After winning his case at the Supreme Court allowing the trademarking of a word that can be pronounced the same way as the past participle of a swear word, a designer found his application to trademark the actual swear word rejected by the Trademark Trial and Appeal Board (TTAB).
In a precedent-setting decision, the TTAB ruled on Aug. 22 that the curse word had become omnipresent in recent years and “now appears without fuss in an impressive range of cultural domains” and isn't suitable for registration as a trademark.
In that case, the high court overruled the U.S. Patent and Trademark Office, which administers the intellectual property statute and had previously rejected a trademark application for an acronym by clothes-maker and artist Erik Brunetti. He said it's supposed to be pronounced letter by letter and stands for “Friends U Can’t Trust.” The designs include shirts, hoodies, and jackets.
In a concurring opinion, Justice Samuel Alito wrote the Supreme Court’s decision was “not based on moral relativism but on the recognition that a law banning speech deemed by government officials to be ‘immoral’ or ‘scandalous’ can easily be exploited for illegitimate ends.”
Lebow’s panel upheld a decision by the trademark examining attorney who previously refused the request, finding the word was “a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others.”
Trademark examining attorneys “review trademark applications for compliance with the Lanham Act for the purpose of determining registrability in the United States,” according to the U.S. Patent and Trademark Office (USPTO). “They research and write decisions on various statutory and procedural issues, work with applicants to correct informal defects in applications, and approve applications for publication and registration. They also draft appeal briefs and represent the USPTO before the Trademark Trial and Appeal Board (TTAB).”
The examining attorney also noted that the F-word “is one of the most versatile words in the English lexicon—in certain contexts, it is capable of provoking; in others, it conveys nothing at all, other than, perhaps, a sense of world-weariness ... ‘[few] words in our ever-expanding language are as flexible or versatile.’ This speech intensifier, once seldom spoken in polite company, has so proliferated in vernacular and commercial usage as to render it common, popular, and ordinary."
"And while the term can signal many meanings, its very ubiquity renders it incapable of serving as a source-identifier for trademark purposes.”
Because consumers are so used to seeing the word in a variety of contexts, “they would not perceive the use of the term as a mark identifying the source of Applicant’s goods and/or services but rather as only conveying an informational message or sentiment,” according to the examining attorney.
Lebow stated that the TTAB rejected Brunetti’s argument that there was no evidence to back the USPTO’s assumption “that if something is used (let us even assume widely-used) then the public cannot consider the word as a source identifier.”
The argument “fails.”
The examining attorney only has to show the word in question is “so ubiquitously used as an informational sentiment that the relevant public would not perceive [the word] as indicating the source of the goods and services in the application.” The attorney “is not required to prove to a moral certainty that consumers will not perceive [the word] to function as Applicant’s mark.”