Last month, the Trademark Trial and Appeal Board (TTAB) denied a collection of trademark applications trying to register the word FUCK for various goods and services. The applicant for those trademarks, Erik Brunetti, had already won a case at the United States Supreme Court that allowed him to register the mark FUCT. In Iancu v. Brunetti, 139 S. Ct. 2294 (2019), the Supreme Court found that the provision of the national trademark law, the Lanham Act, that barred registration of “immoral or scandalous” trademarks was unconstitutional, and Brunetti’s FUCT marks that were denied based on that provision could be registered. The Court’s decisions followed and relied upon the its seminal ruling in Matal v. Tam, 137 S. Ct. 1744 (2017), which held that a similar clause in the Lanham Act barring registration of disparaging trademarks was an unconstitutional restriction on free speech.

After winning his case at the Supreme Court, Brunetti returned to the United States Patent and Trademark Office (TTAB) to try and register several trademarks for the word FUCK. However, in a somewhat surprising decision, the TTAB denied his applications for a different reason. The TTAB found that the word FUCK fails to function as a trademark because it is widely used in various contexts and thus cannot function as a source identifier. The TTAB noted “[t]he evidence in this case shows that the word FUCK is no ordinary word, but rather one that has acquired a multitude of recognized meanings since its first recorded use, and whose popularity has soared over the years, particularly in recent times, transforming what was once a taboo word to be spoken in hushed tones to one that is trendy and cosmopolitan.” In Re Erik Brunetti, No. 88308426 (Aug. 22, 2022). The TTAB went on to reason that “FUCK is a message that is commonly used on the types of goods as to which Applicant wants exclusive rights to the term” and that “[p]rominent use of an applied-for-mark, as shown in the examples of record, is probative in determining whether a term or phrase would be perceived in the marketplace as a trademark or as a widely used message.” Id.

While the newsworthiness of this case comes from the applied-for-marks and the USPTO’s sidestep of the Supreme Court’s recent rulings, the more valuable takeaway from this decision for business owners and trademark holders is that the USPTO is willing to reject trademarks for commonly used words based on a failure to function argument. This means a mark need not be generic to be denied trademark registration. Indeed, Brunetti did not use FUCK generically.

This ruling makes it all the more imperative to consult a knowledgeable trademark attorney before deciding to file for federal trademark protection. Let our experienced attorneys guide you through the brand-building process by contacting us at 855-473-8474, or submitting a form here through our online referral service.

The “Failure to Function” Doctrine and Its Broader Implications

The TTAB’s refusal to register FUCK rests on a doctrine that predates the Brunetti litigation: a mark must function as a source identifier to be registrable, regardless of whether it is scandalous or disparaging. Under 15 U.S.C. §§ 1052 and 1051, a trademark is a word, name, symbol, or device used to identify and distinguish the goods of one person from those of others and to indicate the source of the goods. If a word or phrase is so widely used by many different sources that consumers do not associate it with a single origin, it cannot function as a trademark.

The TTAB has applied the failure-to-function doctrine to prohibit registration of a growing category of terms beyond profanity: motivational phrases like “DRIVE,” “HUSTLE,” and “GRIND” used on apparel; common social expressions like “LOL” and “YOLO”; and widely shared cultural or political messages. The doctrine is grounded in the recognition that monopolizing commonly used expressions would harm competition and consumers. Granting one company exclusive rights to a phrase that competitors need to use in the normal course of commerce imposes an undue restraint on trade.

What Makes a Mark Eligible for Registration After Brunetti and Tam

The Supreme Court’s decisions in Matal v. Tam and Iancu v. Brunetti removed two viewpoint-discriminatory provisions from the Lanham Act — the bar on “disparaging” marks and the bar on “immoral or scandalous” marks. But these decisions did not create an open door for registration of any offensive or provocative mark. They removed content-based restrictions; they did not modify the substantive requirements for trademark distinctiveness and source-identification function.

After Brunetti, the USPTO still evaluates offensive or provocative marks under the same framework used for any mark: Is it distinctive? Does it function as a source identifier? Is it generic, descriptive, suggestive, arbitrary, or fanciful? A mark that is arbitrary or fanciful — even if offensive — is eligible for registration because it naturally functions as a source identifier. A mark that is so widely used in commerce that consumers cannot identify a single source will fail regardless of its content. The practical lesson for business owners: the strength and registrability of a mark depends on its distinctiveness, not its offensiveness.

Surname Marks, Geographic Marks, and Other Common Registration Pitfalls

The failure-to-function doctrine is not the only non-content-based ground for trademark refusal that business owners must navigate. Common pitfalls include:

• Primarily merely a surname: Under 15 U.S.C. § 1052(e)(4), a mark that is primarily merely a surname cannot be registered on the Principal Register without proof of acquired distinctiveness (secondary meaning). If your proposed trademark is your family name, you will need to demonstrate years of use in commerce and evidence that consumers associate the name with your goods or services specifically.
• Primarily geographically descriptive: Under 15 U.S.C. § 1052(e)(2), marks that are primarily geographically descriptive of the applicant’s goods or services require proof of secondary meaning. “MICHIGAN BEER” for a Michigan brewery, for example, describes the geographic origin and would require substantial evidence of acquired distinctiveness.
• Merely descriptive: Under 15 U.S.C. § 1052(e)(1), marks that merely describe a characteristic or quality of the goods or services require secondary meaning. “FAST DELIVERY” for a courier company describes the service and is not inherently registrable.

The Supplemental Register and Its Strategic Value

When a mark cannot be registered on the Principal Register because it is descriptive or lacks secondary meaning, the Supplemental Register provides an alternative. Registration on the Supplemental Register does not provide the same legal presumptions as Principal Register registration — there is no presumption of validity, no incontestability, and no constructive notice. However, Supplemental Register registration does allow the registrant to use the ® symbol, provides some protection against confusingly similar marks in USPTO examination, and can help establish an international registration filing under the Madrid Protocol.

More importantly, five years of substantially exclusive and continuous use of a mark can establish secondary meaning sufficient to support a Principal Register application. A business that initially registers on the Supplemental Register can later migrate to the Principal Register by demonstrating that consumers have come to associate the previously descriptive mark with a single source. Building and documenting secondary meaning is a long-term strategic exercise — one that requires experienced trademark counsel from the outset.

Contact Revision Legal for Trademark Registration and Strategy

Selecting a mark that is both commercially effective and legally registrable requires more than checking availability in the USPTO database. Revision Legal’s trademark attorneys evaluate distinctiveness, assess failure-to-function risks, develop clearance strategies, and prosecute applications through the USPTO examination process. Whether you are launching a new brand or trying to understand why your application was refused, we can help. Call us at 231-714-0100 or visit our contact page. You can also explore our full range of trademark services.