Erik Brunetti filed intent-to-use trademark registration applications seeking registration of the standard character mark FUCK on the principal register. The applications were initially refused on the ground that the proposed mark consisted of “immoral” or “scandalous” matter. Brunetti successfully challenged the basis for one of the initial rejections before the Supreme Court, which held the U.S. Patent and Trademark Office’s (USPTO) bar on registering immoral or scandalous matter unconstitutional. Iancu v. Brunetti, 588 U.S. 388, 390 (2019).
On reexamination, the examining attorney refused the trademark applications on the ground that FUCK is a slogan or term that does not function to indicate the source of Brunetti’s goods or services or to distinguish them from others’ goods or services. The examining attorney explained that FUCK is a commonplace term or expression that is widely used by a variety of sources and merely conveys an ordinary, familiar, well-recognized concept or sentiment. Brunetti appealed the examining attorney’s rejection to the Trademark Trial and Appeal Board (TTAB), which affirmed the refusals to register because the applied-for term failed to function as a trademark.
Brunetti appealed to the Federal Circuit. He made a variety of arguments, most of which the Federal Circuit rejected. However, the Federal Circuit ultimately vacated and remanded because it concluded that the TTAB failed to articulate a satisfactory explanation for its action.
Quoting the Lanham Act — which governs the registrability of trademarks — the Federal Circuit noted that it is a threshold requirement of registrability that an applied-for mark “identify and distinguish” the goods and services of the applicant from those of others, as well as “indicate the source” of those goods and services. The court stated that to distinguish one’s goods or services from another’s — and thus be a registerable trademark — the proposed mark must therefore be distinctive, either inherently or through the acquisition of secondary meaning.
Brunetti argued that the USPTO was acting arbitrarily by allowing registrations of some all-purpose word marks while denying registration of others, including his registrations for the word FUCK, without any explanation as to the difference. He pointed, for example, to the USPTO’s registration of marks with other common words, such as LOVE and even other marks using the term FUCK.
While the Federal Circuit agreed with the USPTO that it need not reconcile all past cases with the case under consideration, the court concluded that the decision here was insufficiently reasoned to permit judicial review under the Administrative Procedure Act. In particular, the TTAB had failed to articulate a coherent rule regarding failure-to-function refusals that took account of past decisions on this issue. Instead, it had adopted an “‘I know it when I see it’ approach to failure-to-function refusals.” The court therefore vacated the TTAB’s decision and remanded for a clearer explanation of the basis for its decision.
Judge Lourie dissented. While he agreed with the majority that there were shortcomings in the TTAB’s analysis of the failure-to-function issue, he did not view this case as a close call. Judge Lourie reasoned that, “[b]ecause of its ubiquity, consumers cannot specifically associate the word [FUCK] with Brunetti’s brand.”
This article appeared in the 2025 Federal Circuit IP Appeals: Summaries of Key 2025 Decisions report.
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