services of one person from the services of others and to indicate the source of the services” (15 U.S.C. §1127). The court agreed with the USPTO that “consumers … view the mark as a non-source identifying part of a domain name, rather than a mark.” That is, “.SUCKS” seems to be a product itself to people in the market for a creative domain name, and not an identifier of the source of “.SUCKS” web addresses. The court was not particularly swayed by Vox’s records of customer purchases of .SUCKS domain names, which didn’t show whether the customers viewed .SUCKS as a source identifier. Additionally, the court did not find the pixilated styling to create any “separate commercial impression.”