For F***’s Sake: Why Everyone Needs Clarity Over F-Word Trademark Refusal

Artist and fashion designer Erik Brunetti—owner of the streetwear trademark ‘FUCT’—is clashing with the US Patent and Trademark Office (USPTO) again, this time over the well-used word ‘FUCK’.

Willie Stroever, a member at Cole Schotz, tells WIPR that he has seen this increase in his day-to-day practice.

Questions that need answers include: “What are the elements that you have to hit for a failure-to-function refusal, and then what kind of evidence would overcome it?” he says.The appeals board was “100% right” in remanding the case for further explanation, adds Stroever. “Everyone needs that clarification.”

Stroever believes that without Iancu v Brunetti, Brunetti’s four applications for ‘FUCK’ would have been met with a straight refusal.

He also notes the connection between the cases, as Brunetti’s current applications were pending at the USPTO while the earlier case was being heard at the Supreme Court.

Putting up a fight

This point could be reflected in Brunetti’s argument that the USPTO is retaliating against him for exercising his “right to petition” the courts for redress. But the circuit judges rejected both of these arguments.

“My impression is the trademark office was not going to let [Brunetti’s applications] through without a fight,” says Stroever. “And this is the attempt at that. I don’t think they’re taking it out on him, but I think they’re going to make him work.”

Stroever, meanwhile, doesn’t necessarily foresee a spike in registrations for similar “naughty” or otherwise commonplace terms.

Instead, the impact will more likely be on more non-traditional trademarks, such as product shapes, sounds and coloured labels, he suggests.“People really do associate them with a source. So I think this will be a good thing [for trademark holders].”

Stroever concurs, noting that this lack of clear rules provided “an easy-out for the trademark office in the past.

“One of the big tools that we have as practitioners is to look at what else is out there. And that’s how we can give guidance to clients—to look at what they’ve done in the past, so [it’s more likely] they’ll do that in the future.”

He highlights the circuit judges’ comment that “there can’t just be ‘I know it when I see it’. There’s got to be a clear rule, there’s got to be clear guidance.

“So I think this will definitely help practitioners and examiners, because they’ll have their guidance, they’ll have their rules, it’ll make their life easier.

“And certainty is just better. In the trademark world, there’s so much that’s fuzzy—Is it a trademark? Is it not a trademark? Does it have distinctiveness? Does it not? So more rules will probably help everyone.”

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