USPTO Shuts Down Trademark Bid from Domain Registry Company

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.

Why Was Vox’s Trademark Application Denied?

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.”

Can Domain Names Be Trademarked?

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.

How to Select a Domain Name That Doesn’t Infringe

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:

• Conduct a search on several search engines — Checking search engines such as Google, Bing, and Yahoo is a good starting place to determine whether the domain name you are considering is currently being used to identify a company or one of its products.
• Search Whois.net — By conducting a search on Whois.net, you can determine whether there are any domain names that are the same or similar to the one you would like to use.
• Conduct a thorough trademark clearance search — A comprehensive trademark clearance search can identify all federally registered trademarks and pending applications.
• Avoid names that could cause consumer confusion — A mark doesn’t have to actually cause confusion to infringe upon another. The standard in trademark law is whether the likelihood of confusion exists. A mark may cause confusion if use of the mark would cause consumers to be unclear as to the source of the goods.

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.

Contact an Experienced Trademark Attorney

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.