Not every name that you own can be trademark. A new ruling by the judges at the U.S. Patent and Trademark Office helps to explain why. Every business owner that has an interest in its name (in other words, every business owner) can take note.
There is now a mind-numbingly large number of top-level domains out there – well over 1,000 in fact – although the majority of internet domain names we see in the United States are .com, .org, and .biz. Included among these top-level domains are the usual suspects such as .xxx, .golf, or .adult, and .cpa. For other places, you also often see some country code – so-called country code top level domains – such as .fr for France, .ca for Canada, or .co.uk in the United Kingdom.
Most of these newer generic top-level domain names (“gTLDs”) were purchased in bidding contests by various private entities. Most of the owners of these gTLDs fall into one of two camps. One group includes companies which wanted to control any top level registration of their own names (.TravelersInsurance, .Honda), and the other owners are companies which wanted to only control the domain so they could resell the right to use those top-level domains to interested purchasers.
Which brings us to “.sucks.”
The Trademark Office just confirmed that .sucks was generally conceived and marketed as an attractive Internet domain name “due to the slang meaning of the term ‘sucks.’” The gTLD represents an opportunity “for common people to make their voices heard” or “a shakedown by selling acerbic domains to companies at a high price lest they fall into more hateful hands.”
In other words, common people either wanted to have a .sucks site to rail against something they don’t like, or wanted to buy the .sucks domain name of their own brand, before some disgruntled customer could get there first.
The owner of .sucks is Vox Populi Registry Ltd. They have been claiming that they not only have the right to control and sell rights to the .sucks domain name (this was not in dispute), but also that .sucks is its exclusive trademark to which only they could control all right to use “in association with both domain registry operator and domain name registration services for identification of users on a global computer network” (Trademark Office-speak for what the real world may call “the Internet”).
There is no dispute in the record that .sucks owner, Vox Populi, invested heavily in promoting this. Their evidence talks about promotion expenditures in the years 2015 and 2016 (there is typically a long time lag between the time an application is filed and the time when a final appeal will be decided, which is presumably why the evidence is not more current). The opinion of the Trademark Office acknowledges “that Applicant ‘spent approximately $200,000 on the promotion of its mark in the United States in 2015, and will have [sic] spent 1,500,000’ … in 2016.”
The owners also got signed statements from others in the industry, notably other companies which sell or resell registration rights in the .sucks domain which say, “When I see the .sucks service mark, I immediately recognize it as identifying the domain name registry services offered by Vox Populi [the Applicant].”
The importance of this decision is not limited to domain names. It shows that even if you invest almost $2,000,000 in 2 years to promote your mark, it’s no assurance that you have gained trademark rights.
This teaches two things.
First of all, note that the trademark owner, in my opinion, had a massively difficult job to prove that this domain functioned as a trademark. Up until now, gTLDs have not been considered trademarks. In the context of this specific trademark application, it is to be expected that very substantial evidence might be required to change this. This would demand evidence far in excess of what the average Trademark Office trademark application would require to prove someone had advertised its mark so heavily that consumers make the immediate association between the name and a specific company.
But it also illustrates in general that when you adopt a word that the Trademark Office says is too common in your industry or doesn’t really “function as a trademark,” this is not the end of the road. The trademark owner has the right to submit evidence to dispute the Trademark Office conclusion. It is the exceptional case where the Trademark Office will actually find that the word for which protection is sought simply can never legally function as a trademark. In explaining this concept, the Trademark Office said, in relying on prior legal decisions, that:
“The Trademark Act is not an act to register mere words, but rather to register trademarks. Before there can be registration, there must be a trademark, and unless words have been so used, they cannot qualify.”
Coincidentally, another mark was also refused the other day as lacking the distinctiveness required to qualify as a trademark. This one was to fighter Floyd Mayweather for “Past Present Future,” which he claimed to be a phrase closely associated with him and products he sells (t-shirts). The Trademark Office said that this phrase was too commonly used as an expression. But this decision illustrates a key point: in Mayweather’s case, the Trademark Trial and Appeal Board had insufficient evidence to show a close association between this mark and Mayweather’s attempt to register it for T-shirts. Though Mayweather made a lot of arguments and disputed the Trademark Office’s legal conclusions, it failed to come up with evidence to prove that consumers actually saw this phrase as a trademark. The Trademark Office said, “Counsel’s argument is ‘no substitute for evidence.’” With substantial amounts of use and evidence, the result may have been different.
While .sucks could never be owned as a trademark for this service, the refused Mayweather mark could have been deemed registerable if there had been evidence to prove rights. Even .sucks, for different products, could still function as a trademark. Just not for a domain registry that sells rights to .sucks.
Unless you are choosing the most commonplace terms to describe your product, the chances are overwhelming that if you have enough evidence of sales and notoriety among your customers, you will be able to claim trademark rights.
The Trademark Office has said that buying .sucks for a domain name shows that even when you invest a lot of money in creating a brand, you can never protect a word that is legally considered to be generic.
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