The Federal Circuit’s recent precedential decision in In re Erik Brunetti has surely raised some eyebrows in the trademark community (and beyond), not just for its subject matter (the attempted registration of a certain provocative word, which we will refer to here as the “F-bomb” for sensitive eyes and ears, for various goods and services) but also for its pointed critique of the Trademark Trial and Appeal Board’s (TTAB) reasoning and its implications for the “failure to function” doctrine. Let’s break down what happened, why it matters, and what practitioners should watch for as the case heads back to the TTAB.

Background: The Battle Over the Trademark at the USPTO

Erik Brunetti is no stranger to controversy or using the court system to his advantage. In 2019, the U.S. Supreme Court sent shockwaves through the trademark community in Iancu v. Brunetti when it held that the Lanham Act’s prohibition on registration of immoral or scandalous trademarks violates the First Amendment. That decision centered on Brunetti’s attempt to register the trademark “FUCT” in 2011, the TTAB’s refusal to register the mark based on the finding that the mark constituted “immoral or scandalous matter” under Section 1052(a) of the Lanham Act, and the ultimate reversal of the TTAB by the Supreme Court. Brunetti now has nine FUCT registrations in a variety of classes. As an aside, it will be interesting to see whether these marks are renewed because it looks as if the clothing brand has made some changes that might limit Brunetti’s choices for acceptable specimens of use (view at your own risk).

After this huge win, Brunetti filed four intent-to-use applications to register the F-bomb for a range of goods (from sunglasses to jewelry to backpacks) and retail services.  The TTAB affirmed the examining attorney’s refusal to register the marks — not on the grounds of scandalousness since that avenue was unavailable to it — but because the mark allegedly “failed to function” as a trademark. In other words, the TTAB took the position that consumers would not perceive the F-bomb as indicating the source of the goods or services. It further explained that the word is a “commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.” The TTAB concluded that the word is so ubiquitous and expressive that it cannot serve as a source identifier.

The Federal Circuit’s Take: Choose Your Words Wisely TTAB

On appeal, a panel of the Federal Circuit vacated the TTAB decision and remanded for further proceedings, finding the TTAB’s reasoning lacking in clarity and precision.  While the court rejected most of Brunetti’s constitutional arguments (including claims of viewpoint discrimination and retaliation), it zeroed in on the need for “reasoned decision-making” under the Administrative Procedure Act (APA).

The panel acknowledged that the Lanham Act requires a mark to function as a source identifier, and that “failure to function” is a valid ground for refusal. However, the panel found the board’s analysis lacking in several respects:

• Lack of Clear Standards – The panel criticized the TTAB’s decision for “sound[ing] in fact very much as though it has taken an ‘I know it when I see it’ approach to failure-to-function refusals.” The panel found that the TTAB failed to articulate what evidence or circumstances would allow a widely used word like the F-bomb to be registered, or what would distinguish it from other registered marks consisting of common words (like “LOVE”). Further, the TTAB “determined that Mr. Brunetti failed to meet a standard, but it did not articulate what that standard would be.”
• Inconsistent Treatment – The panel noted that the USPTO has, in fact, registered the F-bomb for other goods such as snow globes and gummy candies and has registered other all-purpose words. The TTAB’s refusal to grapple with these inconsistencies or explain what “contextual information” would make a difference was a key factor in the panel’s remand.
• Third-Party Use and Source Identification – While the panel recognized the TTAB’s proper consideration of third-party use of the F-bomb on similar goods, it found that this alone does not establish a coherent standard for when a mark fails to function.

What’s Next at the TTAB?

To be clear for all you F-bomb lovers out there, the Federal Circuit’s remand is not a green light for Brunetti’s registration. But it is a clear directive to the TTAB to develop and articulate a rational, consistent standard for “failure to function” refusals, especially when dealing with so-called “all-purpose word marks.” The TTAB must explain what evidence would suffice to show that a term — even one as ubiquitous and expressive as the F-bomb — can or cannot serve as a source identifier.

This decision is likely to have ripple effects beyond this case. The “failure to function” doctrine has been invoked with increasing frequency in recent years, and the Federal Circuit’s demand for clarity and consistency will force the TTAB to sharpen its analysis and provide more guidance to applicants and practitioners.

Key Takeaways for Trademark Practitioners

• Expect More Rigorous TTAB Analysis – Going forward, the USPTO will need to provide clearer explanations and standards in “failure to function” cases, especially for marks consisting of common or expressive words.
• Past Registrations Matter — at Least for Consistency – While the USPTO is not bound by prior examining attorney decisions, the Federal Circuit has signaled that it cannot simply ignore inconsistencies or refuse to explain them.
• Evidence of Source Identification Is Critical – Applicants should be prepared to submit evidence that consumers perceive their mark — even if it is a common or expressive word — as a source identifier for their goods or services.
• The “I Know It When I See It” Era Is Over – The days of opaque, subjective refusals are likely numbered. The TTAB must now provide reasoned, transparent decision-making that can withstand appellate scrutiny.

The Federal Circuit’s remand in In re Brunetti is a wake-up call for the TTAB and a potential turning point in the application of the “failure to function” doctrine. As the TTAB revisits this issue, trademark owners and practitioners should watch closely for new guidance on what it takes for a mark — no matter how provocative or commonplace — to function as a trademark in the eyes of the law.