Monday, January 09, 2023

"ASSHOLES LIVE FOREVER" Fails to Function as a Trademark, Says TTAB

Despite the Supreme Court's ruling in Iancu v. Brunetti, deeming the "scandalous and immoral" provision of Section 2(a) unconstitutional, your run-of-the mill obscenities are going to face a difficult hurdle to registration: failure-to-function. Mr. Brunetti himself found that out last year when his attempt to register "FUCK" failed to clear that hurdle. [TTABlogged here]. Kirill's Big Brain, LLC met the same fate in its attempt to register ASSHOLES LIVE FOREVER for a potpourri of goods in 14 classes, including air fragrance preparations, jewelry, clothing, and bath mats. The evidence submitted by Examining Attorney Jacob Vigil showed "wide-spread third-party use of the proposed mark generally as an expression and in an ornamental manner on goods the same as and similar to those identified in the involved application." In re Kirill’s Big Brain, LLC, Serial No. 90033810 (January 6, 2023) [not precedential] (Opinion by Judge Christen M. English).

Relying on a string of TTAB precedents, the Board observed that informational matter fails to function as a trademark if it comprises a common term or phrase that consumers are accustomed to see in use by various sources to convey ordinary, familiar, or generally understood concepts or sentiments, rather than serving as a source indicator. The key question is, of course, how the consumer perceives the proposed mark.

The Examining Attorney provided more than 30 examples of third-party use of the phrase ASSHOLES LIVE FOREVER on such items as clothing, home décor, stickers, cell phone cases, drinking glasses, bottles, and mugs. The record also included use of the phrase other than in connection with goods included in the subject application: for example, media articles, social media posts, and podcasts.

Applicant Kirill's challenged the very nature of the failure-to-function refusal, contending that it is "paying the price for an unintended but arguably unfair overzealous application of flawed analysis." The Board, however, rejected the argument that the failure-to-function refusal is arbitrary or unfair. As it recently explained in the "FUCK" case:

[T]he Trademark Act does not specifically articulate “failure to function” in haec verba as a ground for refusal of a proposed mark. However, . . .  the starting point for registration is the statutory definition of a trademark. A word that fails to distinguish goods or services does not meet the statutory definition of a trademark, and thus cannot be registered. 15 U.S.C. §§ 1051, 1127. . . . Like genericness, “failure to function” finds its statutory basis in Section 45’s definition of a trademark. And, an entire body of law — starting over 60 years ago with the Court of Customs and Patent Appeals decision in Standard Oil — has developed that provides guidance on how Trademark Act Section 45’s definition of “trademark” applies to merely informational matter, including widely-used commonplace terms and expressions. That body of law recognizes that such terms and expressions are usually taken by consumers at their ordinary meaning and are not perceived as identifying and distinguishing one party’s goods from those of others or indicating their source.

Turning to the substance of the refusal, the Board observed that Kirill's prominently displays the proposed mark as an "adornment on many of the identified goods. "The placement, size, and dominance of the expression ASSHOLES LIVE FOREVER on Applicant’s goods is consistent with conveying a common sentiment rather than signifying a brand or indicating a source." The Board acknowledged that Kirill's uses the phrase in a trademark manner on some of its specimens of use, but that alone does not negate the failure-to-function refusal.

The Board concluded that the Examining Attorney established "a reasonable predicate, i.e., a prima facie case, that ASSHOLES LIVE FOREVER is a widely used message that consumers are accustomed to seeing displayed in a non-source identifying manner on a number of different goods such that the proposed mark fails to serve a source-identifying function for Applicant’s goods."

Skirill's argued that the refusal is improper because ASSHOLES LIVE FOREVER does not convey information, but the Board pointed out that "merely informational matter" includes 'widely-used common place terms and expressions' regardless of the specific nature of the message conveyed." "[W]idespread use of a term or phrase may be enough to render it incapable of functioning as a trademark, regardless of the type of message."

Skirill's further argued that the third-party uses are irrelevant because they post-date its first use of the mark, and thus those uses constitute infringement of Skirill's mark. The Board, however, found Skirill's evidence to be insufficient: "we find that Applicant has not proven that it made prominent use of its mark before the third-party uses arose such that we can conclude the third-parties are infringers and did not independently adopt the use of 'assholes live forever' or adopted the phrase to tread on any trademark rights of Applicant." Moreover, there was no evidence that Skirill's made any effort to police its purported mark. "Without such evidence, we must presume that the third party uses are still in the marketplace and are part of the environment in which relevant consumers will encounter Applicant’s mark."

Finally, the Board observed that third-party registrations for such marks as HEROES LIVE FOREVER or LOVE LIVES FOREVER were not probative. They may show that "LIVE FOREVER" marks are not inherently unregistrable, but there was no evidence that "consumers regularly encounter these [third-party marks] used in the same way as the mark in question, namely, as an expression that is commonly used as such on a wide variety of goods." Furthermore, each case must be decided on its own evidentiary record.

And so, the Board affirmed the refusal

Read comments and post your commenthere.

TTABlogger comment: If one considers ASSHOLES LIVE FOREVER as inherently distinctive, why would Skirill's have to show that it made "prominent" use of the mark to prove priority? Wouldn't any non-de miminis use of the mark suffice? And why does Skirill's have to prove that the third-parties copied its mark? Wouldn't it be better to say that the third-party evidence is relevant because the issue at hand is decided as of the time of the USPTO final refusal, not at the time of application?

Text Copyright John L. Welch 2023.


At 1:18 PM, Anonymous Anonymous said...

This decision and its rational are crap. It's basically, "the USPTO doesn't like your mark, so bugger off." The USPTO registers piles of descriptive and otherwise junk marks without batting an eye. This mark, though, and "FUCK", are no less capable of functioning as a mark than say, "APPLE". However, because the Board doesn't like curse words, the Board has manufactured an excuse to refuse.

At 11:39 AM, Anonymous Anonymous said...

I really hope the applicant appeals and the TTAB gets it's overdue spanking for all this "failure to function" nonsense. It's just an excuse examiners and the board use to refuse registrations when they have no cognizable legal argument.

At 9:41 PM, Anonymous Anonymous said...

To censor one is failure to censor the ones censoring. The word doesn’t judge as the taking of said word. One can view the word for what it is.a fucking word and that’s all it is. Stop being so hurt from a silly word and fix the real problems.#itsfucked

At 9:58 PM, Anonymous Anonymous said...

What ever happened to our 1st Amendment Rights?

At 7:18 AM, Anonymous Becca Sue said...

Bullshit. I wish it was still the 90s, when everyone wasn’t such a little bitch, and offended by everything. The world is now broken.

At 3:55 PM, Anonymous Monique Rodriguez said...

Ditto this generation is full of SISSY, La la’s Nobody can write or say anything publicly without someone being offended. If it’s not written specifically to you, then shut the fuck up don’t read it and stay the fuck home and don’t come out because we live in America free-speech land of the free I thought but the more they start taking away our rights for example, banning shit like flavored tobacco what’s next we’re all gonna have to you wear uniforms and have a curfew slowly but surely they’re taking away our freedom and it is bullshit

At 12:13 AM, Anonymous Anonymous said...

Disappointed by far. This brand has worked so hard for years to be denied over such a petty reason.

At 9:52 PM, Anonymous Anonymous said...

Amen! 🙌

At 11:23 PM, Anonymous Anonymous said...


At 4:21 PM, Anonymous Anonymous said...

Said perfectly

At 4:58 PM, Anonymous Anonymous said...

Whatever happened to our constitutional right to protection of our freedom of speech or protection of intellectual property?? This is an original idea/brand name (unlike the single word “Fuck”) that was conceived out of genuine artistic creation. Nonetheless, a president to protecting designers’ brand names that some individuals may find offensive has been set by the Supreme Court. Both clothing brands FUCT (Friends U Can’t Trust) as well as The Slants (designed by an Asian American) won their trademark rejections after appealing and in both cases the justices thoroughly agreed that the original trademark rejections clearly “violated the First Amendment because it discriminated [the brand’s name] on the basis of viewpoint.” Basically, these rulings firmly solidified the overwhelming opinion of the public that it is the decision of individual to either buy these brands or not and that government bureaucrats shouldn’t be allowed to decide what they subjectively think is offensive language as it violates all American’s innately endowed First Amendment right (Previous court cases: Mattal vs. Tan [2017] and Iancu v. Brunetti [2019]). These previously alpealed cases further established that a trademark cannot be rejected based on the Disparagement Clause of the Lanham Act of 1946. Furthermore, if we consider the core issue of ALF’s rejection, which is obvious that it would be seen as offensive, these previous case rulings establish this is not grounds for rejection. Additionally, if ‘FUCK’ was rejected, but the brand FUCT was given a trademark after appeal, then the argument that “Assholes Live Forever” is common language is ridiculous as it is far more unique and is a whole phrase, which again negates their grounds for rejection. PLEASE APPEAL THIS DECISION! Has history not taught us anything about ‘scandalous’ artists/works of art/creations? We now covet these once ‘racey’ and censored items as highly collectible as well as honor and look up to the artist as a fearlessly progressive leader for their time period (e.g. Georgia O’Keefe’s paintings of flowers closeup were once extremely provocative, however, now are widely celebrated, highly collectible, and are priceless). Thus, appeal this ridiculous ruling and do not let the government attempt to subjectively prevent you from profiting off of your original idea and deny you freedom of speech as this regresses the progressive litigation that has already been set by previous cases just like this one that are were fairly straightforwardly overturned in court.


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