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WTF? The Board Weighs In on Failure to Function Refusals
Many trademark practitioners have noted the United States Patent and Trademark Office's recent penchant for issuing refusals to register trademarks on the ground of failure to function as a trademark. In a recent precedential decision from the Trademark Trial and Appeal Board, In re Brunetti, 2022 U.S.P.Q.2d 764 (TTAB Aug 22, 2022), the Board provided some initial guidance on how it will evaluate failure-to-function refusals going forward. Whether or not by design, the Board could not have chosen a more colorful case to designate as precedential. Brunetti involved an applicant, who was a well-known protagonist of the Office (Erik Brunetti), and his efforts to register the mark FUCK for a wide variety of goods and services. Because Brunetti failed to overcome the Office's prima facie showing that FUCK failed to function as a mark (i.e., was not perceived by the consuming public as an indicator of source), the Board ultimately denied registration.
Procedural History
Most readers will recognize Brunetti as the prevailing party in the U.S. Supreme Court decision, Iancu v. Brunetti, 139 S. Ct. 2294 (2019). There, the Office had refused Brunetti's application to register FUCT as a trademark for clothing because the mark comprised scandalous or immoral matter under Section 2(a) of the Trademark Act. After the Federal Circuit had reversed that refusal, the Supreme Court affirmed, finding that Section 2(a)'s bar on registering immoral or scandalous matter was unconstitutional because it violated the free speech provisions of the First Amendment. As a result, Brunetti's FUCT mark for clothing goods was allowed to register.
While Iancu v. Brunetti was still pending before the Supreme Court, Brunetti filed new applications to register the term "FUCK" for a wide variety of goods and services. Initially, the Office held that this term appeared to be scandalous within the meaning of Section 2(a) but did not issue a refusal on that ground because the constitutionality of that portion of Section 2(a) was currently under review. Instead, Brunetti's applications were suspended pending final disposition of his FUCT appeal. Following the decision in Iancu v. Brunetti, Brunetti's FUCK applications were removed from suspension, reexamined, and ultimately refused on the ground that FUCK did not function as a trademark or service mark to indicate the source of Brunetti's goods and/or services.
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