FUCT Streetwear vs. the Supreme Court of the United States

Erik Brunetti, the renowned designer who triumphed in the US Supreme Court by overturning a prohibition on registering vulgar trademarks, has encountered a setback in his quest to secure a more explicit version of the term. The Trademark Trial and Appeal Board (TTAB) has ruled that "FUCK" cannot be registered as a trademark for a range of goods, including cell phone cases, jewelry, and luggage, as it does not fulfill the trademark function.

The TTAB's landmark decision on Monday emphasized that the widespread use of the term across numerous cultural spheres undermines its capacity to serve as a distinctive trademark. The board further elaborated that the term's versatility—ranging from sexual connotations to conveying emotions such as sadness, confusion, panic, boredom, annoyance, disgust, or pleasure—demonstrates that not all designations intended to operate as trademarks can achieve that aim.

Additionally, the board pointed out that the term appears on a plethora of third-party goods within relevant product categories, leading consumers to perceive the term as a message or decorative element rather than a marker of the product's origin.

Brunetti had filed four applications to register the new mark while his FUCT case—where he claimed FUCT stood for "Friends U Can't Trust"—was pending before the Supreme Court. The applications covered a broad range of products, including sunglasses, watches, athletic bags, backpacks, wallets, retail services, and online retail platforms.

Following the Supreme Court's ruling that the Lanham Act's prohibition on registering vulgar marks was unconstitutional, the TTAB resumed its examination of Brunetti's applications. However, it concluded that the term "FUCK" could not be registered as a trademark due to its failure to function as one.

In response, Brunetti argued that the examiner's reliance on evidence of usage without assessing relative frequency made it impossible to disprove the term's widespread use. To support his argument, Brunetti provided materials indicating a relatively less frequent use of the term over the past two centuries.

Despite Brunetti's assertions, the TTAB determined that his proposed "relative frequency" standard would be unmanageable and inadequate in gauging consumer perception, particularly at the time of the application. The board clarified that "mere commonness" was not the basis for refusal.

The TTAB also ruled that the examiner did not need to establish that consumers would not perceive the mark as a source-indicator. It was sufficient to demonstrate that significant third-party usage indicates that consumers familiar with non-trademark use are unlikely to perceive it as such. The burden then fell upon the applicant to prove otherwise, which Brunetti failed to do, according to the board.

Administrative Trademark Judge Mark Lebow authored the opinion, which was supported by Judges Marc A. Bergsman and Elizabeth A. Dunn. Attorney John R. Sommer represented Brunetti in the case, known as In Re Erik Brunetti, TTAB, Serial Nos. 88308426, 88308434, 88308451, and 88310900, 8/22/22.

In a similar vein to the Erik Brunetti case, there have been other notable trademark disputes in the fashion industry:

1. Louis Vuitton vs. My Other Bag: In 2016, Louis Vuitton took legal action against My Other Bag, a company that sold canvas tote bags featuring cartoon versions of iconic designer bags, including Louis Vuitton's. The luxury brand accused My Other Bag of trademark infringement, but the court ultimately ruled in favor of the defendant, citing that the products were parodies and therefore protected under the First Amendment.

2. Gucci vs. Guess: In 2009, Gucci filed a lawsuit against Guess, alleging that the latter had copied several of its signature designs, including the "G" logo pattern and the green-red-green stripe. The case lasted for several years and eventually resulted in a settlement in 2018. As part of the agreement, Guess agreed to stop using certain designs that were deemed too similar to Gucci's, but the exact terms of the settlement remain confidential.

3. Christian Louboutin vs. Yves Saint Laurent: In 2011, Christian Louboutin sued Yves Saint Laurent (YSL) for trademark infringement, claiming that YSL's red-soled shoes violated Louboutin's trademark on red soles. The court initially ruled against Louboutin, but the decision was later reversed on appeal. The court held that Louboutin's red sole trademark was valid and enforceable, but only when the sole's red color contrasted with the upper part of the shoe.

These cases demonstrate that fashion brands often find themselves entangled in trademark disputes, whether it's due to provocative designs or similarities in logos and patterns. The outcomes of such cases can have a lasting impact on the industry, influencing the ways in which brands protect their intellectual property and navigate the boundaries of creative expression.