A generic-top-level-domain (gTLD) is the last portion of a domain name, such as .com, .org, .net, and .info. A domain name registry operator for a top level domain controls records for fully-qualified domain names, such as example.com, for the gTLDs it maintains.
One domain name registry operator sought trademark registrations for the gTLD .SUCKS and what can be characterized as a pixelized, 8-bit version of .SUCKS for domain registry operator services related to the gTLD. The Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office (USPTO) denied the registrations because it felt that .SUCKS will not be perceived as a source identifier and instead will be perceived merely as one of many gTLDs that are used in domain names. Regarding the pixelated mark, the TTAB held that 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. The Federal Circuit affirmed.
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,” which typically results in denial of registrations that are generic or descriptive. But “the source identifier requirement is broader than just whether a proposed mark is generic or descriptive.” In the context of a gTLD, the inquiry revolved around whether a relevant consumer would perceive a gTLD as a product (the domain name) or an indicator of who operated the domain name registration service. The Federal Circuit felt the evidence supported that a gTLD would be viewed as product by the general public seeking to registrar a domain name, such as verybadthing.sucks. The domain name registry operator sought to narrow the relevant consumer to third-party domain name registrars, such as GoDaddy or Google Domains, who would register a domain name of behalf of the public as those companies would view a gTLD differently, but that was rejected in view of the domain name registry operator’s own marketing material, which was directed to the general public.
The pixelated design of .SUCKS was also not registerable. Design or stylization may make an otherwise unregistrable mark registrable if the features “create an impression on the purchasers separate and apart from the impression made by the words themselves.” But pixelating the mark .SUCKS failed to create a separate commercial impression, in the Court’s view.
One possible solution for the domain name registry operator would be to make a showing the stylized .SUCKS mark has acquired secondary meaning in the perception of consumers. To register a gTLD under that standard, evidence must be provided showing that “the particular display which the applicant has adopted has acquired distinctiveness.”