[00:00:00] Speaker 03:
The next case is Inrey Vox Copley Registry, 2021, 1496.

[00:00:07] Speaker 03:
Is Mr. O'Connell in the courtroom?

[00:00:28] Speaker 02:
Good morning.

[00:00:29] Speaker 02:
Good morning, Your Honors.

[00:00:30] Speaker 02:
May it please the Court.

[00:00:33] Speaker 02:
This case is about whether a mark that incorporates a top-level domain can be registered as a trademark when it is treated by its owner as a trademark, when it is displayed in a stylized format like a trademark, when it is successfully promoted as a brand, whether it's displayed in the places that trademarks are typically displayed,

[00:00:57] Speaker 02:
And when it's recognized by customers and peers in the industry as a trademark, the office is determined that it cannot.

[00:01:04] Speaker 04:
This whole notion of source identifier is very ill-defined.

[00:01:09] Speaker 04:
We don't have very many cases about it.

[00:01:12] Speaker 04:
And I wonder if the issue here really isn't a descriptiveness issue.

[00:01:18] Speaker 04:
which we've characterized as the opposite side of the same coin as source identifier.

[00:01:24] Speaker 04:
I know the board didn't discuss it that way, but isn't that really what's going on here?

[00:01:30] Speaker 02:
I would certainly agree with you, Your Honor, to the extent that there are similar concepts at play in a lot of similar language.

[00:01:39] Speaker 02:
And some of the same cases are being discussed in the briefs.

[00:01:43] Speaker 02:
We, descriptiveness was not the basis for the refusal below and we submit and have taken the position all along that our mark is not descriptive because the services here are domain registry operation services and SOX or DOT SOX doesn't

[00:02:02] Speaker 02:
describe that nor does it describe the content of the sites that might be?

[00:02:08] Speaker 04:
It seems to me that there could be an issue about that as to whether it's merely descriptive but as you say that doesn't seem to have been addressed by the board and I wonder whether the board has put this rejection into the wrong box that's really talking about descriptiveness rather than

[00:02:30] Speaker 04:
source identifier because it's hard to see why DotSucks couldn't be perceived by the public as a source identifier for your client who provides registrant services.

[00:02:51] Speaker 02:
I couldn't agree more your honor.

[00:02:55] Speaker 02:
What the office has instead taken the position is that

[00:02:59] Speaker 02:
The mark cannot function as a trademark.

[00:03:02] Speaker 02:
And a key difference in this posture is that the burden of proof is on the office.

[00:03:10] Speaker 02:
And the office has to adduce substantial evidence supporting that conclusion.

[00:03:14] Speaker 02:
And our position is that not only is there no substantial evidence to support that determination, in fact, it runs contrary to virtually all of the evidence.

[00:03:24] Speaker 01:
I read the opinion as saying it does not serve

[00:03:28] Speaker 01:
as a source identifier, not that it cannot.

[00:03:32] Speaker 01:
And I'm wondering what language you would point me to to understand your point of view.

[00:03:39] Speaker 02:
Your honor, I think part of the difficulty is that a central issue in this case, a central factual issue in this case, is whether the stylization of the mark makes it sufficiently distinctive to be a source identifier or registrable.

[00:03:58] Speaker 02:
That brings in a lot of cases about descriptive marks and about acquired distinctiveness.

[00:04:06] Speaker 02:
Those cases all are devoted to exactly your question, Your Honor, whether the mark does in fact function as a mark.

[00:04:12] Speaker 02:
Fairy to function is a slightly different concept, and it's whether the mark can function as a mark.

[00:04:20] Speaker 02:
In any event, we believe that the evidence below shows that not only can

[00:04:25] Speaker 02:
this dot socks stylized logo function as a mark, it in fact does so.

[00:04:30] Speaker 01:
Now can I ask you something?

[00:04:32] Speaker 01:
I have another one.

[00:04:32] Speaker 01:
You know your standard character mark dot socks was denied registration for failing to indicate a source, right?

[00:04:41] Speaker 02:
Yes.

[00:04:41] Speaker 01:
And you didn't appeal from that?

[00:04:42] Speaker 02:
That's correct.

[00:04:43] Speaker 01:
So doesn't that create a little bit of a clatter all stop all issue for you?

[00:04:47] Speaker 01:
I mean you have to really just rely on the stylization I guess now because

[00:04:53] Speaker 01:
there's a factual determination that .sucks is not a source identifying, and that was obviously necessary to the board's decision.

[00:05:01] Speaker 01:
It was litigated before the board, and it was actually decided by the board on the merits.

[00:05:07] Speaker 01:
So why doesn't that create an estoppel issue for you?

[00:05:09] Speaker 02:
We're not disputing here that the character string .sukks is a top-level domain.

[00:05:18] Speaker 02:
But what we are saying here is that when looking at the logo and the addition of the stylized elements, that creates something more.

[00:05:29] Speaker 02:
It's something more than a top-level domain because you can't use stylization when you're entering a domain in an address bar or in a search engine.

[00:05:38] Speaker 02:
That stylization has to perform a different function, some function.

[00:05:43] Speaker 02:
In this case,

[00:05:46] Speaker 02:
that that function is to identify source.

[00:05:49] Speaker 02:
And we then say that if you look at the case law about failure to function and about how to assess when a mark truly identifies source and functions as a mark and post properties is the primary case on that, we have satisfied all of those criteria in terms of where the mark is displayed, how it's displayed,

[00:06:13] Speaker 02:
It's in a distinctive font.

[00:06:17] Speaker 02:
It's separated visually from the rest of the content.

[00:06:20] Speaker 02:
If you look at the client's web page, excuse me, the appellant's web pages that are in the record.

[00:06:28] Speaker 02:
We also have evidence from the appellant's COO testifying to the marketing efforts and the success of those efforts.

[00:06:38] Speaker 02:
We have evidence from the appellant's customers

[00:06:42] Speaker 02:
testifying that they consider the DotSucks brand to be a brand and from an independent industry consultant.

[00:06:51] Speaker 02:
Again, saying that in her experience that DotSucks, the mark, is in fact a trademark.

[00:06:58] Speaker 04:
But those are directed to the non-stylized version of the DotSucks.

[00:07:06] Speaker 02:
potential mark, right?

[00:07:08] Speaker 02:
We submitted those declarations, the same declarations in support of both cases, which essentially were on parallel tracks the entire way up.

[00:07:18] Speaker 04:
Correct me if I'm mistaken about this.

[00:07:19] Speaker 04:
The declarations are not directed to the unique aspects of the stylized version of the mark, but to the underlying notion that DocSucks can function as a mark.

[00:07:30] Speaker 02:
You're right, Your Honor.

[00:07:31] Speaker 02:
The declarations don't mention the stylization, but

[00:07:34] Speaker 02:
The stylized mark is the mark that was in use at the time.

[00:07:38] Speaker 02:
And so that's the mark that those declarants were looking at when they made those declarations.

[00:07:43] Speaker 04:
I think Judge Stoll's point is you can't very well now say that our mark is registrable because in the non-stylized version, it's registrable when you've given up on that point.

[00:07:57] Speaker 02:
You're right, Your Honor.

[00:07:58] Speaker 02:
We're not advocating here for the non-stylized mark.

[00:08:01] Speaker 02:
This appeal is about the stylized mark.

[00:08:05] Speaker 02:
And again, when you add the stylization and when you add the other evidence in terms of how it's used, we believe that creates a sufficiently different commercial impression from just the top-level domain to make a successful trademark.

[00:08:26] Speaker 02:
Now the office's burden, again, was substantial evidence.

[00:08:31] Speaker 02:
The office has pointed to four categories of evidence to show that this mark is not a trademark.

[00:08:40] Speaker 02:
Excuse me, fails to function as a trademark.

[00:08:43] Speaker 02:
First, that we've admitted that .sucks is a TLD.

[00:08:48] Speaker 02:
Second, there's evidence of third-party registrars identifying .sucks as a top-level domain.

[00:08:56] Speaker 02:
Third, there's news articles that identify, again, DotSox as a top-level domain.

[00:09:03] Speaker 02:
And then fourth, which is really a subcategory of the other two, those same news articles and industry sources that identify the appellant by name, Vox Populi, as the source of those services.

[00:09:17] Speaker 02:
And that's all there is.

[00:09:18] Speaker 02:
And I suggest to your honors that

[00:09:20] Speaker 02:
All of that proves the one thing that has never been in dispute, which is that DOT SUCKS is a top-level domain.

[00:09:29] Speaker 02:
But that doesn't constitute substantial evidence that the DOT SUCKS stylized logo fails to function as a trademark, particularly when you look at what's on the other side of the ledger, the evidence that the applicant introduced below.

[00:09:47] Speaker 02:
There is, as I said, first the declaration from the applicant itself

[00:09:51] Speaker 02:
attesting to the marketing efforts, attesting to the types of different marketing that's done in the advertisements, the success of that marketing and promotion through the growth of the business.

[00:10:03] Speaker 02:
Second, there's the declarations from the applicant's customers, attesting that they recognize DotSucks as a brand.

[00:10:11] Speaker 02:
Third, there's the declarations from an independent third-party consultant.

[00:10:18] Speaker 02:
saying that she and her peers in the industry recognized DotSucks as a brand.

[00:10:23] Speaker 02:
Then there is the post-properties evidence, the evidence that shows how the applicant uses the mark itself, how it's displayed on the website, how it was displayed in the sample advertising materials that were submitted.

[00:10:39] Speaker 01:
What is your best evidence that really goes to the stylized version of the design?

[00:10:45] Speaker 02:
I would suggest, Your Honor, the website evidence is probably the best evidence.

[00:10:49] Speaker 02:
What you see in the website evidence is that dot sucks the loco.

[00:10:54] Speaker 01:
I'm just looking at page 824 and 825.

[00:10:56] Speaker 01:
I just want to make sure I'm looking at the right thing.

[00:11:04] Speaker 01:
This is the decision.

[00:11:05] Speaker 01:
I just want to make sure I understand what you think is your strongest evidence.

[00:11:14] Speaker 01:
There's some photos on there, pictures.

[00:11:18] Speaker 02:
Excuse me, Your Honor.

[00:11:23] Speaker 02:
I would point the court to A13.

[00:11:27] Speaker 02:
Those are the two of the website screenshots that were submitted below.

[00:11:34] Speaker 02:
And what you see on those pages, first is that the logo appears in the top left corner.

[00:11:41] Speaker 02:
that it's visually separated from everything else.

[00:11:44] Speaker 02:
It's in a font that's not used anywhere else on the page.

[00:11:50] Speaker 02:
It's in all caps and it's larger than anything else.

[00:11:56] Speaker 02:
The other thing I would suggest to your honor is that on those pages there's the logo, but in the text of those pages the applicant uses the phrase

[00:12:08] Speaker 02:
Dot sucks domains with the dots spelled out D O T S U C K S domains.

[00:12:13] Speaker 02:
And that's how they distinguish the brand from the product or the service.

[00:12:18] Speaker 01:
Well, there's also the page eight 13.

[00:12:21] Speaker 01:
It says why that sucks.

[00:12:22] Speaker 01:
That's not stylized or anything.

[00:12:24] Speaker 01:
And that's not spelling out dot, right?

[00:12:28] Speaker 01:
I just want to make sure I'm following you.

[00:12:30] Speaker 01:
I don't know that that's what you've said is accurate.

[00:12:34] Speaker 02:
You're right, your honor.

[00:12:35] Speaker 02:
And I don't think that that's

[00:12:36] Speaker 02:
That particular box on the page is intended to be a trademark usage.

[00:12:43] Speaker 02:
That's more part of the text inviting the reader to dig in.

[00:12:47] Speaker 02:
OK.

[00:12:50] Speaker 03:
Counsel, you're into your rebuttal time.

[00:12:52] Speaker 03:
You may continue or save it as you wish.

[00:12:55] Speaker 02:
I will hold my time, Your Honor.

[00:12:57] Speaker 02:
Thank you.

[00:13:01] Speaker 03:
Ms.

[00:13:01] Speaker 03:
Heber?

[00:13:11] Speaker 03:
They don't need your mask unless you want it.

[00:13:13] Speaker 00:
I'm going to remove it.

[00:13:14] Speaker 00:
Thank you.

[00:13:15] Speaker 00:
Good morning, and may it please the court.

[00:13:17] Speaker 00:
I believe I heard counsel say that they are not advocating here for the non-stylized mark, so I'll focus my remarks on the stylized version and the substantial evidence.

[00:13:28] Speaker 04:
Is it in your position that in order to argue for the stylized mark, they have to disclaim the non-stylized mark?

[00:13:36] Speaker 00:
Correct.

[00:13:37] Speaker 00:
That's because it is only being perceived by consumers as a GTLD.

[00:13:43] Speaker 00:
And I'll briefly address the point that Your Honor made earlier about failure to function and could this be descriptiveness.

[00:13:54] Speaker 00:
A failure to function refusal is made under sections 1, 2, and 45 of the Act.

[00:13:59] Speaker 00:
It's definitional about what is a trademark.

[00:14:02] Speaker 00:
Council, I'm sorry.

[00:14:03] Speaker 01:
Could you just raise your voice a little bit?

[00:14:04] Speaker 01:
Oh, absolutely.

[00:14:05] Speaker 04:
Could it be the program deputy to just turn up the volume a little bit?

[00:14:09] Speaker 00:
I apologize.

[00:14:12] Speaker 00:
It's definitional about meeting the definition of a trademark in the Act to identify and distinguish somebody's services from those of others and to indicate their source.

[00:14:22] Speaker 00:
There's lots of different failure to function based refusals.

[00:14:26] Speaker 00:
You can think of things like color and product design where there's not consumer predisposition.

[00:14:31] Speaker 00:
Generic terms fall under that same category.

[00:14:34] Speaker 00:
And could there have been maybe a generic mis-refusal here?

[00:14:38] Speaker 00:
It might be possible, because the way the services ID is written, it's really saying the product of our service, we operate the registry for this TLD.

[00:14:48] Speaker 00:
It is the TLD, the mark they're seeking to register.

[00:14:51] Speaker 00:
I believe the board gave an example in their opinion that if I'm a provider of tables, I can't have tables as my mark.

[00:15:00] Speaker 00:
This is kind of like that, but it's all under this failure to function umbrella, and here because the GTLD is its own.

[00:15:07] Speaker 04:
Which I find to be a very confusing area.

[00:15:09] Speaker 04:
We don't, in our court, or our predecessor court, have very many cases about this, and none of them seems to be similar to this.

[00:15:19] Speaker 04:
I guess I understand that there may be circumstances where failure to function is distinct from descriptiveness, for example, your color example.

[00:15:29] Speaker 04:
or situations where the more good sort to be registered or a stop sign icon for a soft drink or things like that.

[00:15:39] Speaker 04:
Those don't seem to be descriptiveness cases and yet they do seem to fall out of the failure to function category.

[00:15:46] Speaker 04:
But I'm really wondering, as I said before, whether this isn't a descriptiveness case rather than a failure to function case.

[00:15:57] Speaker 00:
It could be, Your Honor.

[00:15:59] Speaker 00:
I think the failure to function here is appropriate because it's really talking about how do consumers perceive this.

[00:16:05] Speaker 00:
And their predisposition is that this is a GTLD, which again is not in dispute here.

[00:16:10] Speaker 00:
That is a web address.

[00:16:12] Speaker 00:
That is its function in the world, is to be a web address.

[00:16:15] Speaker 04:
I want to register my domain name.

[00:16:17] Speaker 04:
But some web addresses do serve as marks when we have the Supreme Court case.

[00:16:22] Speaker 00:
Domain names can.

[00:16:24] Speaker 00:
There was nothing at issue in Booking.com that disputed the really settled notion that a GTLD by itself serves no source indicating function.

[00:16:33] Speaker 00:
The only exception really is in this situation where you do have the .brand contract with ICANN.

[00:16:40] Speaker 00:
What happened was ICANN expanded the number of top-level domains that they wanted people to be able to register domain names in.

[00:16:50] Speaker 00:
When they did that, they had some that are this generic string.

[00:16:54] Speaker 00:
There are public interest commitments that go with that.

[00:16:56] Speaker 00:
You can't restrict

[00:16:57] Speaker 00:
who can register that when you have a generic string GTLD.

[00:17:01] Speaker 00:
The dot brands, on the other hand, have different, the contracts with ICANN have different termination provisions and they're owned by a brand owner.

[00:17:09] Speaker 00:
They have to establish, people know this is me.

[00:17:12] Speaker 00:
If you take, I don't know if they have it or not, but like if you would take Nike, okay, you know that it's the shoe manufacturer, dot Nike would be controlled and administered by Nike.

[00:17:22] Speaker 00:
It has some brand association.

[00:17:24] Speaker 00:
They're allowed under their contract with ICANN, if you have a .brand one, to limit who can register in that domain.

[00:17:30] Speaker 00:
Vox Populi here has the contract with ICANN that says they can't limit who can register in their domain.

[00:17:37] Speaker 00:
So they're different things, but the point is that across the board, these TLDs serve the purpose of being web addresses.

[00:17:45] Speaker 00:
And so it's not a never can they function, and for me to bring it back to the stylization, right?

[00:17:50] Speaker 04:
If they had... So the idea is that the consumer would think of that as relating to this GLD or whatever it's called, rather than as a source identifier for a particular supplier.

[00:18:08] Speaker 00:
That's correct.

[00:18:09] Speaker 01:
But it could be both, right?

[00:18:12] Speaker 01:
I want to make sure I understand what you're saying, which is are you saying that

[00:18:16] Speaker 01:
a DTLD could never be a trademark unless they're already, okay.

[00:18:20] Speaker 01:
I just want to make sure it is clear.

[00:18:22] Speaker 01:
I am not saying that.

[00:18:23] Speaker 01:
And this opinion in particular, just as a follow on, this opinion in particular is not saying that dot sucks could never function as a source identifier.

[00:18:33] Speaker 01:
It will never be able to.

[00:18:34] Speaker 01:
Instead it's saying based on the evidence so far, it does not.

[00:18:39] Speaker 00:
Is that right?

[00:18:39] Speaker 00:
That is a hundred percent correct.

[00:18:41] Speaker 00:
This is an evidence-based determination.

[00:18:43] Speaker 00:
There is not evidence in this record that consumers perceive DotSux for these services as anything other than the GTLD.

[00:18:53] Speaker 00:
But a different record that showed that DotSux is a brand to consumers would potentially result in a different outcome.

[00:19:03] Speaker 00:
It's not a per se.

[00:19:04] Speaker 04:
We could also acquire distinctiveness, right?

[00:19:06] Speaker 00:
Correct.

[00:19:06] Speaker 00:
That's right.

[00:19:07] Speaker 00:
And here, the focus on the stylized version is,

[00:19:12] Speaker 00:
does this pixelated font save it from being ineligible for registration here?

[00:19:18] Speaker 00:
And the board found it didn't and there is substantial evidence in the record that supports that decision.

[00:19:23] Speaker 00:
We can start with the mark description itself that refers to the font suggesting an LED display in various places in the record below and in their briefing to the board.

[00:19:37] Speaker 00:
They referred to the stylization as a retro font

[00:19:40] Speaker 00:
Pretty much everything was displayed in when we had old computers that had technological limitations.

[00:19:48] Speaker 00:
Fox Populi is pointing to their own usage, but just using something in the manner of a trademark visually doesn't mean consumers perceive it that way.

[00:19:58] Speaker 00:
And as Your Honor pointed out, the example that's shown on appendix at page 13,

[00:20:05] Speaker 00:
They have it in the upper left-hand corner, but then they have y.sex.

[00:20:09] Speaker 00:
The content of the web page itself reinforces the perception that it's just a TLD.

[00:20:15] Speaker 00:
There's no other design or color or anything that goes above and beyond the impression of the term .sex serving as a TLD.

[00:20:23] Speaker 01:
What about the image or photograph at page A25?

[00:20:27] Speaker 01:
That to me seems maybe more convincing.

[00:20:36] Speaker 00:
That is, it's used there, but again, we can't think about the abstract.

[00:20:43] Speaker 00:
What are the services that they're talking about?

[00:20:45] Speaker 00:
Operating the registry for the TLD.

[00:20:48] Speaker 00:
So just if I see this and I see .SEX, and I have no idea what .SEX is referring to, but that's not the context in which we have to look at consumer perception.

[00:20:58] Speaker 00:
It's always in the context of the service.

[00:21:00] Speaker 04:
So they'd actually have to provide

[00:21:02] Speaker 04:
evidence consumer affidavits or something like that saying that we perceive this as a mark and that's what's missing here.

[00:21:11] Speaker 00:
That's exactly what's missing here because the three declarations that they have, as has been pointed out, they mention nothing at all about the stylization.

[00:21:19] Speaker 00:
They're all directed to the GTLD itself and even in at least one of those declarations the declarant is acknowledging that the GTLD is the product that they're selling.

[00:21:29] Speaker 00:
So this really is

[00:21:32] Speaker 00:
in a way, a failure to develop the record.

[00:21:36] Speaker 00:
And the record we have here amply supports the board's finding that the mark should be refused.

[00:21:44] Speaker 00:
If the court has no further questions.

[00:21:47] Speaker 03:
Thank you, Ms.

[00:21:48] Speaker 03:
Haber.

[00:21:50] Speaker 03:
Mr. O'Connell has a little rebuttal time.

[00:22:04] Speaker 02:
Thank you, Your Honors.

[00:22:08] Speaker 02:
The office has taken the position that the font is not sufficiently striking, and striking is the word that appears in the case law, sufficiently striking to create a distinctive commercial impression and to turn this top-level domain into a trademark.

[00:22:26] Speaker 02:
And counsel has said that there was substantial evidence in the record to support that finding, but that's not the case, respectfully, Your Honors.

[00:22:35] Speaker 02:
The office's brief refers back to the same sentence in the TTAB opinion, and that sentence hasn't got a single citation to authority or case law.

[00:22:45] Speaker 02:
It's simply a subjective judgment on the part of the office that this particular font somehow isn't good enough.

[00:22:54] Speaker 04:
Well, but it does seem as though there's nothing on the record as to how consumers would perceive

[00:23:03] Speaker 04:
the stylized version of this mark, right?

[00:23:06] Speaker 04:
I mean, the fact that you have, for example, on A13 a website which uses the stylized version doesn't really say anything about consumer protection, does it?

[00:23:18] Speaker 04:
Perception, does it?

[00:23:22] Speaker 02:
You're right, Your Honor.

[00:23:23] Speaker 02:
The website in itself does not address consumer perception.

[00:23:26] Speaker 02:
we submit that the declarations we submitted in fact do.

[00:23:29] Speaker 02:
They are the only direct evidence of consumer perception in the record.

[00:23:34] Speaker 02:
Except they don't say anything about the stylized version.

[00:23:37] Speaker 02:
I understand that, Your Honor, but as I said, the stylized version was the mark that they were looking at when those declarations were executed.

[00:23:45] Speaker 02:
And in addition to that, there is the evidence of the growth of the business, which there's ample case law saying that the growth of the business

[00:23:56] Speaker 02:
is probative evidence of the success of brand building and marketing efforts.

[00:24:02] Speaker 02:
And on the other side of that, there's absolutely no evidence of direct consumer perception that was put forward by the office.

[00:24:09] Speaker 02:
The office merely put in the evidence establishing that DotSox is a TLD.

[00:24:15] Speaker 04:
In these past cases about stylized marks, if I recall correctly,

[00:24:20] Speaker 04:
there are instances in which the board made this determination that a stylized mark wasn't registrable without having evidence of consumer perception.

[00:24:37] Speaker 02:
Your Honor, those are largely descriptiveness cases, which this case is not, or genericness cases, which this case is not.

[00:24:47] Speaker 02:
But I suggest that

[00:24:49] Speaker 02:
Applicants need to have consistency and objectivity in these determinations.

[00:24:54] Speaker 02:
And the mere subjective judgment that a font isn't sufficiently striking isn't an appropriate standard and isn't supported by substantial evidence.

[00:25:05] Speaker 04:
So it sounds as though you're putting the burden on PTO to go off and get affidavits from consumers to support their position.

[00:25:13] Speaker 02:
I understand that the office doesn't have the means to be able to conduct surveys or get affidavits of their own, which is why typically in such cases, what the office will do is let the mark be published and let our competitors take a crack at it in the opposition period, where then you have parties with the means and the motivation to create a fuller record for perhaps a better decision.

[00:25:44] Speaker 03:
Any final thought, counsel?

[00:25:46] Speaker 03:
No, thank you, your honor.

[00:25:47] Speaker 03:
Thank you.

[00:25:49] Speaker 03:
Case is submitted.