Last week, the U.S. Court of Appeals for the Federal Circuit came out with its decision in In Re Brunetti, which sheds new light on whether widely used commonplace words can ever become registered trademarks.
Background: Iancu v. Brunetti and the Supreme Court’s Ruling
Applicant Brunetti has a history of seeking to expand the scope of acceptable trademark registrations, having previously succeeded in getting the Supreme Court to overturn the prohibition on registering scandalous words in Iancu v. Brunetti (see our post on that decision). As a result, Mr. Brunetti ultimately succeeded in obtaining a trademark registration on the mark FUCT.
Not satisfied with a registration on only the past-tense homonym of the word he really wanted, Mr. Brunetti decided to go for broke. Instead of a phonetic relative, Mr. Brunetti sought to register as a mark one of the oldest, most used, and most expressive words in the English language (at least as English was spoken in New Jersey, where I grew up): F*CK. F*CK is the utility knife of words, used in various iterations as a noun, verb, adverb, adjective, and pronoun to express the widest ranges of human emotion.
The TTAB’s Denial and Reasoning
The Trademark Trial & Appeal Board (TTAB) was unmoved. The TTAB affirmed the denial of Mr. Brunetti's proposed registration, concluding that:
“The record before us establishes that the word F*CK expresses well-recognized familiar sentiments and the relevant consumers are accustomed to seeing it in widespread use, by many different sources, on the kind of goods identified in the [applications at issue]. Consequently, we find that it does not create the commercial impression of a source indicator, and does not function as a trademark to distinguish Applicant’s goods and services in commerce and indicate their source.”
The Federal Circuit’s Decision
The Federal Circuit, while agreeing with the TTAB that such commonplace words do not normally function as a trademark, nonetheless decided that Mr. Brunetti was not entirely out of luck. Mr. Brunetti showed that in other instances, the U.S. Patent and Trademark Office has allowed registration of the F*CK mark for “snow globes” and “gummy candies,” so its categorical denial of his registration seemed suspect. He also pointed out that many other seemingly commonplace words, such as LOVE, have also been registered as marks for use with various goods and services. Indeed, he argued that “all of the 100 most common words in English are registered” as trademarks. While not holding that such inconsistency proved his case, the Federal Circuit ultimately decided that the TTAB must provide a more comprehensive explanation of and a better record for its “commonplace words” refusals to provide applicants and examiners with a rational basis for applying that doctrine, and to provide the Federal Circuit a better basis for review. So, it remanded for further proceedings, where Mr. Brunetti can try to prove that his use of F*CK is not commonplace.
[View source.]
