‘FUCT’ SCOTUS Case Applicant Fails to Convince TTAB to Register FUCK Mark
“The Examining Attorney is not required to prove to a moral certainty that consumers will not perceive FUCK to function as Applicant’s mark.” – TTAB decision
Image used by examiner to show widespread third-party use
The U.S. Patent and Trademark Office’s (USPTO’s) Trademark Trial and Appeal Board (TTAB) yesterday rejected Erik Brunetti’s attempt to reverse an examiner’s decision to refuse four separate registrations for the mark “FUCK” for luggage, cell phone cases, jewelry and other goods and services.
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.
The TTAB said in its precedential decision that Brunetti filed the four applications at issue while the Supreme Court case was pending; while the examiner initially indicated that the mark FUCT 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.”
Ubiquity, Widespread Use
The examiner provided evidence of the ubiquity of the word FUCK and widespread ornamental use of the word on consumer goods. To show ubiquity, the examiner cited various definitions of the word and articles about it proving that “[t]he word ‘FUCK’ is one of the most versatile words in the English lexicon – in certain contexts it is capable of provoking; in others, it
conveys nothing at all, other than, perhaps, a sense of world-weariness… ‘[f]ew words in our ever-expanding language are as flexible or versatile.’”
The examiner also included images of listings from sites such as Etsy, Spencers, Threadless and Redbubble to prove that “many competitors use the term as an informational message on jewelry, bags, phone cases, and many other items. … [and thus] the term cannot serve to distinguish the Applicant’s goods and services from goods and services of others who similarly use the term in connection with goods such as jewelry, bags, wallets, backpacks, carrying cases and related goods and services.”
Brunetti said “[i]t is never possible to disprove the PTO’s conclusion that something is ‘common’ or ‘widely used’ if the PTO only relies on evidence of use, and ignores evidence of the relative frequency.” But the TTAB said the examiner’s argument that such a “relative frequency” standard would be impractical to administer and does not measure consumer perception, “which is the relevant inquiry.” The TTAB also rejected Brunetti’s contention that the examiner had not shown evidence to support its assumption that if something is widely used the public will not see it as a source identifier. The TTAB explained:
The Examining Attorney is not required to prove to a moral certainty that consumers will not perceive FUCK to function as Applicant’s mark…. It is enough that the third-party use evidence here “‘is competent to suggest that upon encountering Applicant’s ‘mark’, prospective purchasers familiar with such widespread non-trademark use are unlikely to consider it to indicate the source of Applicant’s goods [or services].’”
Brunetti countered that the examiner’s refusal was based solely on the characterization of the word as a “Widely-Used Commonplace Word” rather than analyzing in depth how it fails to function as a mark. However, the TTAB said this argument was incorrect, as the examiner had referenced “failure to function” 26 times in the brief and clearly stated as the legal basis for refusal 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.”
Iancu v. Brunetti Doesn’t Dictate Result
Brunetti also attempted to argue that the Supreme Court’s decision requires registration of the FUCK mark and that he is the victim of government viewpoint discrimination, since certain other scandalous marks—such as FUCK CANCER THE MUSICAL—have been allowed registration post-Iancu v. Brunetti. But the TTAB said “the decision in Iancu v. Brunetti does not dictate the result here.” The TTAB’s decision continued:
“The First Amendment does not require the USPTO, through federal registration, to confer on any applicant the exclusive right to use an expressive term that fails to function as a mark and thereby deny others the ability to use it freely.”
Ultimately, the failure to function refusal is grounded in whether relevant consumers perceive the word “fuck” as a trademark or not, and is viewpoint neutral, said the TTAB.
Brunetti made various other arguments, including that the Widely-Used Commonplace Word” doctrine could not be used to refuse his marks because that ground of refusal was not raised in his applications for the FUCT mark at the heart of the SCOTUS case. However, the TTAB explained that analysis is based on “flawed premises” and that each application must be considered on its own merits.
Thus, the examiner’s refusal to register FUCK for failure to function as a mark under Sections 1, 2, 3 and 45 of the Trademark Act for the goods and services requested was affirmed.
Eileen McDermott
Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at […see more]
