CAFC Vacates and Remands TTAB's Affirmance of F**K Failure-to-Function Refusal Due to Lack of Clarity

A divided CAFC panel has vacated the TTAB's decision [TTABlogged here] affirming a failure-to-function refusal of the mark FUCK for phone cases, jewelry, bags, and retail store services (in four separate applications). The appellate court rejected many of Applicant Brunetti's arguments but concluded that "the decision of the Board lacks sufficient clarity," and so it remanded the case to the Board for further consideration. In re Erik Brunetti, 2025 USPQ2d 1105 (Fed. Cir. 2025) [precedential].

The Board found that the word FUCK "expresses well-recognized familiar sentiments and the relevant consumers are accustomed to seeing it in widespread use, by many different sources, on the kind of goods identified in the [applications at issue]." Therefore, the mark "does not create the commercial impression of a source indicator, and does not function as a trademark to distinguish Applicant’s goods and services in commerce and indicate their source."

The CAFC began by rejecting Brunetti's arguments that the USPTO violated the First Amendment by engaging in viewpoint discrimination since it has registered "positive terms" like LOVE, but refuses to register "negative terms" or "profanity." The Board, however, stated the failure-to-function refusal "applies evenhandedly regardless of the viewpoint expressed," and the CAFC saw no deviation from that principle.

Next, the court rejected Brunetti's accusation that the Office was retaliating against him because of the Supreme Court's ruling in Iancu v. Brunetti, deeming unconstitutional the Section 2(a) bar to registration of immoral or scandalous marks. Brunetti provided no evidence of any retaliation.

The CAFC then brushed aside Brunett's claim that Iancu v. Brunetti dictates the outcome here. That case addressed a different issue, and a fundamentally different mark (FUCT). It did not concern the issue of whether the mark FUCK fails to function as a trademark.

Turning to the substance of the refusals, the court observed that "[i]t is well-established that an applied-for mark that does not serve as a source identifier fails to function as a trademark and should be refused federal trademark registration." Brunetti argued that the Board had misconstrued the failure-to-function doctrine by holding that marks cannot be registered if they are "widely-used commonplace terms." However, the Board "appropriately acknowledged" that "commonality" cannot be the basis for refusing registration.

The Board focused on the use of FUCK as an "all-purpose word." The CAFC saw no error in the Board's factual determination regarding "the ubiquity of the term FUCK as an expression to convey a wide[] range of recognized concepts and sentiments."

But Mr. Brunetti argues that the Board erred by allowing the registration of some all-purpose word marks while inexplicably denying registration of others, including registrations for the word FUCK, without any explanation as to the difference. For example, Mr. Brunetti argues that the PTO has registered other marks consisting only of a ubiquitous word that has a variety of meanings, such as LOVE, and that “all of the 100 most common words in English are registered.”

Brunetti pointed to existing registrations for the mark FUCK for snow globes and gummy candies, but the CAFC agreed with the USPTO that "[e]ach application for registration must be considered on its own merits." However, the Board must take into account its 'own past practice' in developing a 'comprehensive rule,'" and it must "provide guidance that is sufficiently explained." "That guidance is missing here."

The Board had dismissed Brunetti's reliance on other registered marks due to lack of "contextual information," but it did not explain "what such contextual information might be." The Board also noted that Brunetti could "come forward with competent evidence that consumers would perceive the proposed mark as a source indicator," but again it did not indicate what that evidence would be.

The Board determined that Mr. Brunetti failed to meet a standard, but it did not articulate what that standard would be. In other words, the Board’s decision is unclear as to the circumstances under which all-purpose word marks can be registered and which are “inherently incapable of being regarded as [a] source indicator[].”

According to the CAFC majority, the Board's reasoning suggests that "it has concluded that it need not articulate a viable registration standard." The "apparent inconsistency" of USPTO determinations "with respect to the registration of all-purpose words is itself strong evidence of the failure to articulate coherent rules and engage in reasoned decisionmaking."

The Board’s reasoning sounds in fact very much as though it has taken an “I know it when I see it” approach to failure-to-function refusals. Such an approach is inconsistent with the Board’s mandate to engage in reasoned decisionmaking under the APA.

The Board appropriately relied on use of FUCK by third-parties on "commercial listing for goods within the claimed categories." However, that "does not create a coherent standard."

We conclude the Board failed to provide sufficient precision in its rationale for why some commonplace words can serve as a mark, but others, such as FUCK, cannot. The Board’s lack of clarity in this regard is especially troubling given the increasing number of fail-ure-to-function refusals in recent years. Without a clearer explanation, we are unable to determine whether substantial evidence supports the Board’s determination that the applied-for mark fails to function as a source identifier. Accordingly, remand is required. See, e.g., Princeton Vanguard, 786 F.3d at 970–71.

Circuit Judge Lourie dissented:

The majority well points out shortcomings in the Board’s analysis of the failure to function issue. But anyone living in today’s society of degraded language can readily tell that the f-word does not indicate the source of the proposed trademarked goods and distinguish them from goods of another. If the Board’s overall analysis needs sharpening, this case, which has been pending for most of a decade, surely isn’t one in which we need more help from the Board to know the right answer under the law. There will be better cases in which we need more guidance from the Board in order to properly review its decisions.

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TTABlogger comment: So how would you distinguish FUCK from LOVE, legally speaking?

Text Copyright John L. Welch 2025.