Trademark Law Alert--Appellate Court Orders Clarification of a Failure‑to‑Function Decision Involving the F‑Word
As previously reported in our Trademark Law Alert -- The Eye-Catching F-Word Failed to Function as a Trademark, the Trademark Trial and Appeal Board (TTAB) issued a precedential decision in 2022 affirming the U.S. Patent and Trademark Office (USPTO) denial of registrations for the term FUCK (the F-Word), on the ground that it is “arguably one of the most expressive words in the English language—an all-purpose word,” which fails to function as a source indicator. In re Erik Brunetti, 2022 USPQ2d 764 (T.T.A.B. August 22, 2022).
On appeal, the United States Court of Appeals for the Federal Circuit (CAFC) vacated that decision in 2025. It remanded the case seeking “rational guidance” as to the circumstances under which such all-purpose word marks either can be registered or are inherently incapable of being regarded as a source indicator. In other words, the CAFC held that “I know it when I see it” is not a sufficient standard.
You may recall that Erik Brunetti had earlier applied to register FUCT as a trademark for clothing. The USPTO refused registration based on the section of the Trademark Law prohibiting registration of “immoral and scandalous marks.” After the TTAB affirmed that refusal, the U.S. Supreme Court reversed on the ground that this section of the Trademark Law was unconstitutional. Iancu v. Brunetti, 139 S.Ct. 2294 (2019).
Brunetti separately filed four intent-to-use trademark applications to register the F-Word (ending in a “K”, not a “T”) for carrying cases, jewelry, bags, and retail services. The USPTO refused registration on a different ground—the F-Word failed to function as a source indicator because it was in widespread use by various sources to convey ordinary, familiar, or generally understood concepts or sentiments.
The TTAB affirmed that refusal, and Brunetti appealed to the CAFC.
The CAFC began by rejecting the following arguments made by Brunetti:
- The USPTO violated the First Amendment of the U.S. Constitution by engaging in viewpoint discrimination, since it allowed trademark registrations for “positive terms” such as FUCK CANCER and LOVE, while refusing registrations for “negative terms” or “profanity” such as the F-Word. The CAFC explained that whether the relevant consumers perceive the applied-for mark as a trademark is viewpoint-neutral.
- The USPTO retaliated against Brunetti for exercising his “right to petition” the courts for redress. The CAFC concluded that Brunetti failed to show the TTAB decision was retaliatory.
- The Supreme Court’s decision in Iancu v. Brunetti dictated the outcome of this case. The CAFC pointed out that the constitutionality of a prohibition on scandalous words was a different legal issue, distinguishable from the failure to function as a mark, and that the mark FUCT was fundamentally different from the F-Word.
The CAFC then turned to Brunetti’s argument that some words can never be registered under the failure-to-function doctrine because they are used too widely. The CAFC pointed out that a registrable mark must distinguish the goods and services of the user from those of others. The source-identifier inquiry “typically focuses on how the mark is used in the marketplace and how it is perceived by consumers,” which is a question of fact. Commonality is not the test. For example, the commonly-used word CAMEL may be inherently distinctive and thus registered as a trademark for cigarettes.
Although the CAFC recognized that merely informational terms cannot be registered as trademarks, the TTAB’s failure-to-function analysis in this case was similar to, but not identical to, an informational matter refusal. The F-Word does not convey a single idea or a complete piece of information, nor did the TTAB analyze it as such. The CAFC referred to words with many meanings as “all-purpose word marks.”
Brunetti argued that the TTAB had allowed the registration of some all-purpose word marks, while denying registration of others. The CAFC recognized that a TTAB decision may not be challenged on the ground of erroneous rulings by certain of the over 700 examining attorneys in other cases. However, the CAFC pointed out that the TTAB needs take account of prevailing practice, and to develop coherent and rational rules that will guide examining attorneys, the TTAB in other proceedings, and the CAFC in its role of judicial review.
The CAFC concluded that the TTAB must make “sufficient findings and reasoning to permit meaningful appellate scrutiny” of issues of law and fact. Rational guidance that is sufficiently explained was absent from this case:
- The TTAB consistently dismissed Brunetti’s reliance on other registered single word marks because there was no contextual information about them, but the TTAB did not explain what such contextual information might be.
- The TTAB contemplated that Brunetti could come forward with competent evidence that consumers would perceive the proposed mark as a source identifier, but the TTAB failed to indicate what that evidence might be.
- The TTAB determined that Brunetti failed to meet a standard as to the circumstances under which all-purpose word marks can and cannot be registered, but the TTAB did not articulate what that standard would be.
The CAFC mentioned that its own decisions had provided some limited but incomplete guidance. Informational matter may be registered so long as it is also source-identifying. Also, the stylization of a mark and its placement on marked goods, or in advertisements for services, may impact its ability to operate as a source identifier.
Further, the CAFC acknowledged that TTAB’s reliance on third-party use of the applied-for mark was appropriate under the case law, and that it was also proper for the TTAB to consider that Brunetti could not “appropriate the term exclusively.” But this did not create a coherent standard. The absence of clarity was deemed particularly concerning, given the increasing number of failure-to-function refusals in recent years.
Accordingly, CAFC remanded the case to the TTAB for further clarification as to the standard for rejecting the registration of all-purpose word marks.
Circuit Judge Alan David Lourie dissented, evaluating the F-Word as primarily an explicative, expressive of a variety of definitions, or none at all. “But anyone living in today’s society of degraded language can readily tell the f-word does not indicate the source of the proposed trademarked goods and distinguish them from goods of another.” Although the majority pointed out shortcomings in the TTAB’s analysis of the failure to function issue, Judge Lourie viewed this case, pending for better part of ten years, “surely isn’t one in which we need more help from the [TTAB] to know the right answer under the law.” On this basis, Judge Lourie’s view was that affirmance was appropriate.
In re Erik Brunetti, Case No. 23-1539 (Fed. Cir. August 26, 2025).
For further information, contact William M. Borchard or your CLL attorney.
Senior Counsel
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Bill has handled domestic and international trademark and copyright matters at the highest level for over 60 years. He has counseled and represented clients on domestic and international trademark matters concerning clearance, registration, proper use, licensing, contested administrative proceedings and infringement claims. He became Senior Counsel in January 2024 and is now focusing on providing guidance and advice to other lawyers within our firm and writing informative and engaging articles on intellectual property law developments.