Brunetti’s Back: Split CAFC Rejects Most of Scandalous Trademark Applicant’s Arguments But Remands for Second Chance at TTAB

Photo from TTAB decision.

A split panel of the U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday vacated and remanded a Trademark Trial and Appeal Board (TTAB) decision that affirmed the rejection of Erik Brunetti’s applications to register the mark FUCK for various goods and services. The precedential decision was authored by Judge Dyk and Judge Lourie dissented.

Brunetti was the respondent in the 2019 Supreme Court case, Iancu v. Brunetti (Case No. 18-302), in which the Court held that the Lanham Act’s blanket ban on federal registration of “immoral or scandalous” trademarks is unconstitutional under the First Amendment. The mark at issue in that case was “FUCT,” for use on streetwear.

Brunetti filed the four applications for FUCK while the Supreme Court case was pending; while the examiner initially indicated that the mark appeared to be scandalous under Section 2(a) of the Trademark Act, the examiner did not reject the applications, since the issue was under review, and instead suspended them. However, once the Supreme Court decision issued, the examination resumed, and the marks were refused on the ground that the “applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others.” The TTAB affirmed in August of 2022.

On appeal to the CAFC, Brunetti argued that the U.S. Patent and Trademark Office (USPTO) violated the First Amendment by allowing marks such as FUCK CANCER as well as other marks composed solely of commonly used words, such as LOVE, while refusing negative uses of the word “fuck”. This amounts to viewpoint discrimination, Brunetti said. He also claimed the TTAB was engaging in retaliatory behavior for his Supreme Court victory and that Iancu v. Brunetti dictates the outcome of the present case. The Federal Circuit rejected all of these arguments.

The court also rejected Brunetti’s arguments that the Board created an “entirely novel” failure-to-function doctrine “wherein there are some words or phrases that just can never be registered for any goods or services because the terms are allegedly ‘too widely-used.’” The CAFC noted that the TTAB made it clear that “commonality . . . is not the test” for determining whether an applied-for mark functions as a trademark.”

Where the majority found fault with the Board’s ruling, however, was in its failure to articulate “sufficient findings and reasoning to permit meaningful appellate scrutiny” with respect to its rejection of Brunetti’s arguments concerning past USPTO examiner decisions concerning similar marks. The opinion explained:

“The Board consistently dismissed Mr. Brunetti’s reliance on other registered marks by explaining that ‘the cited third-party registrations for other single word marks, perceived in a vacuum without any contextual information, are not relevant to our determination of whether FUCK functions as a mark for the applied[-]for goods and services.’ But the Board did not explain what such contextual information might be.”

Because the Board ultimately did not “articulate a viable registration standard,” and especially in light of an “increasing number of failure-to-function refusals in recent years,” the TTAB’s decision was vacated and remanded for further proceedings.

Judge Lourie agreed that the Board’s decision included “shortcomings” as to the failure-to-function analysis but dissented on the ground that “anyone living in today’s society of degraded language can readily tell that the f-word does not indicate the source of the proposed trademarked goods and distinguish them from goods of another.” While Lourie agreed there might be a need for the CAFC to help the Board with “sharpening” its analysis, he said that this case “surely isn’t one in which we need more help from the Board to know the right answer under the law.”