Commonplace or Controversial? Trademarking the F-Word

Today, we’re revisiting a story that’s as provocative as it is legally fascinating: the ongoing trademark battle over the F-word.

Read the full article

• F-Word as a Trademark? Federal Circuit Leaves the Door Open as it Vacates TTAB’s Decision

About the authors

• Jennifer A. Van Kirk
• Erica R. Halstead
• Lori B. Cohen

Transcript

Welcome to Womble Perspectives, where we explore a wide range of topics, from the latest legal updates to industry trends to the business of law. Our team of lawyers, professionals and occasional outside guests will take you through the most pressing issues facing businesses today and provide practical and actionable advice to help you navigate the ever changing legal landscape.

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Welcome back to Womble Perspectives, where law meets culture, and controversy meets clarity. 

Today, we’re revisiting a story that’s as provocative as it is legally fascinating: the ongoing trademark battle over the F-word.

Last year, we told you about artist and fashion designer Erik Brunetti’s attempt to trademark the F-word for use on cell phone cases, luggage, jewelry, and more. The Trademark Trial and Appeal Board said no, citing that the word failed to function as a trademark.

But on August 25, the Federal Circuit said, “Not so fast.”

In a split decision, the court vacated the Trademark Trial and Appeal Board’s ruling, criticizing it for being too vague. The court pointed out that the Board didn’t clearly define the standard Brunetti supposedly failed to meet. In other words, the Trademark Trial and Appeal Board said Brunetti didn’t qualify, but didn’t explain why.

This lack of clarity is especially glaring when you consider that other commonplace words, like “LOVE”, have been successfully trademarked. So why not the F-word?

The court emphasized the need for a “viable registration standard,” rather than what it called an “I know it when I see it” approach. The court also noted that the inconsistent decisions by examining attorneys only highlight the absence of coherent rules.

Now, let’s be clear: the Federal Circuit didn’t say Brunetti must get the trademark. But they did say the Trademark Trial and Appeal Board needs to do a better job explaining its reasoning. The case is now headed back to the Board for a second look.

And while Brunetti argued that this refusal was retaliation for his 2019 Supreme Court victory in Iancu v. Brunetti, where the Court struck down the USPTO’s ban on “immoral or scandalous” trademarks, the Federal Circuit rejected that claim.

So what’s next?

If the Trademark Trial and Appeal Board can’t come up with a clear, consistent standard for evaluating trademarks of commonplace words, Brunetti may finally get his registration. But if they double down and affirm the refusal again, another appeal seems almost inevitable.

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