In Re VOX POPULI REGISTRY LTD.

Case: 21-1496    Document: 30     Page: 1   Filed: 02/02/2022




    United States Court of Appeals
       for the Federal Circuit
                  ______________________

        IN RE: VOX POPULI REGISTRY LTD.,
                       Appellant
                ______________________

                        2021-1496
                  ______________________

     Appeal from the United States Patent and Trademark
 Office, Trademark Trial and Appeal Board in No.
 87187215.
                  ______________________

                Decided: February 2, 2022
                 ______________________

      ROBERT M. O'CONNELL, JR., Orrick, Herrington & Sut-
 cliffe LLP, Boston, MA, argued for appellant. Also repre-
 sented by R. DAVID HOSP.

    CHRISTINA J. HIEBER, Office of the Solicitor, United
 States Patent and Trademark Office, Alexandria, VA, ar-
 gued for appellee Andrew Hirshfeld. Also represented by
 THOMAS L. CASAGRANDE, CLAUDIA GARCIA, THOMAS W.
 KRAUSE, FARHEENA YASMEEN RASHEED.
                  ______________________

      Before LOURIE, DYK, and STOLL, Circuit Judges.
 DYK, Circuit Judge.
      Vox Populi Registry Ltd. (“Vox”) appeals a final deci-
 sion of the Trademark Trial and Appeal Board (“Board”)
 affirming the United States Patent and Trademark Office’s
Case: 21-1496    Document: 30      Page: 2    Filed: 02/02/2022




 2                            IN RE: VOX POPULI REGISTRY LTD.




 (“USPTO”) refusal of U.S. Trademark Application Serial
 No. 87/187,215 (“the ’215 application”) for




 (“the stylized form of .SUCKS”). We affirm.
                        BACKGROUND
     Vox is the domain registry operator for the .SUCKS ge-
 neric top-level domain (“gTLD”) for Internet websites. A
 registry operator “maintains the master database of all do-
 main 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 As-
 signed            Names             and           Numbers,
 https://www.icann.org/en/icann-acronyms-and-terms/reg-
 istry-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.



     1   The United States follows the international trade-
 mark classifications established by the Committee of Ex-
 perts of the Nice Union and set forth in the International
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 IN RE: VOX POPULI REGISTRY LTD.                            3



     The ’215 application sought to register the stylized
 form of .SUCKS in Class 42 for “domain registry operator
 services related to the gTLD in the mark.” J.A. 2.
      The examining attorney refused both trademark appli-
 cations “on the ground that, when used in connection with
 the identified services, each fails to function as a mark.”
 J.A. 2. With respect to the ’215 application, the examining
 attorney determined that Vox’s “submitted evidence does
 not establish that the mark functions as a source identi-
 fier.” J.A. 347. Vox appealed these refusals to the Board.
     In affirming the refusal of the ’941 application, the
 Board concluded that the standard character mark
 .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.” J.A. 21. Turning to the
 ’215 application, the Board incorporated the reasoning
 with respect to the ’941 application, finding “[f]or the rea-
 sons given, supra, and based on the record before us, we do
 not find the literal element of this mark, .SUCKS, would
 be perceived as source-identifying.” J.A. 22. The Board
 further concluded that “the stylized lettering or design ele-
 ment in the mark does not create a separate commercial
 impression and is not sufficiently distinctive to ‘carry’ the
 overall mark into registrability.” J.A. 26.
     Vox appeals the Board’s decision only with respect to
 the ’215 application involving the stylized form of .SUCKS,
 which appears as a “‘retro,’ pixelated font that resembles
 how letters were displayed on early LED screens.” Vox
 Opening Br. at 2. We have jurisdiction under 

28 U.S.C. § 1295

(a)(4)(B).




 Classification of Goods and Services for the Purposes of the
 Registration of Marks published annually by the World In-
 tellectual Property Organization. TMEP §§ 1401.02(a)–(b).
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 4                             IN RE: VOX POPULI REGISTRY LTD.




                          DISCUSSION
                               I
     Under the Lanham Act, “[n]o [service mark] by which
 the [services] of the applicant may be distinguished from
 the [services] of others shall be refused registration on the
 principal register on account of its nature” subject to cer-
 tain exceptions. 15 U.S.C. §§ 1052–53. One of these excep-
 tions is that 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.”
 

15 U.S.C. § 1127

. A mark that is, for example, generic or
 descriptive, fails to function as a source identifier, though
 descriptive marks can be registered if they have acquired
 secondary meaning in the perception of consumers, see Two
 Pesos, Inc. v. Taco Cabana, Inc., 

505 U.S. 763, 769

 (1992);
 see also U.S. Pat. & Trademark Office v. Booking.com B.V.,
 

591 U.S. ___

, 

140 S. Ct. 2298

, 2305–07 (2020) (rejecting per
 se rule that “generic.com” names are generic in favor of in-
 quiry based on whether consumers perceive name as ge-
 neric).
     The question whether a proposed mark is a source
 identifier typically arises before us in the context of
 whether the proposed mark is descriptive under 

15 U.S.C. § 1052

(e). E.g., Brooklyn Brewery Corp. v. Brooklyn Brew
 Shop, 

17 F.4th 129

 (Fed. Cir. 2021); In re Stereotaxis, Inc.,
 

429 F.3d 1039

 (Fed. Cir. 2005). Our predecessor court rec-
 ognized that the source identifier and descriptiveness in-
 quiries are “complementary and opposite sides of the same
 coin to the extent that a mark . . . is ‘merely descriptive’ of
 the goods.” In re Cooper, 

254 F.2d 611, 613

 (CCPA 1958).
 However, though our court has had limited occasion to ad-
 dress the issue, the source identifier requirement is
 broader than just whether a proposed mark is generic or
 descriptive. See, e.g., In re Light, 

662 F. App’x 929

, 934–35
 (Fed. Cir. 2016) (affirming Board’s decision that a proposed
 mark failed to function as a source identifier where it
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 IN RE: VOX POPULI REGISTRY LTD.                             5



 contained over 570 words arranged in column format iden-
 tifying titles and characters from a story and thus merely
 conveyed information); see also Qualitex Co. v. Jacobson
 Prods. Co., Inc., 

514 U.S. 159

, 162–63 (1995) (color never
 identifies source except upon a showing of secondary mean-
 ing).
      The Board’s cases provide helpful additional detail on
 source identifiers. In analyzing whether a proposed mark
 functions as a source identifier, the Board focuses on con-
 sumer perception. See, e.g., In re AC Webconnecting Hold-
 ing B.V., 2020 U.S.P.Q.2d (BL) 11048, 2020 BL 350997, at
 *3 (T.T.A.B. 2020). See generally 1 McCarthy on Trade-
 marks and Unfair Competition § 3.4 (5th ed.). The Board
 looks to “the [Applicant’s] specimens and other evidence of
 record showing how the designation is actually used in the
 marketplace” to determine “how the designation would be
 perceived by the relevant public.” In re Eagle Crest Inc., 96
 U.S.P.Q.2d (BL) 1227, 1229 (T.T.A.B. 2010). The Board
 has determined that certain categories of applications fail
 to function as a source identifier, such as matter that
 “merely convey[s] general information about the goods or
 services or an informational message.” TMEP § 1202.04;
 see, e.g., D.C. One Wholesaler, Inc. v. Chien, 120 U.S.P.Q.2d
 (BL) 1710, 1716 (T.T.A.B. 2016) (refusing “I ♥ DC” for bags,
 clothing, and plush toys because “the nature of the phrase
 will be perceived as informational” and “the ubiquity of the
 phrase . . . on apparel and other souvenirs of many makers
 has given it a significance as an expression of enthusi-
 asm”).
                               II
      Vox does not appeal the rejection of the standard char-
 acter mark .SUCKS in the ’941 application. Nonetheless,
 Vox spends much of its opening brief arguing that “even if
 . . . we disregard the distinctive design elements in the
 [stylized form of .SUCKS], . . . the evidence of record estab-
 lishes that the mark still functions as a service mark and
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 6                            IN RE: VOX POPULI REGISTRY LTD.




 is entitled to registration.” Vox Opening Br. at 15. To the
 extent that the Board’s factual findings with respect to the
 standard character mark .SUCKS are at issue, we review
 them for substantial evidence. In re Cordua Rests., Inc.,
 

823 F.3d 594, 599

 (Fed. Cir. 2016). Substantial evidence
 “means only[] ‘such relevant evidence as a reasonable mind
 might accept as adequate to support a conclusion.’” Biestek
 v. Berryhill, 

139 S. Ct. 1148, 1154

 (2019) (quoting Consol.
 Edison Co. v. NLRB, 

305 U.S. 197, 229

 (1938)). “[T]he pos-
 sibility of drawing two inconsistent conclusions from the
 evidence does not prevent an administrative agency’s find-
 ing from being supported by substantial evidence.” Con-
 solo v. Fed. Mar. Comm’n, 

383 U.S. 607, 620

 (1966). We
 conclude that the Board did not err in finding the standard
 character mark not registrable, and we need not reach the
 question whether Vox’s claim with respect to the standard
 character mark is barred by the doctrine of administrative
 preclusion. 2
     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



     2    Agency adjudications at the USPTO are entitled to
 res judicata and collateral estoppel effect. B&B Hardware,
 Inc. v. Hargis Indus., Inc., 

575 U.S. 138

, 160 (2015). This
 case does not involve traditional concepts of res judicata or
 collateral estoppel since the proceeding is ex parte and not
 adjudicatory. The doctrine of administrative preclusion,
 similar to res judicata, may preclude repetitive applica-
 tions in some circumstances. See generally In re Barratt’s
 Appeal, 

14 App. D.C. 255

, 255–57 (D.C. Cir. 1899); Over-
 land Motor Co. v. Packard Motor Car Co., 

274 U.S. 417, 421

 (1927); In re Hitchings, 

342 F.2d 80, 85

 (CCPA 1965); In re
 Craig, 

411 F.2d 1333, 1336

 (CCPA 1969); In re Bose Corp.,
 

476 F.3d 1331, 1334, 1337

 (Fed. Cir. 2007); 4 Chisum on
 Pats. § 11.03[5][b].
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 IN RE: VOX POPULI REGISTRY LTD.                           7



 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, adver-
 tising 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 do-
 main 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 promo-
 tion of its services under the .SUCKS brand (irrespective
 of design format),” J.A. 134, and referencing sample adver-
 tising 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 do-
 main registrations year-over-year since the domain de-
 buted 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). The Board found that “[a]lthough this type of evi-
 dence helps show [Vox’s] intention to present the [stylized
 form of .SUCKS] in manners that are customary for service
 marks, this does not mean that consumers will perceive it
 as such,” and additionally determined that “the evidence
 showing that consumers will perceive .SUCKS as merely a
 gTLD outweighs [Vox’s] attempts to depict it as a source
 identifier.” J.A. 25.
     The record also contains declarations by two of Vox’s
 domain name registrar customers testifying that they per-
 ceive .SUCKS as a service mark. J.A. 140–41. The Board
 found this evidence “probative,” even though “these
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 8                             IN RE: VOX POPULI REGISTRY LTD.




 declarants may be more knowledgeable than the average
 consumer seeking to register a domain name.” J.A. 16. Vox
 argues on appeal that the Board should have afforded the
 declarations more weight because the declarants com-
 prised 50% of the relevant actual consumers (registrars) for
 Vox’s domain name registry services at the time of the dec-
 laration. Vox’s own statements, to the Board and on its
 website, view the class of relevant consumers more
 broadly: Vox noted that, as a domain name registry, it
 “work[s] with registrars to sell domain names to the pub-
 lic,” J.A. 374 n.4, and its website appears to target the gen-
 eral public for the sale of domain names, J.A. 38 (“dotSucks
 domains are exclusively available through our accredited
 Registrars. Below you will find a list of them all.”).
     We cannot conclude that the Board’s weighing of the
 evidence was unreasonable. Where the Board has reason-
 ably weighed the evidence, it is not the role of this court to
 reweigh evidence to reach a different conclusion, and we do
 not do so here.
                              III
     The sole remaining question then is whether the styl-
 ized design makes the stylized form of .SUCKS registrable.
     Design or stylization may make an otherwise unregis-
 trable mark registrable if the features “create an impres-
 sion on the purchasers separate and apart from the
 impression made by the words themselves.” Cordua, 

823 F.3d at 606

 (quoting In re Sadoru Grp., Ltd., 105
 U.S.P.Q.2d (BL) 1484, 1486 (T.T.A.B. 2012)). This evalua-
 tion is “necessarily a subjective matter which must be de-
 termined based on a viewer’s first impression.” Sadoru,
 105 U.S.P.Q.2d (BL) at 1486; see, e.g., In re Clutter Control
 Inc., 231 U.S.P.Q. (BL) 588, 589 (T.T.A.B. 1986) (finding
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 IN RE: VOX POPULI REGISTRY LTD.                             9




 created a “striking commercial impression” due to the
 “tubelike rendition of the letter ‘C’ in the words”); In re
 Jackson Hole Ski Corp., 190 U.S.P.Q. (BL) 175, 176
 (T.T.A.B. 1976) (finding




 created a separate impression due to the initial letters’ siz-
 ing and positioning). In contrast, this court has rejected a
 proposed mark where the form of the lettering was insuffi-
 ciently distinctive. See In re Northland Aluminum Prods.,
 Inc., 

777 F.2d 1556

, 1560–61 (Fed. Cir. 1985) (finding




 unregistrable for ring cake mix). In Sadoru, the Board sim-
 ilarly rejected




 (a stylized version of the Japanese word for “saddle”) as a
 proposed mark for motorcycle parts and accessories, noting
 that the proposed mark appeared to be “more in the nature
 of slightly stylized block lettering” than Japanese calligra-
 phy and that “although the tops of the letters ‘dip’ to give
 the upper portion of the mark a slightly concave shape, the
 depression is so minimal that it is not likely to make a sig-
 nificant impression on consumers.”             Sadoru, 105
 U.S.P.Q.2d (BL) at 1489.
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 10                           IN RE: VOX POPULI REGISTRY LTD.




      We see no error in the Board’s determination that the
 stylized form of .SUCKS fails to create a separate commer-
 cial impression. The Board noted that in the stylized form
 of .SUCKS, “[a]ll of the characters in the applicant’s mark
 are the same height and width and are merely displayed in
 a font style that was once mandated by the technological
 limitations of computer screens.” J.A. 23–24 (quoting ex-
 aminer). Vox cites to In re Serial Podcast, LLC, 126
 U.S.P.Q.2d (BL) 1061 (T.T.A.B. 2018), to support its argu-
 ment that “even fonts with limited stylization render the
 marks distinctive,” Vox Opening Br. at 11, but that is an
 inaccurate characterization of the case. In Serial, the
 Board found that the wording, lettering, coloring, and geo-
 metric background components of




 were not inherently distinctive and that “even viewed all
 together” were “on the less distinctive part of the spec-
 trum.” 126 U.S.P.Q.2d at 1075. The Board nonetheless
 found that the stylized marks had acquired distinctiveness
 for a podcast in a serialized format and were therefore reg-
 istrable. Id. at 1078.
      Vox cites to declarations from its customers “testifying
 that they perceive .SUCKS – on its own, regardless of styl-
 ization – as a service mark of [Vox].” Vox Opening Br. at
 24 (emphasis in original). These declarations are unper-
 suasive because as Vox itself acknowledged in its briefing,
 the declarations are made without regard to the stylization
 of the stylized form of .SUCKS and do not mention the styl-
 ization at all, which is the relevant inquiry here. See also
 Oral Arg. at 7:27–31. In light of the absence of contrary
 evidence, the Board reasonably concluded that “given the
 ubiquity of the design in the ‘early days’ of computing,
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 IN RE: VOX POPULI REGISTRY LTD.                          11



 consumers would view pixelated lettering as ordinary” ra-
 ther than as a source identifier. J.A. 25. 3
                        CONCLUSION
    The Board’s decision affirming the refusal of the ’215
 application is affirmed.
                        AFFIRMED




     3   To be sure, because we are not dealing with a ge-
 neric mark, acquired distinctiveness may make the styl-
 ized form of .SUCKS registrable “if it can be shown by
 evidence that the particular display which the applicant
 has adopted has acquired distinctiveness.” Cordua, 

823 F.3d at 606

 (quoting Sadoru, 105 U.S.P.Q.2d (BL) at 1486).
 There is no claim or evidence of acquired distinctiveness in
 this case. J.A. 26.