Failure-to-Function – The Truly Scandalous F-Words

The legal saga over the registration of the F-word and F-word derivatives as trademarks continues to push the development of trademark law in ways that apply well beyond the use of profanities as trademarks. Many will recall that the Supreme Court inIancu v. Brunettistruck down the prohibition on registration of "immoral or scandalous matter" under the First Amendment, allowing Mr. Brunetti to register the mark FUCT and leading the USPTO to withdraw that basis for refusing his other applications for the F-word itself (yes, that F-word). But that was just the first round of the fight for Mr. Brunetti. The USPTO then refused registration of the F-word itself on grounds that the mark "fails-to-function" as a trademark. Mr. Brunetti appealed the USPTO's rejection and, inIn re: Brunetti, the Federal Circuit gave Brunetti another win—by vacating the USPTO's rejection based on an inadequate analysis.