I thought I covered all the things, all of them!, about trademarks these days in my recent “Trademark Singularity” Part One and Part Two posts — from functioning as a trademark to “context” in trademarks, up to and including THE SLANTS.
But no, says our friend Anne Gilson LaLonde — there’s more, and it’s right down the middle of that Section 2(a) strike zone: Dirty words.
This was all settled, right? Brunetti won, after all. So now, all the four-letter words, right?
Despite having been instructed by the Supreme Court that it can no longer refuse trademark applications on the ground that the contents are “scandalous,” the U.S. Patent and Trademark Office (USPTO) won’t commit wholeheartedly. It’s relying on a shaky rationale to justify rejecting a variety of recently-filed F*CK- and SH*T-formative marks, like GOOD SH*T, APESH*T and YOU F*CKING GOT THIS.
But the Supreme Court ruled reluctantly in 2019 that the statutory bar on registering “scandalous” trademarks is unconstitutional as an abridgment of the First Amendment’s freedom of speech. That decision vindicated Erik Brunetti’s attempt to register his longstanding streetwear brand F*CT for apparel, including clothes for infants.
Brunetti had also applied separately for a registration for F*CT for jewelry and watches. But that application ran into a surprising roadblock. It has been provisionally rejected on the ground that it doesn’t function as a trademark. How could that be? If F*CT works for apparel, why not for jewelry?
The USPTO has reasoned that “the applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.” The examining attorney searched the web and found, on sites like Amazon and Etsy, that F*CT “is commonly used to convey the message of a general state of incapability” – that is, the state of being fucked. It’s so common, says the USPTO, that no one will see it as a trademark.
That is odd. And now I have to eat some of my own words, at least a little — particularly my assertion, in Part Two of the Singularity, that “context” is a virtually irrelevant concept in trademark law. For, as Anne explains:
What this refusal is missing is any sense of context. The question should be: Would a consumer think it’s a trademark on the goods or services it’s connected to? You can’t register APPLE for apples, but we all know it as a powerful mark and a single source of cell phones and more. WTF is used ubiquitously and it’s registered (in separate registrations) for wrenches, freight transportation by truck, grout, candies and chewing gum, wine, cigars, roller bearings, and glue for industrial purposes.
This is, but of course. And I’m not feeling so bad about the “context” thing because it’s not so much even “context” that Anne is talking about here as much as the fundamental concept of what a trademark is. An “expression of incapability” such as F*CT certainly can’t be protected as a trademark — for expressions of incapability.
But here it’s being used in connection with watches. And that’s not what “no one will see it as a trademark means.” As I said in my own little Brunetti post:
Trademarks, as the Brunetti decision seems to recognize, are not disembodied things that may or may not be found on a “register.” They are things that are only defined as trademarks by virtue of their use — and such use, in our time, has never been more ubiquitous. They are so ubiquitous that sometimes they are used, not to tell us who made something or who approved of something’s manufacture but instead that the user is “about” whatever that trademark signifies.
Appropriate to our era of hopelessly mixed signals, agressive irony and equitized contempt, Erik Brunetti wants users to associate watches he puts his mark on with the concept of “incapable.” Ironically, though, his mark is being rejected on a ground that is essentially the opposite of another hoary (but still entirely proper) basis for rejecting registration of a trademark — namely that is a “laudatory term” that is merely descriptive.
That’s how good of a mark his mark is! It’s unlaudatory. It’s downright … disparaging!
Of watches, though. And that was always cool. Section 2(a) having been completely denuded of its moral contact, then, it is time for that registration to be allowed and our trek into civic perdition to proceed apace.