Federal Circuit Criticizes USPTO's 'I Know It When I See It' Approach to Trademarks

Federal Circuit Criticizes USPTO's 'I Know It When I See It' Approach to Trademarks

Introduction

The US Court of Appeals for the Federal Circuit has issued a split ruling, vacating a US Patent and Trademark Office (USPTO) decision to refuse a streetwear designer’s trademark applications for the F-word. The court remanded the decision for further proceedings, stating that the agency’s reasoning “lacks sufficient clarity.”

Factual Background

Designer Erik Brunetti filed four trademark applications for FUCK in 2019, covering goods and services such as jewellery, eyewear accessories, carrying cases for mobile devices, and retail services. The USPTO’s Trademark Trial and Appeal Board (TTAB) refused the applications, holding that the term was commonplace and could not function as a trademark.

Procedural Background

In its split ruling (2-1), the court found that the TTAB failed to provide sufficient precision in its rationale for refusing the applications. The majority criticized the TTAB’s approach as a “I know it when I see it” method of determining whether a mark can function as a trademark. The court also noted that the TTAB dismissed Brunetti’s reliance on other single-word registered marks without explaining what “contextual information” might be relevant.

Contentions and Observations

Majority Opinion: Judges Dyk and Reyna ruled that the TTAB’s reasoning lacked clarity and that its dismissal of Brunetti’s reliance on other registrations was unjustified.

Dissenting Opinion: Judge Lourie disagreed, stating: “Anyone living in today’s society of degraded language can readily tell that the f-word does not indicate the source of the proposed trademarked goods and distinguish them from goods of another.”

Contextual Gap: The majority emphasized that the TTAB’s lack of explanation was especially troubling given the growing number of failure-to-function refusals in recent years.

Reasoning and Analysis

The ruling underscores the need for greater clarity and consistency in USPTO decision-making. By rejecting the TTAB’s subjective approach, the court has signaled that refusals must be based on a more objective and articulated rationale. This decision may reshape how the USPTO evaluates marks deemed commonplace or offensive.

Implications

The decision carries significant implications for trademark applicants. It suggests that even controversial or offensive terms may be registrable if the USPTO cannot justify refusals with precise reasoning. At the same time, it reflects a shift toward a more nuanced and less arbitrary standard in assessing whether a mark can function as a trademark.

In this case, the applicant was represented by California-based attorneys John Sommer and Kelly Kristine Pfeiffer.