Last year, we told you about the Trademark Trial and Appeal Board (“TTAB”) refusing to register a trademark for the “F-Word” on cell phone cases, luggage, jewelry, and other goods. On August 25, the Federal Circuit said, “Not so fast” and vacated the TTAB’s ruling.

In a split decision, the Federal Circuit said that in denying artist/fashion designer Erik Brunetti’s application, the TTAB did not provide adequate clarity on why some common words can be trademarked and others can’t.

The U.S. Patent and Trademark Office initially denied Brunetti’s attempt to trademark the F-word on the grounds that it was too commonplace to trademark. He appealed to the TTAB, which affirmed the refusal. However, the TTAB’s refusal was based on the fact that the F-word failed to function as a trademark, rather than the fact that it is a widely used commonplace word.

But on appeal, the Federal Circuit ruled that such a refusal was overly vague. Writing for the majority, U.S. Circuit Judge Timothy Dyk said, “The Board determined that Mr. Brunetti failed to meet a standard, but it did not articulate what that standard would be.” For example, Brunetti has often pointed out that “LOVE,” despite being a “widely used commonplace word” is a registered trademark.

While complete consistency may not be possible in something as nuanced as trademark registration, Judge Dyk said the TTAB needs to work toward a “viable registration standard,” rather than an “I know it when I see it” approach.

“The apparent inconsistency of past examining attorneys' decisions with respect to the registration of all-purpose word marks is itself strong evidence of the failure to articulate coherent rules and engage in reasoned decision-making,” he said.

Although the Federal Circuit remanded the case for further consideration, it rejected Brunetti’s argument that the TTAB acted in retaliation for the artist’s 2019 U.S. Supreme Court victory over the USPTO in Iancu v. Brunetti. The USPTO in that case rejected Brunetti’s request to trademark “FUCT” for use on streetwear on the grounds that it was “immoral or scandalous” under the Lanham Act. The Supreme Court ruled that such a blanket ban violated the First Amendment.

The case now goes back to the TTAB for a second review. Should the Board fail to come up with a viable standard for distinguishing between registrations for commonplace terms, Brunetti will likely obtain a registration for the F-Word.  However, if the TTAB again affirms the refusal to register, another appeal to the Federal Circuit appears likely.