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Winner of ‘FUCT’ Supreme Court Case Takes Loss on Blunter Mark

Aug. 23, 2022, 4:41 PM

A designer, who pressed his FUCT trademark at the US Supreme Court and succeeded in nullifying a ban on registering vulgar trademarks, failed to get a more direct iteration of the term past the Trademark Trial and Appeal Board.

Erik Brunetti can’t register “FUCK” for various goods including cell phone cases, jewelry, and luggage because it does not function as a trademark, the TTAB said in a precedential decision Monday. The decision in part hinged on the fact that the word is so ubiquitous, noting “it now appears without fuss in an impressive range of cultural domains.”

The decision noted that “not every designation adopted with the intention that it perform a trademark function necessarily accomplishes that purpose.” The board said the word is “no ordinary word” because of its range. Beyond sexual intercourse, it functions as a word intensifier, insults or offends, and notes sadness, confusion, panic, boredom, annoyance, disgust, or pleasure.

The word also appears on a variety of third-party goods in relevant classes of products, the board said. Consumers will likely perceive it as a message or ornamental feature of the product rather than an indicator of who made it, it said.

Brunetti filed four applications to register the new mark while his FUCT—which he said means “Friends U Can’t Trust"—case was pending before the Supreme Court. They would cover a range of products that also included sunglasses, watches, athletic bags, backpacks, wallets, retail services, and online retail platforms.

Given the nature of the term and of Brunetti’s FUCT appeal, the applications were suspended pending the outcome. After Brunetti convinced the Supreme Court to rule the Lanham Act’s ban on registering vulgar marks is unconstitutional, the examiner resumed the FUCK applications and found different grounds to block them—that the word didn’t function as a trademark.

Brunetti argued that it’s impossible to disprove a conclusion that something is “widely used” if the examiner only relies on evidence of use without analyzing relative frequency. He submitted material purporting to show relatively less frequent use over the last 200 years.

But the board said the “relative frequency” standard advocated by Brunetti would be impractical to administer, and doesn’t measure consumer perception, much less narrow in on the time of the application. “Mere commonness” isn’t the basis for refusal, it said.

The TTAB also said the examiner doesn’t have to prove consumers will not perceive a mark as a source-indicator. It’s enough to show sufficient third-party use suggests consumers familiar with non-trademark use are unlikely to perceive it as one. That leaves it up to the applicant to show otherwise, and Brunetti failed to do so, the board said.

Administrative Trademark Judge Mark Lebow wrote the opinion, joined by Judges Marc A. Bergsman and Elizabeth A. Dunn.

John R. Sommer, Attorney at Law represented Brunetti.

The case is In Re Erik Brunetti, TTAB, Serial Nos. 88308426, 88308434, 88308451, and 88310900, 8/22/22

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editor responsible for this story: Jay-Anne B. Casuga at jcasuga@bloomberglaw.com