The US Patent & Trademark Office (PTO) denied registration of several US trademark applications for the mark FUCK, even though the applicant had overcome a prohibition on the registration of “immoral or scandalous” trademarks as a violation of the First Amendment in the Supreme Court’s 2019 decision in Iancu v. Brunetti. The applicant also had previously secured registration of the mark FUCT. The PTO nevertheless denied registration on grounds that the familiar curse word did not function as a trademark. In re: Brunetti, Ser. Nos. 88308426; 88308434; 88308451; 88310900 (TTAB Aug. 22, 2022) (Bergsman, Dunn, Lebow, Administrative Trademark Judges).

The Trademark Trial & Appeal Board (Board) issued a precedential decision affirming the PTO’s refusal to register the FUCK mark for a variety of goods and related services, including cellphone cases, sunglasses, jewelry, watches, bags and wallets. The Board found that the word FUCK expresses well-recognized sentiments and that consumers are accustomed to seeing the word in widespread use by many different sources. As a result, the word failed to create the commercial impression of a source indicator and therefore failed to function as a trademark to distinguish the goods from others.

Background

Artist and entrepreneur Erik Brunetti applied to register the mark FUCK in relation to a wide variety of wearable goods, electronics accessories and related retail, marketing and business services in 2019 while his appeal to the Supreme Court regarding the FUCT mark was still pending. When the Supreme Court issued its decision, the FUCK applications were removed from suspension and could no longer be refused on grounds that the mark comprised “immoral or scandalous” material. The PTO examining attorney re-examined the applications and refused registration on the so-called “failure to function” ground, finding that the mark was a term that did not function as a trademark to indicate the source of the applicant’s goods or services and to identify and distinguish them from others. Brunetti appealed to the Board.

In response to Brunetti’s argument that there was no statutory basis for a failure to function refusal, the Board made clear that the PTO is statutorily constrained to register a mark on the Principal Register “if and only if it functions as a mark.” Matter that does not operate to indicate the source or origin of the identified goods or services and distinguish them from those of others does not meet the statutory definition of a trademark and may not be registered. The Board reminded applicants that not every designation adopted with the intention that it perform a trademark function necessarily accomplishes that purpose.

Matter may be merely informational and fail to function as a trademark if it is a common term or phrase that consumers are accustomed to seeing used by various sources to convey ordinary, familiar or generally understood concepts or sentiments. The critical inquiry in determining whether a proposed mark functions as a trademark is how the relevant public perceives it.

The Board described the Examining Attorney’s evidence supporting the failure to function refusal as falling into two categories: evidence purporting to show the ubiquity of the word fuck in general, and evidence purporting to show widespread third-party ornamental use of the word “fuck” on a range of consumer goods. As to ubiquity, the Board explained that the examining attorney’s evidence (comprised of dictionary definitions and articles outlining the commonality and versatility of the word “fuck” as an expression) showed that fuck “is no ordinary word, but rather one that has acquired a multitude of recognized meanings since its first recorded use, and whose popularity has soared over the years . . . transforming what was once a taboo word . . . to one that is trendy and cosmopolitan.” According to the Board, the evidence was competent to suggest that prospective purchasers familiar with such widespread non-trademark use of fuck to convey an informational message or sentiment would be unlikely to consider Brunetti’s use of FUCK to indicate source.

As to widespread ornamental use of the commonplace term, the Board found persuasive the Examining Attorney’s collection of sources that prominently display the term fuck on a wide range of consumer merchandise and household items, including the kinds of goods identified in Brunetti’s FUCK applications. The Board’s opinion included almost 10 pages displaying products available online displaying the word “fuck.” The Board flatly rejected Brunetti’s argument that the PTO’s registration refusal effectively equated to a rule that any word or phrase appearing on products offered on Etsy.com or another well-known ecommerce retailer is unregistrable (i.e., the applicant-coined Etsy.com Rule). The Board pointed out that the record does not reflect just a few ornamental uses of the term in the marketplace, but rather that the retail marketplace is “awash” in products that display the word fuck as a prominent ornamental feature and which are not associated with a particular source. The “copious evidence of these websites,” reflective of many different sellers in the marketplace offering goods featuring the term fuck, was found to be probative and relevant evidence of consumer perception.

In response to Brunetti’s claim that the refusal ran afoul of the Supreme Court’s decision in his namesake case and constituted viewpoint discrimination, the Board affirmed the Examining Attorney’s view that Brunetti did not apply here. Nothing in the Brunetti decision requires the PTO to register a trademark that would have been refused as “immoral or scandalous” if that mark is otherwise unregistrable according to other provisions of the Trademark Act.

Finally, in reference to other registered trademarks that contain the word “fuck,” the Board observed that none of them were for the word “fuck” on its own, and that those marks and their specific goods and services did not speak to the same solo use of FUCK for Brunetti’s goods and services. Similarly, in response to Brunetti’s assertion that his applications for FUCK should not be treated differently than his registration for FUCT, the Board reminded everyone for the umpteenth time that each case is to be decided on its own facts and evidence, and that such facts and evidence were not necessarily present in the FUCT case. The Board therefore affirmed the registration refusal.