A US appeals court has issued a split ruling, vacating a US Patent and Trademark Office (USPTO) decision to refuse a streetwear designer’s trademark applications for the F-word.
The US Court of Appeals for the Federal Circuit ruled on 26 August that the agency’s reasoning for denying the application “lacks sufficient clarity” and remanded the decision for further proceedings.
Designer Erik Brunetti’s four trademark applications for FUCK, which were filed in 2019, covered, among other products, jewellery, eyewear accessories and retail services, and were originally refused by the examining attorney and USPTO’s Trademark Trial and Appeal Board (TTAB) on the grounds that the applied-for term was commonplace and could not function as a trademark.
But in a split decision (2-1), Judges Dyk and Reyna have ruled that “the board failed to provide sufficient precision in its rationale for why some commonplace words can serve as a mark, but others, such as FUCK, cannot”.
They added that the TTAB’s “lack of clarity in this regard is especially troubling given the increasing number of failure-to-function refusals in recent years”.
They labelled the TTAB’s reasoning in failure-to-function refusals as a “I know it when I see it” approach and objected to the TTAB’s dismissal of Brunetti’s reliance on other single-word registered marks on the grounds no contextual information had been provided.
The judges pointed out that the TTAB had not explained what the contextual information might be. They did, however, reject most of Brunetti’s other arguments, finding them “unpersuasive”.
Judge Lourie disagreed with the decision, stating: “The majority well points out shortcomings in the board’s analysis of the failure to function issue. But 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.”
Brunetti filed the four marks in 2019, covering goods and services including sunglasses and carrying cases for cell phones and laptops and retail store services related to those goods.
The F-word on its own has not been registered as a trademark in the US, but FUCK CANCER achieved registration status in 2021.
Brunetti is being represented by California-based attorneys John Sommer and Kelly Kristine Pfeiffer.
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