CAFC addresses SUCKS in Vox Populi case

Vox is the domain registry operator for the .SUCKS generic top-level domain (“gTLD”) for Internet websites. A registry operator “maintains the master database of all domain names registered in each top-level domain, and also generates the ‘zone file,’ which allows computers to route Internet traffic to and from top-level domains anywhere in the world.” Trademark Manual of Examining Procedure (TMEP) § 1215.02(d) (8th ed. July 2021); see generally ICANN Acronyms and Terms, Internet Corporation for Assigned Names and Numbers, https://www.icann.org/en/icann-acronyms-and-terms/registry-operator-en (last visited Dec. 20, 2021). Vox filed two trademark applications relevant to this case. U.S. Trademark Application Serial No. 86/700,941 (“the ’941 application”) sought registration on the Principal Register of the standard character mark .SUCKS in Class 42 (computer and scientific services) for “[d]omain registry operator services related to the gTLD in the mark” and in Class 45 (personal and legal services) for “[d]omain name registration services featuring the gTLD in the mark” as well as “registration of domain names for identification of users on a global computer network featuring the gTLD in the mark.”1 J.A. 1–2.
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Substantial evidence supports the Board’s finding that “consumers will view [the standard character mark .SUCKS] as only a non-source identifying part of a domain name, rather than as a mark.” J.A. 21. Specimens from Vox’s website use .SUCKS to refer to a product (domain names ending in .SUCKS), J.A. 38–43, for example, advertising the “exceptional value” in “Registry Premium names” like “life.sucks and divorce.sucks,” J.A. 42. Online articles discussing Vox and domain names similarly use .SUCKS to refer to a product rather than as an identifiable provider of services. J.A. 82–94, 96–101. Third-party domain name registrars (a subset of Vox’s customers) also use .SUCKS to refer to a product being sold to the public rather than as an identifier for Vox’s services. J.A. 64–81. Vox relies on a declaration by its COO stating that Vox “has spent substantial sums in the advertising and promotion of its services under the .SUCKS brand (irrespective of design format),” J.A. 134, and referencing sample advertising and marketing materials using the stylized form of .SUCKS in the context of trade shows, J.A. 135–38. The declaration states that “[a]s evidence of its successful branding, [Vox] has experienced double-digit growth in domain registrations year-over-year since the domain debuted in 2015.” J.A. 135. Advertising and sales volumes, while relevant, are not by themselves dispositive of how consumers perceive a mark. See Am. Footwear Corp. v. Gen. Footwear Co. Ltd., 609 F.2d 655, 663 (2d Cir. 1979); In re Kwik Lok Corp., 217 U.S.P.Q. 1245, 1248 (T.T.A.B. 1983).