The U.S. Supreme Court in Iancu v. Brunetti, 588 U.S. ___, 139 S. Ct. 2294, 204 L. Ed. 2d 714, 2019 USPQ2d 232043 (2019), found that the ban against trademark registrations for scandalous or immoral matter under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), was unconstitutional because it discriminated on the basis of viewpoint and, therefore, violated the free speech provisions of the First Amendment.

Subsequently, several FUCK trademark applications by Brunetti later were refused registration under Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§1051-1053, and 1127, on the ground that each “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.”

A word that fails to distinguish goods or services , however, does not meet the statutory definition of a trademark, and thus cannot be registered. 15 U.S.C. §§ 1051, 1127; see also In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227, 228 (CCPA 1960 (“The Trademark Act is not an act to register words but to register trademarks.”). One way a proposed mark fails to function is if consumers will view it as a merely informational slogan or phrase instead of something that “point[s] out distinctively the origin of the goods to which it is attached.” In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1976).

In evidence were numerous dictionary definitions and articles “from numerous internet websites and internet-based periodicals” showing that “the word FUCK is no ordinary word, but rather one that has acquired a multitude of recognized meanings”; as well as “third-party ornamental use of the word FUCK on various consumer goods.”

A Viewpoint-Neutral FUCK Appeal

The Trademark Trial and Appeal Board (“TTAB”) affirmed, finding that “it does not create the commercial impression of a source indicator, and does not function as a trademark to distinguish [Brunetti's] goods and services in commerce and indicate their source.” In re Brunetti, 2022 USPQ2d 764 (TTAB Aug. 22, 2022).

Consequently, Applicant cannot appropriate the term exclusively to itself, denying others the ability to use it freely. “‘[I]t is the type of expression that should remain free for all to use.'” Univ. of Kentucky v. 40-0, LLC, 2021 USPQ2d 253, at *36 (quoting Eagle Crest, 96 USPQ2d at 1230).

The record shows that the FUCK Applications identify goods [such as carrying cases, rings and bracelets, and backpacks and tote bags] that are commonly used both for functional purposes and to display messages. . . . We find that consumers who encounter FUCK on such goods sold at retail will not perceive the phrase as a source indicator pointing uniquely to Applicant . . .

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Rather, when encountering Applicant's retail store services featuring those goods, consumers will still perceive FUCK as conveying its ordinary meaning.

The TTAB also held that “[t]he refusal is viewpoint neutral” because the failure to function as a trademark based on consumer perception “applies evenhandedly, regardless of any viewpoint expressed.”

Widely-Used Commonplace Word Doctrine

With respect to the Widely-Used Commonplace Word doctrine, although Section 1202 of the TMEP does not literally identify a Widely-Used Commonplace Word doctrine, the TTAB noted that TMEP § 1204.04 does state that “[m]atter may be merely informational and fail to function,” and subsection (b) discusses “widely-used messages,” in particular.

For decades, the Board and its primary reviewing courts have held that “[s]logans and other terms that are considered to be merely informational in nature … are not registrable.” Eagle Crest, 96 USPQ2d at 1229. See, e.g., In re Boston Beer Co., 198 F.3d 1370, 1374, 53 USPQ2d_1056, 1058 (Fed. Cir. 1999) (holding that THE BEST BEER IN AMERICA “is a common phrase used descriptively by others before and concurrently with [the applicant]'s use, and is nothing more than a claim of superiority” that is incapable of registration as a trademark); Roux Labs., Inc. v. Clairol, Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970) (“The mere fact that a combination of words or a slogan [such as HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE] is adopted and used by a manufacturer with the intent [that it function as a trademark] does not necessarily mean that the slogan accomplishes that purpose in reality.”); In re Duvernoy & Sons, Inc., 212 F.2d 202, 101 USPQ 288, 289 (CCPA 1954) (“we feel manifestly certain from the nature of the notation [CONSISTENTLY SUPERIOR] sought to be registered that it was not originally adopted or intended to function as a trade mark to indicate origin of the appellant's goods, and it does not satisfactorily appear to us from the exhibits in the record that the appellant has ever used the term in question as a primary means for identifying its goods.”). See also TMEP § 1202.04 (July 2022).

            Matter may be merely informational and fail to function as a trademark if it is a common term or phrase that consumers of the goods or services identified in the application are accustomed to seeing used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments. Such widely used messages will be understood as merely conveying the ordinary concept or sentiment normally associated with them, rather than serving any source-indicating function. See, e.g., D.C. One Wholesaler, 120 USPQ2d at 1716 (sustaining opposition to registration of I ♥ DC for clothing because it “has been widely used, over a long period of time and by a large number of merchandisers as an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C.” and thus would not be perceived as a source-indicator); In re Volvo Cars of N. Am., Inc., 46 USPQ2d at 1460- 61 (affirming refusal to register DRIVE SAFELY for automobiles because it would be perceived as an everyday, commonplace safety admonition); see also TMEP § 1202.04(b) (widely used messages).

Evidence of how the designation is “actually used” in the marketplace, and any limits in the channels of trade, may determine how it is perceived by the relevant consuming public.

“Consumers ordinarily take widely-used, commonplace messages at their ordinary meaning, and not as source indicators, absent evidence to the contrary.” In re Greenwood, 2020 USPQ2d 11439, at *6 (citing In re Mayweather Promotions, LLC, 2020 USPQ2d 11489, at *6. “The more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark.” Id. (citing Eagle Crest, 96 USPQ2d at 1229). “Where the evidence suggests that the ordinary consumer would take the words at their ordinary meaning rather than read into them some special meaning distinguishing the goods and services from similar goods and services of others, then the words fail to function as a mark.” In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *3 (TTAB 2019) (internal punctuation omitted).

Copious Use of Fuck in the Marketplace

The TTAB found that the marketplace “is awash in products that display the term [FUCK] as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term in an informational manner, not associated with a particular source.” D.C. One Wholesaler, 120 USPQ2d at 1716. See also In re Hulting, 107 USPQ2d at 1179 (“Clearly, the placement, size, and dominance of the wording are consistent with informational (or ornamental), not trademark use.”).

            In any event, we find the copious evidence of these websites probative because they are online marketplaces offering goods of third-party sellers to United States consumers, which are reflective of many different sellers in the marketplace offering goods with the term FUCK to consumers, and they provide relevant evidence of consumer perception.

Affirming the Refusal

After reviewing the “Ubiquity of FUCK” as an expression with “a multitude of recognized meanings,” and the use of “FUCK in the Marketplace” by others, the TTAB concluded that consumers would not view it “as an indicator of source pointing uniquely to” Brunetti, and affirmed the refusal.

The trademark attorneys at Thomas P. Howard, LLC are experienced in the prosecution of trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.