The U.S. Patent and Trademark Office (USPTO) has increasingly relied on the "failure-to-function" doctrine to deny trademark registrations, raising significant concerns post-Supreme Court decisions that struck down bans on "disparaging," "immoral," and "scandalous" marks.
Supreme Court Decisions and Their Impact
In 2017, Matal v. Tam dismantled the Lanham Act's disparagement clause, ruling it unconstitutional under the First Amendment. Two years later, Iancu v. Brunetti invalidated the prohibition on "immoral or scandalous" marks, emphasizing that viewpoint-based restrictions are impermissible.
The Failure-to-Function Doctrine: A New Frontier
Erik Brunetti's case serves as a prime example. His application for "FUCT" was denied by the USPTO, which cited the failure-to-function doctrine, arguing it wasn't perceived as a source identifier after the Supreme Court rulings.
Evidence and Argumentation
The USPTO presented evidence that "F***" was used ornamentally, contending that consumers wouldn't identify it as a trademark but as an informational message. The Trademark Trial and Appeal Board (TTAB) upheld this refusal, citing widespread use and ornamentality.
Brunetti's Counterarguments
Brunetti contested the doctrine's validity, arguing it's misused substantively and pointing out inconsistencies, predetermined refusals, and potential double standards compared to registered marks like "LOVE" or "APPLE."
Federal Circuit Oral Arguments: Skepticism Expressed
During oral arguments, Federal Circuit judges expressed skepticism about the USPTO's inability to articulate consistent standards for failure-to-function, fearing it might be used as a backdoor to deny marks deemed scandalous.
Conclusion: A Concerning Trend
The failure-to-function doctrine risks becoming a surreptitious method to evade constitutional restrictions on viewpoint-based refusals. The absence of clear standards and potential bias raises significant implications for trademark law, necessitating closer scrutiny and possible legislative intervention.
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