In Re BRUNETTI
23-1539, August 26, 2025 (2025)
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Rule of Law:
Under the Administrative Procedure Act, the Trademark Trial and Appeal Board cannot refuse to register a widely-used word mark for 'failure to function' as a source identifier without articulating a clear, coherent, and rational standard that explains why the mark is unregistrable while other similar marks have been granted registration.
Facts:
- In February 2019, Erik Brunetti filed four intent-to-use trademark registration applications.
- Brunetti sought to register the standard character mark FUCK.
- The applications covered goods such as sunglasses, carrying cases for cell phones, and laptops (International Class 9).
- The applications also covered goods such as jewelry and watches (International Class 14).
- The applications also covered goods such as backpacks, wallets, and luggage (International Class 18).
- Finally, the applications covered retail store services featuring a wide variety of consumer goods (International Class 35).
Procedural Posture:
- Erik Brunetti filed four intent-to-use trademark applications with the U.S. Patent and Trademark Office (PTO).
- The PTO examining attorney initially refused the applications based on the statutory bar against registering 'immoral or scandalous' matter.
- Following a Supreme Court decision in a separate case involving Brunetti that struck down that bar as unconstitutional, the examining attorney reexamined the applications.
- The examining attorney then issued a final refusal to register the mark on the ground that it fails to function as a trademark.
- Brunetti appealed the examining attorney's refusal to the Trademark Trial and Appeal Board (Board), an administrative tribunal within the PTO.
- On August 22, 2022, the Board issued a precedential decision affirming the examining attorney's refusal.
- Brunetti, as appellant, appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does the Trademark Trial and Appeal Board engage in arbitrary and capricious decision-making in violation of the Administrative Procedure Act by refusing to register a widely-used, all-purpose word mark for 'failure to function' as a source identifier without providing a rational, articulated standard to distinguish it from other registered commonplace word marks?
Opinions:
Majority - Judge Dyk
Yes, the Board's rejection was improper. The Board's refusal to register the mark FUCK for failure to function violates the Administrative Procedure Act's requirement for reasoned decision-making because the Board failed to articulate a coherent and rational standard. The Board must provide a clear explanation for why some 'all-purpose' or commonplace words can be registered as trademarks while others cannot. Simply stating that the mark is widely used to express familiar sentiments is insufficient, especially when the PTO has registered other common words like 'LOVE' and even the mark 'FUCK' for other goods. The Board's failure to provide 'contextual information' or a clear standard for what evidence could rebut a prima facie showing of failure to function amounts to an arbitrary 'I know it when I see it' approach. Without a rational explanation that creates a connection between the facts found and the choice made, the court cannot perform meaningful judicial review, requiring a remand for the Board to articulate a clear standard.
Dissenting - Judge Lourie
No, the Board's rejection was proper. The Board's decision should be affirmed because substantial evidence supports the conclusion that the applied-for mark cannot function as a trademark. The word 'FUCK' is a ubiquitous expletive used to express an innumerable range of emotions and sentiments, making it impossible for consumers to associate it with a single source of goods. Unlike other registered common words such as 'LOVE' or phrases like 'FUCK CANCER,' which have more limited and specific meanings, the f-word is primarily an expressive intensifier without a distinct source-identifying character. The court does not need further guidance from the Board to determine that the word fails to function as a mark under the law, and the decision to refuse registration was correct.
Analysis:
This decision reinforces the principle that administrative agencies, including the PTO, are bound by the APA's requirement for reasoned decision-making. By vacating the Board's decision, the court signals that the increasingly common 'failure to function' refusal cannot be based on a vague, unarticulated standard. The ruling pressures the Board to develop and explain a coherent legal test for determining when a widely-used or expressive term is incapable of serving as a source identifier. This will likely force greater consistency in examination and provide clearer guidance for applicants seeking to register marks that consist of common words or phrases.
