If you follow US trademark prosecution, you’ve likely noticed in recent years an uptick in failure-to-function refusals from the United States Patent and Trademark Office (USPTO). The Federal Circuit recently weighed in and its message to the Trademark Trial and Appeal Board (TTAB) is clear: You need a better standard.
In In re Brunetti, 151 F.4th 1367 (Fed. Cir. 2025), a divided panel vacated the TTAB’s refusal to register the word FUCK as a trademark for consumer goods and retail services, finding that the Board’s analysis amounted to little more than an “I know it when I see it” approach.1 The decision doesn’t eliminate the failure-to-function doctrine but it demands that the USPTO articulate coherent, predictable rules for applying it.
A Quick Primer: What Does “Failure to Function” Mean?
Not every word, phrase, or design that appears on a product qualifies as a protectable trademark. To be registrable, a designation must do the work of a trademark. That is, it must identify one source and distinguish it from other sources.2 When a proposed mark does not perform this job, the USPTO refuses registration on the ground that the mark “fails to function.”3
The doctrine typically applies in a few recurring situations: ornamental matter (think a decorative phrase splashed across a t-shirt), merely informational slogans or social messages, and terms so widely used by various sources that consumers would not perceive them as identifying any single origin.4 For example, in Alpha Kappa Alpha Sorority v. Stroll to the Polls, Inc., the TTAB sustained an opposition finding that “Stroll to the Polls” was merely an informational political message, not a source identifier, for apparel, given widespread third-party use of the phrase by universities, sororities, and various retailers.5 Similarly, in In re Tinder LLC, the Board found that “swipe left” had become a commonly used expression conveying rejection and was incapable of functioning as a trademark for dating services.6
The Brunetti Decision
Erik Brunetti, the same applicant who successfully challenged the Lanham Act’s ban on “immoral or scandalous” marks before the Supreme Court,7 filed intent-to-use applications for the mark FUCK covering sunglasses, jewelry, bags, and related retail services. The USPTO refused registration on failure-to-function grounds, and the TTAB affirmed.8
On appeal, the Federal Circuit rejected Brunetti’s constitutional challenges but found a critical deficiency in the Board’s reasoning. The court noted that the TTAB dismissed Brunetti’s reliance on other registered all-purpose words, including registrations of FUCK itself for snow globes and gummy candies, without explaining what “contextual information” would make those registrations distinguishable.9 The court emphasized that commonplace words like APPLE, SHELL, and CAMEL are routinely registered as arbitrary marks, and yet the Board provided no clear standard for why some ubiquitous words can serve as source identifiers while others cannot.10
Critically, the court found that the Board’s “apparent inconsistency of past examining attorneys’ decisions with respect to the registration of all-purpose word marks is itself strong evidence of the failure to articulate coherent rules.”11 The Federal Circuit cited the Supreme Court’s instruction in USPTO v. Booking.com that the PTO must consider its “own past practice” when developing comprehensive rules.12
What This Means for Brand Owners
The Brunetti decision does not diminish the failure-to-function doctrine. Other recent decisions confirm its continued vitality, the TTAB applied it successfully in both Stroll to the Polls and Tinder, and the Federal Circuit affirmed the doctrine’s application in Chisena v. MLBPA, where marks like ALL RISE and HERE COMES THE JUDGE were found to function as source identifiers because of their strong association with a specific athlete.13
But the doctrine now requires more rigorous justification. Going forward, practitioners confronting a failure-to-function refusal should scrutinize whether the examining attorney has articulated a clear standard, not just asserted that the proposed mark is “ubiquitous” or “commonly used.” If the refusal fails to explain why this commonplace word cannot function as a mark when other equally common words are routinely registered, Brunetti provides strong grounds for appeal. Keep an eye on the TTAB’s proceedings on remand; the standard it develops could reshape trademark prosecution for years to come.
From a practical standpoint, brand owners should be proactive in building a record that demonstrates source-identifying use from the outset. When selecting a mark built around a common word or phrase, the key question is whether consumers in the relevant market actually perceive that term as identifying a single commercial source rather than as a general message, decoration, or piece of information. Before filing, conduct a thorough clearance search that goes beyond likelihood-of-confusion analysis to assess how widely the proposed mark is used by third parties across marketplaces, social media, and the broader internet. If the term already appears on merchandise from numerous unrelated sellers, a failure-to-function refusal becomes far more likely.
Post-Brunetti, applicants should also leverage the Federal Circuit’s consistency mandate by identifying analogous prior registrations for similarly commonplace terms and challenging any failure by the examining attorney to explain why the applicant’s mark should be treated differently. The USPTO can no longer simply ignore its own past practice; it must provide a reasoned explanation when departing from it. For foreign applicants filing through the Madrid Protocol, this area demands particular vigilance, as a failure-to-function refusal can be especially difficult to overcome without evidence of use in the United States, and such applicants cannot fall back on the Supplemental Register. As the TTAB develops its new analytical framework on remand, the standards it articulates could reshape trademark prosecution strategy for years to come, making this an area every brand owner should watch closely.
Footnotes
- In re Brunetti, 151 F.4th 1367, 1379 (Fed. Cir. 2025).
- 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 19:4.50 (5th ed. Mar. 2026).
- Id.
- See T.M.E.P. § 1202.04 (Oct. 2018) (“Merely informational matter fails to function as a mark to indicate source and thus is not registerable.”).
- Alpha Kappa Alpha Sorority v. Stroll to the Polls, Inc., 2025 WL 2159119, at *12 (T.T.A.B. July 17, 2025).
- In re Tinder LLC, 2025 WL 1431448, at *16 (T.T.A.B. May 2, 2025).
- Iancu v. Brunetti, 588 U.S. 388 (2019).
- In re Brunetti, 151 F.4th at 1372.
- Id. at 1379.
- Id. at 1375–76.
- Id. at 1379.
- USPTO v. Booking.com B.V., 591 U.S. 549, 558 (2020).
- See Chisena v. Major League Baseball Players Ass’n, 2026 WL 60319, at *4 (Fed. Cir. Jan. 8, 2026).
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