The U.S. Court of Appeals for the Federal Circuit recently affirmed a decision issued by the Trademark Trial and Appeal Board (TTAB) to reject Vox’s .SUCKS trademark applications filed in 2018. The domain registry operator submitted two applications for identical characters — one for the standard character word mark itself and the other as a pixelated stylized logo. However, the United States Patent and Trademark Office (USPTO) denied both registrations. The USPTO’s determination was upheld on appeal.
Upon examination, the USPTO found that the domain name .SUCKS did not function as a trademark. Although Vox tried to assert that .SUCKS crossed the line into being a service mark, the USPTO rejected the argument. On appeal, the TTAB concurred with the USPTO’s decision, concluding that .SUCKS did not act as a source identifier. The TTAB also found that the stylized pixelated version of the mark was not distinctive enough to “carry the overall mark into registrability” — it rejected both the stylized mark and the standard character word mark trademark applications.
Vox only appealed the TTAB’s determination concerning the stylized mark. The Federal Circuit found that there was no error in the TTAB’s decision as the design was not inherently distinctive to be registered as a trademark. Specifically, the court noted that a stylization can make a mark registrable if the design’s features “create an impression on the purchasers separate and apart from the impression made by the words themselves.” The analysis is subjective and must be “determined based on a viewer’s first impression.”
Selecting a memorable domain name is critical to the success of a business. For many companies, their domain name might be the same as the business or a product name. Importantly, a domain name can be a trademark or service mark. But the USPTO will only register the mark if it identifies the source of goods or services and is distinctive enough to distinguish them from those offered by others.
The USPTO is very particular about what domain names can be registered trademarks — just like any other trademark, if the root of the domain name is generic, descriptive, or a surname, it would not be entitled to protection. Notably, distinctiveness is paramount when registering any trademark, including those used for domain names. While there is a spectrum of distinctiveness, the trademarks considered most distinctive are those that are arbitrary and fanciful.
For instance, if the domain name was for a shoe store and contained the word “shoe,” adding the designation “.com” would not cure the deficiency. Similarly, a geographical name in a domain would not be entitled to trademark protection. This is the same rule that applies for business names with a suffix such as “Inc.” Such designations do not have any trademark importance and are not considered part of the mark.
When selecting a domain name for your business, it’s crucial to avoid infringing upon an existing trademark by conducting due diligence. Infringement can occur if a domain name is the same or confusingly similar to a trademark in use in commerce. Before purchasing a domain name, it’s essential to take the following steps:
Just because you own a domain name, you do not automatically have trademark rights. You must take the necessary steps to file a trademark application with the USPTO to have protective rights to your mark. However, the mark must first be used in commerce to register it — an Intent to Use application may be filed if it has not yet been used in connection with goods or services in the marketplace.
Trademarking a domain name can be complex and it is important to have a skilled trademark attorney on your side who can guide you through the process. Located in Ann Arbor, Michigan and serving clients nationwide, the Trademark Lawyer Law Firm, PLLC assists business owners and entrepreneurs with a wide variety of trademark matters. Contact us today to schedule a complimentary 15-minute consultation to learn how we can help.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.