Vox Populi can’t take no for an answer.
Remember when Vox Populi filed to register a trademark for .Sucks? We all pointed out that you can’t get a trademark for a top level domain name.
And that’s precisely what the U.S. Patent and Trademark Office told Vox Populi.
But the .sucks operator is undeterred, responding with some rather silly explanations for why it should get the trademark.
The Examining Attorney has refused registration on the grounds that Applicant’s mark is merely a top level domain and thus fails to function as a service mark. Applicant respectfully submits that this refusal should be withdrawn for the following reasons.
A. Applicant’s Mark was a Service Mark Before it was a gTLD
Central to the Examining Attorney’s arguments that .SUCKS does not function as a service mark is the contention that “the applied-for mark consists solely of a top-level domain name.” While it is true that “.sucks” is now operational as a top-level-domain, Applicant was using the term as a service mark, and accruing goodwill therein, prior to the roll-out of the corresponding gTLD.
Specifically, the “.sucks” top-level domain (“TLD”) first went live as an element of a domain name on June 21, 2015. However, the Applicant had been using its service mark, .SUCKS, in connection with its domain registry operator services since at least as early as March 30, 2015. This means that the Applicant’s use of .SUCKS in connection with its services pre-dates the active use of the top-level-domain by almost three (3) full months; this also means that it is impossible to state that “the applied-for mark consists solely of a top-level domain name” because it was used by Applicant in the offering of its services before ever it was a top-level-domain.
Wait — you mean they started promoting the TLD before it was live? Every new TLD operator did that.
I also got a chuckle out of this:
B. The Mark is Clearly Used as a Mark in Addition to being a gTLD
Applicant does not dispute that “.sucks” is a TLD, and does not challenge that the Examining Attorney was able to find articles that discuss “.sucks” as a TLD. The evidence cited by the Examiner, however, does not establish that the Applicant’s Mark does not also function as a service mark. Moreover, the mark does not appear in a form in which consumers would view a TLD. Instead, the specimen shows that the mark appears in white letters, within stylized, overlapping conversation bubbles. In addition to its stylization, the specimen shows that the mark is prominently displayed in the upper-left hand corner of a webpage, which is the exact location that consumers have been conditioned to look and expect trademarks. There is no reason that a consumer viewing the mark, as it is used on the specimen, would assume that it is merely a TLD, but instead it is immediately understood as a source identifier.
The application is for the mark .cloud, not a figurative mark of its logo. Why is it bringing up the stylization as proof?
By Vox Populi’s reasoning, basically every new TLD operator could trademark .TLD. And that’s exactly what the USPTO says you can’t do.
Vox Populi’s trademark application sucks.