Trademark appeal court ordered to reevaluate registration of 'f-word' trademark

The US Court of Appeals for the Federal Circuit has vacated and remitted a decision of the Trademark Trial and Appeal Board (TTAB) to refuse fashion designer Erik Brunetti's applications to protect the word 'FUCK' across multiple classes of goods and services.

In a ruling handed down by Circuit Judge Dyk, the court determined that the TTAB's decision lacked sufficient clarity and failed to articulate a coherent standard for assessing whether all-purpose words can function as trade marks. The court's majority opinion criticised the TTAB for its dismissal of inconsistencies without explanation, deeming it an impermissible "I know it when I see it" approach inconsistent with reasoned decision-making.

Independent intellectual-property attorneys John Sommer and Kelly Pfeiffer represented Mr Brunetti in the case, while the USPTO was represented by Bradley Hinshelwood of the US Department of Justice and Brian Boynton, Daniel Tenny, and Amy Nelson of the Office of the Solicitor, United States Patent and Trademark Office.

Judge Lourie, who dissented from the majority, argued that substantial evidence supported the TTAB's finding that the term 'FUCK' could not serve as a source indicator due to its ubiquity and varied meanings. He contrasted the term with registered terms such as 'LOVE' and 'FUCK CANCER', arguing that those expressions convey relatively narrow sentiments, whereas the f-word operates as an expletive expressing a virtually limitless range of emotions.

Nonetheless, the court held that the TTAB's analysis was inadequate under the Administrative Procedure Act, as it failed to articulate clear standards distinguishing between words that may function as marks and those deemed incapable of doing so. The court's ruling does not guarantee registration of Brunetti's mark but provides another opportunity for him to argue that 'FUCK' can function as a trade mark under certain circumstances.

Mr Brunetti, who has already successfully registered the 'FUCT' trade mark, filed four intent-to-use applications in 2019 seeking registration of the mark 'FUCK' for goods including sunglasses, jewellery, and bags. The TTAB reaffirmed its earlier refusal in 2022, concluding that consumers would perceive 'FUCK' not as a source identifier but as a widely used expression conveying familiar sentiments.

The court concluded that without a clearer standard, meaningful judicial review was impossible and instructed the TTAB to provide a more precise rationale and to clarify the circumstances under which "all-purpose word marks" can be registered. The decision demands a clearer articulation of how the failure-to-function standard should be applied to highly expressive or widely used words by the USPTO and TTAB.

The TTAB was also criticised for failing to provide sufficient precision in its rationale for why some commonplace words can serve as a mark, but others, such as 'FUCK', cannot. The European Union Intellectual Property Office (EUIPO) is announced to develop a more robust policy for examining applicants registering everyday expressions as trademarks.

In this appeal, Mr Brunetti argued that the refusal infringed his First Amendment rights, that the US Patent and Trademark Office (USPTO) was retaliating against him for his earlier Supreme Court victory, and that the reasoning effectively created a novel bar against widely used words. However, the court's majority opinion rejected most of these contentions, confirming that the refusal was viewpoint-neutral and not retaliatory, and that Iancu v Brunetti had no controlling effect.