Federal Circuit disposition — 23-1539

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: ERIK BRUNETTI,
Appellant
______________________
2023-1539
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Nos.
88308426, 88308434, 88308451, 88310900.
______________________
Decided: August 26, 2025
______________________
J OHN R. SOMMER, John R. Sommer, Attorney-at-Law,
Villa Park, CA, argued for appellant. Also represented by
K ELLY K RISTINE P FEIFFER.
BRADLEY HINSHELWOOD, Appellate Staff, Civil Divi-
sion, United States Department of Justice, Washington,
DC, argued for appellee Coke Morgan Stewart. Also repre-
sented by BRIAN M. BOYNTON, D ANIEL T ENNY ; AMY J.
N ELSON, Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA.
______________________
Before L OURIE, D YK, and REYNA, Circuit Judges.
Opinion for the court filed by Circuit Judge D YK.
Dissenting opinion filed by Circuit Judge L OURIE.
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IN RE: BRUNETTI 2
D YK, Circuit Judge.
Erik Brunetti appeals a decision of the Trademark
Trial and Appeal Board (“Board”). The Board affirmed the
examining attorney’s refusal to register the word FUCK as
a trademark for certain goods and services because it failed
to function as a trademark. In re Brunetti, No. 88308426,
2022 WL 3644733 (T.T.A.B. Aug. 22, 2022). We reject
many of Mr. Brunetti’s arguments but nonetheless con-
clude that the decision of the Board lacks sufficient clarity,
and, accordingly, we vacate and remand for further pro-
ceedings.
BACKGROUND
In February 2019, Mr. Brunetti filed four intent-to-use
trademark registration applications. He sought registra-
tion on the principal register of the standard character
mark FUCK (the “proposed mark” or the “applied-for
mark”) for (1) goods including sunglasses and carrying
cases for cell phones, laptops, and glasses;1 jewelry,
watches, and related products;2 backpacks, wallets, lug-
gage, and other bags;3 and (2) services including retail
store services featuring the aforementioned goods and a
wide variety of other consumer goods.4 S. App’x 1–2.5
1 Application Serial No. 88308426 for goods in Inter-
national Class 9.
2 Application Serial No. 88308434 for goods in Inter-
national Class 14.
3 Application Serial No. 88308451 for goods in Inter-
national Class 18.
4 Application Serial No. 88310900 for services in In-
ternational Class 35.
5 Citations to “S. App’x” refer to the supplemental
appendix filed by the government with its Response Brief.
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IN RE: BRUNETTI 3
After issuing non-final refusals and receiving re-
sponses from Mr. Brunetti,6 the United States Patent and
Trademark Office (“PTO”) examining attorney refused the
trademark applications on the ground that “the applied-for
mark is a slogan or term that does not function as a trade-
mark or service mark to indicate the source of applicant’s
goods and/or services and to identify and distinguish them
from others.” S. App’x 191; accord S. App’x 2048, 2641,
3113.7 The examining attorney refused the applications
under the heading “Refusal under Trademark Act Sec-
tions 1, 2, 3, and 45—Widely-used Commonplace Wording.”
Id. In relation to the jewelry and related goods application,
for example, the examining attorney explained “the ap-
plied-for mark is a commonplace term, message, or expres-
sion widely used by a variety of sources that merely
conveys an ordinary, familiar, well-recognized concept or
sentiment.” Id. The examining attorney “attached evi-
dence from multiple internet websites and internet based
periodicals [to] show[] that the term FUCK is commonly
used as a versatile expression that conveys a wide range of
emotion, from disdain to joy.” S. App’x 192; see
6 The applications were initially refused on the
ground that the proposed mark “[c]onsists of or comprises
immoral[] . . . or scandalous matter.” 15 U.S.C. § 1052(a).
The Supreme Court subsequently held, in a separate case
involving Mr. Brunetti, that section 1052(a)’s bar on regis-
tering immoral or scandalous matter was unconstitutional.
Iancu v. Brunetti, 588 U.S. 388, 390 (2019). The examining
attorney then reexamined the applications, leading to the
decisions under review here.
7 The record and legal issues applicable to each ap-
plication are substantively similar. The Board thus pri-
marily referred to Mr. Brunetti’s application for jewelry,
watches, and related property, S. App’x 4 n.6, and we fol-
low suit.
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IN RE: BRUNETTI 4
S. App’x 195–382 (attached evidence). The evidence in-
cluded images of jewelry and other goods with no connec-
tion to Mr. Brunetti marketed on websites. See, e.g.,
S. App’x 289–339.
On August 22, 2022, the Board in a precedential opin-
ion affirmed the refusals to register the proposed mark for
failure to function as a mark. The Board concluded that
“[m]ere commonality[] . . . is not the test” for a failure to
function refusal but, instead, the Board “must assess
whether Applicant’s proposed mark, [FUCK], functions as
a mark based on whether the relevant public, i.e. purchas-
ers or potential purchasers of the identified [] goods and []
services . . . would perceive [FUCK] as identifying the
source or origin of such goods and services.” S. App’x 36
(quoting In re Team Jesus LLC, 2020 U.S.P.Q.2d 11489,
2020 WL 7312021, at *3 (T.T.A.B. 2020)) (alterations in
original). But the Board explained that “[m]atter may be
merely informational and fail to function as a trademark if
it is a common term or phrase that consumers of the goods
or services identified in the application are accustomed to
seeing used by various sources to convey ordinary, familiar,
or generally understood concepts or sentiments.”
S. App’x 12. “[T]here are designations, including certain
widely-used messages, which are inherently incapable of
being regarded as source indicators.” S. App’x 34–35.
“Such widely used messages will be understood as merely
conveying the ordinary concept or sentiment normally as-
sociated with them, rather than serving any source-indi-
cating function.” S. App’x 12.
The Board then considered the ubiquity of the applied-
for mark, explaining that “FUCK is no ordinary word, but
rather one that has acquired a multitude of recognized
meanings . . . , and whose popularity has soared over the
years” such that it is “arguably one of the most expressive
words in the English language—an ‘all-purpose word.’”
S. App’x 38–39. Next, the Board considered the applied-for
mark’s use in the marketplace, explaining that
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IN RE: BRUNETTI 5
“[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.’” S. App’x 44 (cit-
ing In re Mayweather Promotions, LLC, 2020 U.S.P.Q.2d
11298, 2020 WL 6689736, at *5 (T.T.A.B. 2020)). The
Board concluded that:
The record before us establishes that the word
FUCK expresses well-recognized familiar senti-
ments and the relevant consumers are accustomed
to seeing it in widespread use, by many different
sources, on the kind of goods identified in the [ap-
plications at issue]. Consequently, we find that it
does not create the commercial impression of a
source indicator, and does not function as a trade-
mark to distinguish Applicant’s goods and services
in commerce and indicate their source.
S. App’x 46. Accordingly, the Board affirmed the refusals
to register. S. App’x 58.
Mr. Brunetti appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(B).
D ISCUSSION
We review the Board’s decision in accordance with the
standards of the Administrative Procedure Act (“APA”).
Bridgestone/Firestone Rsch., Inc. v. Auto. Club De L’Quest
De La France, 245 F.3d 1359, 1361 (Fed. Cir. 2001) (citing
Dickinson v. Zurko, 527 U.S. 150, 152 (1999)). We evaluate
the Board’s legal conclusions de novo. In re
HOTELS.COM, L.P., 573 F.3d 1300, 1302 (Fed. Cir. 2009).
We uphold the Board’s factual findings unless they are ar-
bitrary, capricious, an abuse of discretion, or unsupported
by substantial evidence. Id. “The [APA] . . . establishes a
scheme of ‘reasoned decisionmaking,’” which requires that
“the process by which [an agency] reaches [a] result must
be logical and rational.” Allentown Mack Sales & Serv.,
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IN RE: BRUNETTI 6
Inc. v. NLRB, 522 U.S. 359, 372 (1998) (quoting Motor Ve-
hicle Mfrs. Ass’n of United States, Inc. v. State Farm Mut.
Auto. Ins. Co., 463 U.S. 29, 52 (1983) (“State Farm”)).
We reject most of Mr. Brunetti’s arguments but con-
clude that the Board has failed to articulate a satisfactory
explanation for its action.
I
We begin by considering Mr. Brunetti’s arguments that
the Board violated various constitutional rights and that
the Supreme Court’s decision in Iancu v. Brunetti, 588 U.S.
388 (2019), dictates the outcome of this case. We find these
arguments unpersuasive.
First, Mr. Brunetti argues that the PTO has violated
the First Amendment by engaging in viewpoint discrimi-
nation because it has allowed trademark registration of
“positive terms,” such as FUCK CANCER and LOVE, while
refusing registration of “negative terms” or “profanity,”
such as the applied-for mark. Appellant’s Br. 52–53 (citing
Iancu v. Brunetti, 588 U.S. 388 (2019); Matal v. Tam,
582 U.S. 218 (2017)). The Board explained that the focus
of a failure-to-function refusal is “whether the relevant con-
sumers perceive [the applied-for mark] as a trademark”
and that such a “refusal applies evenhandedly, regardless
of any viewpoint expressed.” S. App’x 51. Mr. Brunetti has
identified no basis for concluding that the Board’s analysis
in this case deviated from that viewpoint-neutral principle.
Second, Mr. Brunetti argues that the PTO is retaliat-
ing against him for exercising his “right to petition” the
courts for redress. Appellant’s Br. 53–55. Mr. Brunetti ap-
pears to be referring to his prior case addressed by the Su-
preme Court in Iancu v. Brunetti, 588 U.S. 388 (2019),
where Mr. Brunetti prevailed and the Supreme Court held
that the PTO had erred in declining to register the mark
FUCT on the ground that it was “immoral or scandalous”
within the meaning of 15 U.S.C. § 1052(a). Brunetti,
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IN RE: BRUNETTI 7
588 U.S. at 390 (holding that section 1052(a) bar to regis-
tration of “immoral[ ] or scandalous” trademarks violated
the First Amendment). Mr. Brunetti’s sole evidence of re-
taliation is that the refusals in this case came after his Su-
preme Court victory. We conclude Mr. Brunetti has failed
to show the Board’s decision in this case is retaliatory.
Third, Mr. Brunetti appears to argue that Iancu
v. Brunetti dictates the outcome of this case. We disagree.
Iancu v. Brunetti addressed a different legal issue (the con-
stitutionality of a prohibition on scandalous words) than is
present in this case (failure to function as a mark).
588 U.S. at 390. It also addressed a fundamentally differ-
ent mark (FUCT as compared to FUCK). The applied-for
mark in this case is a well-defined and widely used word.
FUCT, on the other hand, is not a word at all; it is wordplay
on its “phonetic twin[,] . . . ‘fucked,’” In re Brunetti,
877 F.3d 1330, 1338 (Fed. Cir. 2017), aff’d sub nom. Iancu
v. Brunetti, 588 U.S. 388 (2019). Iancu v. Brunetti thus did
not answer the question in this case: whether the Board
erred in determining the applied-for mark fails to function
as a trademark. Additionally, Mr. Brunetti’s successful
registration of the FUCT mark, see U.S. Trademark Regis-
tration No. 6230977 (registered Dec. 29, 2020), does not
guarantee him the ability to register a separate and funda-
mentally different mark.
II
Mr. Brunetti next appears to argue that, in affirming
the examining attorney’s refusals, the Board improperly
created an “entirely novel” failure-to-function doctrine
“wherein there are some words or phrases that just can
never be registered for any goods or services because the
terms are allegedly ‘too widely-used.’” Appellant’s Br. 6–7
(emphases omitted).
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IN RE: BRUNETTI 8
A
The registrability of a trademark is governed by the
Lanham Act. See 15 U.S.C. §§ 1051, 1052. By definition, a
“trademark” must indicate a product’s source:
The term “trademark” includes any word, name,
symbol, or device, or any combination thereof—
(1) used by a person, or (2) which a person has a
bona fide intention to use in commerce . . . , to iden-
tify and distinguish his or her goods, including a
unique product, from those manufactured or sold
by others and to indicate the source of the goods,
even if that source is unknown.
15 U.S.C. § 1127. It is thus “a threshold requirement of
registrability that [an applied-for] mark ‘identify and dis-
tinguish’ the goods and services of the applicant from those
of others, as well as ‘indicate the source’ of those goods and
services.” In re GO & Assocs., LLC, 90 F.4th 1354, 1356
(Fed. Cir. 2024) (quoting 15 U.S.C. § 1127); Jack Daniel’s
Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 146 (2023)
(“[A] trademark is not a trademark unless it identifies a
product’s source (this is a Nike) and distinguishes that
source from others (not any other sneaker brand).”).
To distinguish one producer’s goods or services from
another’s, and thus be a registerable trademark, a pro-
posed mark must be “distinctive,” either inherently or
through the acquisition of secondary meaning.
1 J. Thomas McCarthy, McCarthy on Trademarks & Un-
fair Competition § 4:13 (5th ed.) (“McCarthy”). “Distinc-
tiveness is often expressed on an increasing scale: Word
marks ‘may be (1) generic; (2) descriptive; (3) suggestive;
(4) arbitrary; or (5) fanciful.’” United States Pat. & Trade-
mark Off. v. Booking.com B.V., 591 U.S. 549, 553 (2020)
(quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.
763, 768 (1992)). “A mark that is, for example, generic or
descriptive, fails to function as a source identifier, though
descriptive marks can be registered if they have acquired
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IN RE: BRUNETTI 9
secondary meaning in the perception of consumers.” In re
Vox Populi Registry Ltd., 25 F.4th 1348, 1351 (Fed. Cir.
2022) (citations omitted).8
But “the source identifier requirement is broader than
just whether a proposed mark is generic or descriptive.”
Vox, 25 F.4th at 1351. The Supreme Court and our court
have recognized that a claimed mark that does not serve as
a source identifier cannot be registered under the Lanham
Act. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159,
162–64 (1995) (“It is the source-distinguishing ability of a
mark . . . that permits it to serve the[] basic purposes [of
trademark law].”); GO, 90 F.4th at 1356 (“If the nature of
a proposed mark would not be perceived by consumers as
identifying the source of a good or service, it is not registra-
ble.”); Vox, 25 F.4th at 1350–51 (“[T]he source identifier
and descriptiveness inquiries are ‘complementary and op-
posite sides of the same coin to the extent that a mark . . .
is “merely descriptive” of the goods.’” (quoting In re Cooper,
254 F.2d 611, 613 (CCPA 1958)). It is thus well-established
that an applied-for mark that does not serve as a source
identifier fails to function as a trademark and should be
refused federal trademark registration.
The source-identifier inquiry “typically focuses on how
the mark is used in the marketplace and how it is perceived
8 “To establish secondary meaning, a manufacturer
must show that, in the minds of the public, the primary
significance of a product feature or term is to identify the
source of the product rather than the product itself.” In-
wood Lab’ys, Inc. v. Ives Lab’ys, Inc., 456 U.S. 844, 851 n.11
(1982). The Supreme Court has explained that a mark that
otherwise fails to indicate a source may become source-
identifying by attaining secondary meaning. See, e.g.,
Qualitex, 514 U.S. at 166 (explaining that a color alone can
“distinguish[] a firm’s goods and identif[y]” if it develops
secondary meaning).
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IN RE: BRUNETTI 10
by consumers.” GO, 90 F.4th at 1356. Whether or not a
proposed mark functions as a source identifier is a question
of fact that we review for substantial evidence. Id. at 1357.
At least as an initial matter, the examining attorney bears
the burden to establish a prima facie case of failure to func-
tion. S. App’x 40–41.9
B
Mr. Brunetti argues that the Board misconstrued the
failure-to-function doctrine in holding that marks cannot
be registered if they are “widely-used commonplace terms.”
Appellant’s Br. 25. Neither the examining attorney nor the
Board made such a holding.
The examining attorney explained that the basis for
the refusals was that “the applied-for mark [was] a slogan
or term that [did] not function as a trademark or service
mark to indicate the source of applicant’s goods and/or ser-
vices and to identify and distinguish them from others.”
S. App’x 116; accord S. App’x 191, 1552. The Board’s affir-
mance similarly was based on the applied-for mark’s fail-
ure to distinguish the goods and services of the user from
those of others, i.e., its failure to function as a trademark.
9 The Board explained that “[t]he Examining Attor-
ney is required to establish a reasonable predicate for his
position—i.e., a prima facie case—that FUCK is not regis-
trable” and, after the examining attorney made such a
showing, Mr. Brunetti was required to rebut it by “com[ing]
forth with competent evidence that consumers would per-
ceive the proposed mark as a source identifier.”
S. App’x 40–41. Neither party here disputes that the ex-
amining attorney had the initial burden to establish a
prima facie case of failure to function. Because we conclude
the Board erred in assessing the examining attorney’s
prima facie case, we do not address the correctness of the
Board’s burden-shifting framework.
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IN RE: BRUNETTI 11
See, e.g., S. App’x 28–29, 63–64. The Board made clear
that “commonality . . . is not the test” for determining
whether an applied-for mark functions as a trademark.
S. App’x 36; see also S. App’x 45 n.79.
This is correct under our caselaw—the fact that a mark
is a commonplace word is itself not a ground for refusing
registration. Courts have repeatedly explained that arbi-
trary or suggestive marks consisting of only a commonplace
word or phrase, such as CAMEL for cigarettes, can be in-
herently distinctive and thus registered on the principal
register.10 See, e.g., Wal-Mart Stores, Inc. v. Samara Bros.,
529 U.S. 205, 209–11 (2000) (noting inherent distinctive-
ness of “arbitrary” marks such as “Camel” cigarettes). The
Board’s decision appropriately acknowledged that the
“commonality” of a word or phrase alone cannot form the
basis of a refusal to register an applied-for mark. See
S. App’x 36; S. App’x 45 n.79.
Mr. Brunetti also suggests that the Board’s decision
cannot be sustained under the informational matter doc-
trine. The Board’s failure-to-function analysis in this case
is similar to, but not identical to, an informational matter
refusal. The Board has held that “[s]logans and other
terms that are considered to be merely informational in na-
ture[] . . . are not registrable.” In re Eagle Crest, Inc.,
10 Arbitrary word marks are “words in common lin-
guistic use but which, when used with the goods or services
in issue, neither suggest nor describe any ingredient, qual-
ity or characteristic of those goods or services,” such as
“APPLE for computers and other electronic goods” and
“SHELL for gasoline.” 1 McCarthy § 11:11. “Marks[] . . .
that are ‘“arbitrary” (“Camel” cigarettes), “fanciful” (“Ko-
dak” film), or “suggestive” (“Tide” laundry detergent)’[]
may be placed on the principal trademark register because
they are ‘inherently distinctive.’” Booking.com, 591 U.S.
at 553 (quoting Wal-Mart, 529 U.S. at 210–11).
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IN RE: BRUNETTI 12
96 U.S.P.Q.2d 1227, 2010 WL 3441109, at *2 (T.T.A.B.
2010). But in those cases, the proposed marks conveyed
recognized information.11 In affirming the refusals here,
the Board relied on its determination that the applied-for
mark “is arguably one of the most expressive words in the
English language” and that it is used “to convey a wide[]
range of recognized concepts and sentiments.” S. App’x 39.
Unlike the proposed marks refused as merely informa-
tional matter, the applied-for mark in this case does not
convey a single idea or a complete piece of information, nor
did the Board analyze it as such.
11 See Eagle Crest, 2010 WL 3441109, at *5 (refusing
registration of ONCE A MARINE, ALWAYS A MARINE
for clothing because “[t]he primary function of this familiar
Marine slogan . . . is[] to express support, admiration, or
affiliation with the Marines”); D.C. One Wholesaler, Inc.
v. Chien, 120 U.S.P.Q.2d 1710, 2016 WL 7010638, at *7
(T.T.A.B. 2016) (refusing registration of I ♥ DC for bags,
clothing, and plush toys “[b]ecause the nature of the phrase
will be perceived as informational[] and . . . because the
ubiquity of the phrase . . . has given it a significance as an
expression of enthusiasm”); In re Volvo Cars of N. Am., Inc.,
46 U.S.P.Q.2d 1455, 1998 WL 239298, at *5 (T.T.A.B.
1998) (refusing registration of DRIVE SAFELY for cars
and car parts because the phrase “would be regarded
simply as a familiar safety admonition, particularly when
used in connection with automobiles”); Trademark Manual
of Examining Procedure (July 2022) § 1202.04(b) (preclud-
ing from trademark protection “informational matter,”
such as slogans, terms, and phrases used by the public to
convey familiar sentiments, because consumers are un-
likely to “perceive the matter as a trademark or service
mark for any goods and services”).
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IN RE: BRUNETTI 13
III
The broad spectrum of marks about which the Board is
concerned here is clear enough. The Board focused on the
applied-for mark’s use as an “all-purpose word.”
S. App’x 38–39 (citation omitted); see also id. (“FUCK is no
ordinary word, but rather one that has acquired a multi-
tude of recognized meanings since its first recorded
use[] . . . .”). We refer to such words with many meanings
as “all-purpose word marks.” We see no error in the
Board’s fact determination that the record demonstrates
the “the ubiquity of the term FUCK as an expression to
convey a wide[] range of recognized concepts and senti-
ments.” S. App’x 39.
But Mr. Brunetti argues that the Board erred by allow-
ing the registration of some all-purpose word marks while
inexplicably denying registration of others, including reg-
istrations for the word FUCK, without any explanation as
to the difference. For example, Mr. Brunetti argues that
the PTO has registered other marks consisting only of a
ubiquitous word that has a variety of meanings, such as
LOVE, and that “all of the 100 most common words in Eng-
lish are registered.” Appellant’s Br. 14–16 (emphasis omit-
ted); see also, e.g., U.S. Trademark Registration
No. 2191439 (LOVE in standard characters registered for
“fresh fruit and vegetables” on September 22, 1998). In
fact, he argues that the applied-for mark, FUCK in stand-
ard characters, has been registered by a third party for
goods in International Class 28, “[s]now globes; [t]oy snow
globes,” U.S. Trademark Registration No. 6172195 (regis-
tered Oct. 13, 2020), and then by another party for goods in
International Class 30, “[g]ummy candies,” U.S.
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IN RE: BRUNETTI 14
Trademark Registration No. 7344225 (registered Apr. 2,
2024), after the Board’s decision in this case was pub-
lished.12
On appeal, the PTO does not dispute the existence of
these registrations. It admits that “the [PTO] has regis-
tered other marks including FUCK or other common
words,” Appellee’s Br. 15, but argues that our cases have
consistently recognized that the PTO need not reconcile all
past cases with the case under consideration. Id. at 30–31.
We have recognized that a decision of the Board may
not be challenged on the ground that examining attorneys
in other cases may have made erroneous rulings. See, e.g.,
In re Cordua Rests., Inc., 823 F.3d 594, 600 (Fed. Cir.
2016); In re Nett Designs, 236 F.3d 1339, 1342 (Fed. Cir.
2001).13 Understanding the basis and scope of this
12 To the extent the registered trademarks referenced
in this opinion are not part of the record on appeal, we take
judicial notice of them under Fed. R. Evid. 201(c). We have
determined that the registration documents by the PTO
“can be accurately and readily determined from sources
whose accuracy cannot reasonably be questioned.” Fed. R.
Evid. 201(b)(2); see In re Chippendales USA, Inc., 622 F.3d
1346, 1356 (Fed. Cir. 2010).
13 See also, e.g., In re Shinnecock Smoke Shop,
571 F.3d 1171, 1174 (Fed. Cir. 2009) (determining that
“[a]pplicant’s allegations regarding similar marks” were
“irrelevant” because “[e]ven if all of the third-party regis-
trations should have been refused registration under sec-
tion 1052(a), such errors d[id] not bind the USPTO to
improperly register Applicant’s marks”); In re Boulevard
Ent., Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003) (“The fact
that, whether because of administrative error or otherwise,
some marks have been registered even though they may be
in violation of the governing statutory standard does not
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IN RE: BRUNETTI 15
principle requires some understanding of the structure of
PTO trademark examination. In 2022, there were over
700 examining attorneys charged with addressing trade-
mark registration applications. See U.S. Patent & Trade-
mark Office, Fiscal Year 2022 Agency Financial Report 20
(“2022 Financial Report”). If the examining attorney issues
a final decision refusing registration of the application, ap-
peal is available to the Board, 15 U.S.C. § 1070, which is
comprised of administrative trademark judges and certain
other high-level PTO officers, id. § 1067(b). The Board is-
sues precedential decisions (such as the decision here),
which are binding on the Board, and nonprecedential deci-
sions, which are not binding.
Our decisions recognize that, through examiner error,
some marks are granted that should not have been
granted, making it impossible to require the PTO to assure
consistency among all examining attorney decisions. We
have explained that “[t]he PTO is required to examine all
trademark applications for compliance with each and every
eligibility requirement, . . . even if the PTO earlier mistak-
enly registered a similar or identical mark suffering the
same defect.” Cordua, 823 F.3d at 600; see also Nett,
236 F.3d at 1342 (“Even if some prior registrations had
some characteristics similar to [the application], the PTO’s
allowance of such prior registrations does not bind the
Board or this court.”). To that end, we have explained that
“[e]ach application for registration must be considered on
its own merits.” In re Merrill Lynch, Pierce, Fenner, &
Smith, Inc., 828 F.2d 1567, 1569 (Fed. Cir. 1987); accord
Nett, 236 F.3d at 1342; In re Owens-Corning Fiberglas
Corp., 774 F.2d 1116, 1127 (Fed. Cir. 1985); In re Loew’s
mean that the agency must forgo applying that standard in
all other cases.”), abrogated on other grounds by In re Tam,
808 F.3d 1321 (Fed. Cir. 2015) (en banc).
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IN RE: BRUNETTI 16
Theatres, Inc., 769 F.2d 764, 769 (Fed. Cir.1985).14 This
does not mean that the Board need not take account of pre-
vailing practice. The Supreme Court recently in Book-
ing.com explained that the PTO must consider its “own
past practice” in developing a “comprehensive rule.”
591 U.S. at 558.
Nor does this mean that the Board has no obligation to
develop coherent and rational rules for the guidance of ex-
amining attorneys and the Board in other proceedings.
Like other agencies, the Board “must examine the relevant
14 Although Mr. Brunetti argues the PTO’s registra-
tion decisions at the examining attorney level have been
inconsistent, there is no contention here that the Board’s
action in this case is inconsistent with prior Board deci-
sions. We note that even with respect to Board decisions,
the Board has broad authority to distinguish past cases. As
in the patent area, “not every instance of an agency reach-
ing inconsistent outcomes in similar, related cases will nec-
essarily be erroneous.” Vicor Corp. v. SynQor, Inc.,
869 F.3d 1309, 1322 (Fed. Cir. 2017). However, when the
Board reaches inconsistent decisions in almost identical
situations, remand is required. See id. (remanding where
the Patent Trial and Appeal Board (“PTAB”) rendered in-
consistent decisions “on the same technical issue between
the same parties on the same record”); see also Novartis AG
v. Torrent Pharms. Ltd., 853 F.3d 1316, 1325 (Fed. Cir.
2017) (explaining that the relevant APA provisions were
satisfied where PTAB’s discussion of prior art reference in
a final written decision “was not inconsistent with its re-
view of [the reference]” in an earlier decision); Local 814,
Int’l Bhd. of Teamsters v. NLRB, 512 F.2d 564, 567
(D.C. Cir. 1975) (remanding two decisions of the National
Labor Relations Board that were “factually similar and os-
tensibly inconsistent” because the Board “ha[d] not ex-
plained its reasons for reaching different results”).
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IN RE: BRUNETTI 17
data and articulate a satisfactory explanation for its action
including a ‘rational connection between the facts found
and the choice made.’” State Farm, 463 U.S. at 43 (quoting
Burlington Truck Lines v. United States, 371 U.S. 156, 168
(1962)).
In addition, to enable us in our role of judicial review,
the Board must make “sufficient findings and reasoning to
permit meaningful appellate scrutiny”—a requirement
that applies with equal force to issues of law and issues of
fact. Gechter v. Davidson, 116 F.3d 1454, 1458 (Fed. Cir.
1997) (vacating decision of the Board of Patent Appeals and
Interferences); Nazomi Commc’ns, Inc. v. Arm Holdings,
PLC, 403 F.3d 1364, 1371 (Fed. Cir. 2005); see also Prince-
ton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960,
970 (Fed. Cir. 2015) (explaining that judicial review under
the substantial evidence standard “can only take place
when the agency explains its decisions with sufficient pre-
cision, including the underlying factfindings and the
agency’s rationale” (quoting Packard Press, Inc. v. Hewlett–
Packard Co., 227 F.3d 1352, 1357 (Fed. Cir. 2000))); SEC
v. Chenery Corp., 318 U.S. 80, 94 (1943) (“[T]he orderly
functioning of the process of review requires that the
grounds upon which the administrative agency acted [be]
clearly disclosed and adequately sustained.”); Allentown
Mack, 522 U.S. at 374 (“[A]djudication is subject to the re-
quirement of reasoned decisionmaking . . . .”).
For all these reasons, the Board must provide rational
guidance that is sufficiently explained. See, e.g., State
Farm, 463 U.S. at 43. That guidance is missing here. The
Board consistently dismissed Mr. Brunetti’s reliance on
other registered marks by explaining that “the cited third-
party registrations for other single word marks, perceived
in a vacuum without any contextual information, are not
relevant to our determination of whether FUCK functions
as a mark for the applied[-]for goods and services.”
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IN RE: BRUNETTI 18
S. App’x 36.15 But the Board did not explain what such
contextual information might be. The Board also contem-
plated that Mr. Brunetti could “come forward with compe-
tent evidence that consumers would perceive the proposed
mark as a source identifier” to rebut the examining attor-
ney’s prima facie showing. S. App’x 41. Again, the Board
did not indicate what that evidence would be. The Board
determined that Mr. Brunetti failed to meet a standard,
but it did not articulate what that standard would be. In
other words, the Board’s decision is unclear as to the cir-
cumstances under which all-purpose word marks can be
registered and which are “inherently incapable of being re-
garded as [a] source indicator[].” S. App’x 34–35.
The Board’s reasoning in this case suggests that the
Board has concluded that it need not articulate a viable
registration standard. The apparent inconsistency of past
examining attorneys’ decisions with respect to the registra-
tion of all-purpose word marks is itself strong evidence of
the failure to articulate coherent rules and engage in rea-
soned decisionmaking.
The Board’s reasoning sounds in fact very much as
though it has taken an “I know it when I see it” approach
to failure-to-function refusals. Such an approach is incon-
sistent with the Board’s mandate to engage in reasoned de-
cisionmaking under the APA. Pearson v. Shalala, 164 F.3d
650, 660–61 (D.C. Cir. 1999) (holding invalid FDA’s inter-
pretation of regulation where FDA took “I know it when I
see it” approach to the term “significant scientific
15 See also S. App’x 55 (“The third-party registrations
of different marks are of little probative value in this case,
which must be decided on its own particular facts and cir-
cumstances.” (citation omitted)); Appellee’s Br. 29 (admit-
ting that “the Board’s analysis here does not necessarily
preclude registration of the mark for different goods or ser-
vices or based on other factual records”).
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IN RE: BRUNETTI 19
agreement”); Stanojkova v. Holder, 645 F.3d 943, 949
(7th Cir. 2011), as amended (Aug. 16, 2011) (explaining
that “I know it when I see it” approach of the Board of Im-
migration Appeals resulted in “capricious adjudication”);
see also In re Scheer, 819 F.3d 1206, 1210 (9th Cir. 2016)
(“It is fair to say that the ‘I know it when I see it approach’
of [a prior precedent] has led to predictably unpredictable
results.”).16
We note that in concluding that the examining attor-
ney established a prima facie case that consumers would
not perceive the applied-for mark as indicating the source
of the applied-for goods and services, the Board relied in
part on the fact that the applied-for mark has been used by
16 To be sure, our own decisions have provided some
limited but incomplete guidance. We have explained that
marks containing informational matter may be registera-
ble so long as they are also source-identifying by conveying
matter that is associated with a particular source of goods
and services. GO, 90 F.4th at 1358. In GO, we recognized
that many “widely used slogans” are valid marks because
they serve dual functions, both conveying information and
indicating source. Id. (providing as examples Donald
Trump’s MAKE AMERICA GREAT AGAIN, Nike’s JUST
DO IT, DeBeers’ A DIAMOND IS FOREVER, and Verizon’s
CAN YOU HEAR ME NOW?).
We have also suggested that the stylization of a mark
and its placement on marked goods or in advertisements
for services may impact its ability to operate as a source
identifier. In Vox, we explained that “[d]esign or styliza-
tion may make an otherwise unregistrable mark registra-
ble if the features ‘create an impression on the purchasers
separate and apart from the impression made by the words
themselves.’” 25 F.4th at 1353 (quoting Cordua, 823 F.3d
at 606); see also 1 McCarthy § 3:4.
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IN RE: BRUNETTI 20
other entities in the past on commercial listings for goods
falling within the claimed categories. See S. App’x 18–26.
As the Board explained, the “record in this case demon-
strates that a variety of sources prominently display the
term FUCK on a wide range of consumer merchandise and
household items, including the kinds of goods identified in
[Mr. Brunetti’s] Applications . . . .” S. App’x 44. The
Board’s reliance on this factor—prior third-party use of the
applied-for mark for the applied-for goods or services in the
marketplace—was appropriate under our caselaw. See
GO, 90 F.4th at 1357 (concluding that “the Board properly
considered both [the applicant’s] uses and third-party uses
when assessing how the public would likely perceive the
[applied-for] mark”). It was also proper for the Board to
consider that Mr. Brunetti could not “appropriate the term
exclusively . . . , denying others the ability to use [the ap-
plied-for mark] freely.” S. App’x 46.
But the Board’s reliance on third-party use does not
create a coherent standard. We conclude the Board failed
to provide sufficient precision in its rationale for why some
commonplace words can serve as a mark, but others, such
as FUCK, cannot. The Board’s lack of clarity in this regard
is especially troubling given the increasing number of fail-
ure-to-function refusals in recent years.17 Without a
clearer explanation, we are unable to determine whether
17 See, e.g., Theodore H. Davis Jr. & John L. Welch,
United States Annual Review: The Seventy-Fifth Year of
Administration of the Lanham Act of 1946, 113 Trademark
Rep. 1, 7 (2023) (describing “inexorable expansion” of “the
frontiers of the failure-to-function ground for refusal”); Lu-
cas Daniel Cuatrecasas, Failure to Function and Trade-
mark Law’s Outermost Bound, 96 N.Y.U. L. Rev. 1312,
1325 (2021) (“[T]he TTAB has been churning out an in-
creasing number of failure-to-function decisions.”); id.
at 1326 (graph showing growth).
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IN RE: BRUNETTI 21
substantial evidence supports the Board’s determination
that the applied-for mark fails to function as a source iden-
tifier. Accordingly, remand is required. See, e.g., Princeton
Vanguard, 786 F.3d at 970–71.
CONCLUSION
We have considered Mr. Brunetti’s remaining argu-
ments and find them unpersuasive. We vacate the Board’s
decision and remand for further proceedings consistent
with this opinion.
VACATED AND REMANDED
COSTS
Costs to appellant.
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United States Court of Appeals
for the Federal Circuit
______________________
IN RE: ERIK BRUNETTI,
Appellant
______________________
2023-1539
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Nos.
88308426, 88308434, 88308451, 88310900.
______________________
L OURIE, Circuit Judge, dissenting.
“[A] trademark is not a trademark unless it . . . tells the
public who is responsible for a product.” Jack Daniel’s
Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 146 (2023);
see 15 U.S.C. § 1127 (a trademark must “indicate the
source” of the applicant’s goods and “distinguish [the appli-
cant’s] goods . . . from those manufactured or sold by oth-
ers”). Substantial evidence supports a conclusion that the
f-word1 cannot do so for the classes of goods in Brunetti’s
applications. I therefore respectfully dissent.
As the record shows, the word is widely used to express
an innumerable range of “well-recognized familiar senti-
ments.” In re Brunetti, No. 88308426, 2022 WL 3644733,
at *21 (T.T.A.B. Aug. 22, 2022) (the word is used generally
1 Brunetti’s applications use the f-word in full. Ap-
plication Serial Nos. 88308426, 88308434, 88308451,
88310900.
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IN RE: BRUNETTI 2
as an “intensifier to express extremes of emotion, negative
and positive (e.g., shock), to note disdain, sadness, confu-
sion, panic, boredom, annoyance, disgust, or pleasure; to
insult or offend; and to evoke other emotions”) (cleaned up).
And the word is frequently used in connection with the
classes of goods in Brunetti’s applications. E.g., id. at *10–
11 (showing the word used on bags, jewelry, cellphone
cases, etc.). Because of its ubiquity, consumers cannot spe-
cifically associate the word with Brunetti’s brand. See id.
at *21–22.
Brunetti argues that the widely-used words and
phrases that the PTO has registered, “love” and “f[] can-
cer,” support his position. But those examples demonstrate
why Brunetti’s applications were correctly rejected here.
“Love,” as Brunetti points out, is one of the most common
words in the English language. Critically though, “love”
does not carry a wide variety of meanings. Rather, it is
used to convey primarily one thing—a strong feeling of at-
tachment. “F[] cancer” is similarly limited. By adding the
word “cancer,” the meaning of the phrase is substantially
narrowed to signify a passionate displeasure for the dis-
ease. Such words and phrases are not so ubiquitous as to
be incapable of acting as a source identifier. This case is
different. The f-word is primarily an explicative, expres-
sive of a variety of definitions, or none at all.
The majority well points out shortcomings in the
Board’s analysis of the failure to function issue. But any-
one living in today’s society of degraded language can read-
ily tell that the f-word does not indicate the source of the
proposed trademarked goods and distinguish them from
goods of another. If the Board’s overall analysis needs
sharpening, this case, which has been pending for most of
a decade, surely isn’t one in which we need more help from
the Board to know the right answer under the law. There
will be better cases in which we need more guidance from
the Board in order to properly review its decisions.
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IN RE: BRUNETTI 3
For the above reasons, I dissent from the majority’s de-
cision to vacate a decision that should be affirmed.
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