After more than a hundred years of settled U.S. trademark policy, an interesting problem has developed for the United States Patent and Trademark Office (USPTO). How to square the U.S. Supreme Court’s recent decisions striking down parts of the federal Lanham Act with the USPTO’s historical rejection of immoral, scandalous, or disparaging trademarks? Whether by coincidence or not, the timing is also interesting. “The coming rush to register such trademarks—and the Government’s immediate powerlessness to say no”[1] is coming at a time when civility in our public discourse is at a low ebb.
Interesting problems call for interesting solutions. This article examines the USPTO’s recent partial success involving the rejection of a trademark application for one particular profane word. Not just any profane word, however. Here we are dealing with the word described as “the big one, the queen-mother of dirty words, the “F-dash-dash-dash” word!”[2] Following our review of the recent U.S. precedent, we examine the potential broader implications on USPTO policy and compare this with that of other jurisdictions around the world.
A Brief History of Morality-Based Rejections in the U.S.
Like nearly all major jurisdictions, the United States has a long history of refusing the registration of profane and vulgar trademarks. Specifically, under Section 2(a) of the Lanham Act of 1946, the USPTO refused registrations for marks that included content that was “immoral” or “scandalous,” or “may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…”[3] These restrictions were not new in 1946. A similar set of prohibitions existed under the Trademark Act of 1905, which likewise required refusals of any mark that “comprises immoral or scandalous matter.”[4]
And then along came Tam.
“THE SLANTS” is a rock band whose members are themselves of Asian descent and who “believe that by taking that slur as the name of their group, they will help to ‘reclaim’ the term and drain its denigrating force.”[5] The USPTO rejected their application for a federal trademark, finding it in violation of Section 2(a), which prohibits the registration of marks that “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead.”[6]
On review, the Supreme Court determined that filing a trademark application is a form of private (not government) speech and the viewpoint-based restrictions on this speech imposed by the disparagement clause of Section 2(a) are incompatible with the First Amendment’s free speech clause, rendering the disparagement clause unconstitutional.[7]
In considering whether the government’s restraint on speech under Section 2(a) satisfied the dual requirements of serving “a substantial interest” and being “narrowly drawn,”[8] the court analyzed two government interests and found neither satisfied the test:
The Government has an interest in preventing speech expressing ideas that offend. And, as we have explained, that idea strikes at the heart of the First Amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.”[9]
The second interest asserted is protecting the orderly flow of commerce….Such trademarks are analogized to discriminatory conduct, which has been recognized to have an adverse effect on commerce…A simple answer to this argument is that the disparagement clause is not “narrowly drawn” to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: “Down with racists,” “Down with sexists,” “Down with homophobes.” It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.[10]
Further, the court noted “a deeper problem” with attempts to cleanse commercial speech of expression likely to cause offense. “The commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case illustrates. If affixing the commercial label permits the suppression of any speech that may lead to political or social ‘volatility,’ free speech would be endangered.”[11]
It’s worth noting, at this point, that the entire decision in Tam rests upon the threshold determination that trademark registration requirements are in fact a form of restriction of free speech. The Court could have gone the other way on this point. Indeed, the decision itself notes that federal trademark registration is not required to use a mark in commerce, and unregistered marks may be enforced against infringers.[12] The Court appears to find the threshold restraint on speech merely by noting that federal registration “confers important legal rights.”[13]
Brunetti Further Whittles Away at Section 2(a)
Two years after the Court decided Tam, it found that two (or one, depending on how you count) additional provisions under Section 2(a) are likewise unconstitutional viewpoint restraints on private speech. In Iancu v. Brunetti, the Court found that the “immoral or scandalous” bar of Section 2(a) similarly discriminates on the basis of viewpoint and therefore likewise collides with this Court’s First Amendment doctrine.[14] Here, the mark at issue was the text “F-U-C-T” on a line of clothing, the common perception being that the brand name is “the equivalent of [the] past participle form of a well-known word of profanity.”[15]
Perhaps more interesting than the majority decision itself, essentially reading Tam’s invalidation of the “disparaging” bar to dictate the same outcome for the “immoral or scandalous” bar, are the observations of Justice Sotomayor. In her concurrence in part, which is joined by Justice Breyer, and for which Chief Justice Roberts writes separately to agree, several points are made that may well surface again in future cases.
First, Justice Sotomayor notes that rather than reading the terms “immoral” and “scandalous” as a single unitary bar, it is equally possible to read these as separate terms. She has a point. These terms are not only separated by other text (not challenged) in the statute, but construing them independently gives full expression to the statute as a whole, in conformance with accepted methods of statutory construction. Once isolated, the term “scandalous” is on safer ground, as it is capable of being construed to address only obscenity, vulgarity, and profanity.[16] “Such a narrowing construction would save that duly enacted legislative text by rendering it a reasonable, viewpoint-neutral restriction on speech that is permissible in the context of a beneficial governmental initiative like the trademark-registration system.”[17]
Second, Justice Sotomayor highlights the fact that “Trademark registration, as the majority notes, is not required for using, owning, or suing others for infringing a trademark. Rather, the trademark-registration system is an ancillary system set up by the Government that confers a small number of noncash benefits on trademark-holders who register their marks.”[18]
So why is the First Amendment even implicated in the first place? As Justice Sotomayor explains: while the “Government need not provide this largely commercial benefit at all…[once it does,] it may not restrict access on the basis of the viewpoint expressed by the relevant mark.”[19]
The USPTO Moves to Plan B
Not one to rest on his laurels, Mr. Brunetti followed up his successful registration of F-U-C-T with the real apple of his eye: the text “FUCK.” On August 26, 2025, after nearly a decade of litigation below, the U.S. Court of Appeals for the Federal Circuit decided his appeal of the USPTO’s rejection of this mark.[20]
Given the Supreme Court’s earlier decision in Iancu v. Brunetti, the Trademark Office could no longer refuse registration on the “immoral or scandalous” bar. Instead, it got creative and rejected his application on the basis that the term was so commonly used that it fails to function as a trademark. In review of the examiner’s rejection, the U.S. Trademark Trial & Appeals Board (TTAB or the “Board”) made two findings that led it to uphold the examiner’s rejection:
- First, the Board “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.’”[21]
- “Next, the Board considered the applied-for mark’s use in the marketplace, explaining that “[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.’” [22]
On appeal, the Federal Circuit noted that, in theory at least, the examiner and the TTAB are on solid ground. The failure-to-function basis for rejection is neither new nor, as the applicant attempted to argue, wholly invented. Rather, the failure-to-function rejection stems from “a threshold requirement of registrability that [an applied-for] mark ‘identify and distinguish’ the goods and services of the applicant from those of others, as well as ‘indicate the source’ of those goods and services.”[23]
But there was a remaining problem. The USPTO has routinely registered many marks that, at first blush, appear to be equally widely used, “all-purpose marks.” For example, the applicant pointed out that “all of the 100 most common words in English are registered.”[24]
To this, the Federal Circuit noted: “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.”[25] There is a good reason for this. The examining corps includes over 700 individuals charged with examining thousands of applications annually. Applicants have the option to appeal adverse examiner rulings, as Mr. Brunetti so availed himself in the present case. The Board issues precedential decisions (such as the decision here), which are binding on the Board, and nonprecedential decisions, which are not binding.
However, “[t]his does not mean that the Board need not take account of prevailing practice. The Supreme Court recently, in Booking.com, explained that the PTO must consider its “own past practice” in developing a “comprehensive rule.”[26]
As such, the Federal Circuit remanded the case, stating:
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 failure-to-function refusals in recent years. Without a clearer explanation, we are unable to determine whether substantial evidence supports the Board’s determination that the applied-for mark fails to function as a source identifier.[27]
What’s next at the USPTO?
If you are someone who laments the loss of civility in public discourse, you may find yourself rooting for the USPTO in this story. Perhaps its dogged attempt to guard the trademark register from profanity may somehow stem the proliferation of immoral, scandalous, and disparaging marks in our everyday consumer brands.
However, if the USPTO’s failure-to-function refusal is permitted to grow into a catch-all “because I said so standard,” as the Federal Circuit seems to think, that could have broader implications than the types of marks Section 2(a) once stopped. The Brunetti Court cited substantial scholarly support for its concern regarding the increasing number of failure-to-function refusals in recent years.[28] As such, its Order on remand to provide a clearer explanation for the standard guiding failure-to-function refusals is welcome.
Following Brunetti, we can expect to see an update to the guidance provided in the Trademark Manual of Examination Procedure 1202.04(b) (“Widely Used Messages”).[29] This section already includes references to the Brunetti case and will now need to be further augmented and clarified:
Lastly, the proposed mark FUCK, for various carrying cases, jewelry, sports and other carrying bags, and various retail, marketing, and advertising services for such consumer goods, was held not to function as a mark because substantial dictionary, third-party use on the same and other consumer and household goods, and other internet evidence showed ubiquitous use of the word in its ordinary meaning, the applicant stated “that he intend[ed] to use FUCK as the word is commonly understood,” and consumers would merely perceive the term as such. In re Brunetti, 2022 USPQ2d 764, at *39, *43-44 (TTAB 2022), appeal docketed, No. 23-1539 (Fed. Cir. Feb. 27, 2023).[30]
In addition to any further guidance the USPTO may now provide, practitioners can also draw from the examples available in the public record. In one such instructive example, The Ohio State University successfully registered the word “THE” for various kinds of spirit wear.[31] For its response to an initial refusal, the University included substantial evidence, including a well-documented declaration, to demonstrate how the term “THE” came to be generally known as a source identifier of the University and its athletic program.
The International Perspective
While the United States has been tied up in knots over its immoral, scandalous, and disparaging marks, the rest of the world seems to have hardly noticed. Similar clauses to the U.S. Lanham Act in its Section 2(a) remain valid and enforceable law in nearly every major trademark jurisdiction. This includes democracies with strong free speech protections as well as authoritarian governments where speech is much more restricted. For example, the chart[32] below summarizes similar grounds for refusal in several countries, consistent with the discretion provided under the Paris Convention and TRIPS.
| Jurisdiction | Grounds for Refusal |
| Multilateral (Paris Convention) | Marks contrary to morality or public order (Paris art. 6quinquies(B)(3))[33] |
| Multilateral (TRIPS) | Discretion to refuse registrability, read with Paris 6quinquies[34] |
| European Union | Contrary to public policy or accepted principles of morality (EUTMR art. 7(1)(f))[35] |
| United Kingdom | Contrary to public policy or accepted principles of morality (TMA § 3(3)(a))[36] |
| Ireland | Refusals contrary to public policy or morality[37] |
| Canada | Scandalous, obscene, or immoral matter (§ 9(1)(j))[38] |
| Australia | Scandalous matter (TMA 1995 s 42(a))[39] |
| New Zealand | Likely to offend significant section (including Māori) (s 17(1)(c))[40] |
| India | Scandalous, obscene, or hurting religious susceptibilities (§ 9(2)(b)-(c))[41] |
| Singapore | Contrary to public policy or accepted principles of morality[42] |
Conclusion
The free speech clause of the U.S. Constitution’s First Amendment, as interpreted by the U.S. Supreme Court, has led to a situation that may be unique among major jurisdictions around the world. The U.S. Lanham Act’s well-settled provisions that have stood for over 100 years to block immoral, scandalous, and disparaging marks have been thrown out. In their place, the USPTO has reached into its toolbox and found an all-purpose refusal based on the core purpose of trademarks. This failure-to-function basis will now require explanation by the USPTO in view of its prior record of granting registrations to other widely used terms that are not immoral, scandalous, and disparaging.
[1] Iancu v. Brunetti, 588 U.S. 388, 409, 139 S. Ct. 2294, 2308, 204 L. Ed. 2d 714 (2019)(Sotomayor, concurring in part).
[2] Clark, B. (Director). (1983). A Christmas Story [Film]. Metro-Goldwyn-Mayer.
[3] 15 U.S.C. § 1052(a).
[4] Trademark Act of 1905, § 5 33 Stat. 724, 725 (1905)
[5] Matal v. Tam, 582 U.S. 218, 223, 137 S. Ct. 1744, 1751, 198 L. Ed. 2d 366 (2017)
[6] Id.
[7] Id. at 239; 245-46.
[8] Id. at 245.
[9] Id. at 246, quoting United States v. Schwimmer, 279 U.S. 644, 655, 49 S.Ct. 448, 73 L.Ed. 889 (1929) (Holmes, J., dissenting).
[10] Id. at 246 (internal citations omitted).
[11] Id. at 247.
[12] Id. at 225-26.
[13] Id. at 226.
[14] Iancu v. Brunetti, 588 U.S. 388, 393, 139 S. Ct. 2294, 2296, 204 L. Ed. 2d 714 (2019)
[15] Id. at 390.
[16] Id. at 409 (Justice Sotomayor, concurring, with whom Justice Breyer joins, concurring in part and dissenting in part)
[17] Id.
[18] Id.
[19] Id.
[20] In re Brunetti, No. 2023-1539, 2025 WL 2446503, at *1 (Fed. Cir. Aug. 26, 2025).
[21] Id at *2.
[22] Id.
[23] Id. at *3. See also 15 U.S.C. § 1127 (defining the term “trademark”).
[24] Id. at *5.
[25] Id. at *6.
[26] Id. (citing 591 U.S. at 558, 140 S.Ct. 2298).
[27] In re Brunetti, No. 2023-1539, 2025 WL 2446503, at *8 (Fed. Cir. Aug. 26, 2025)
[28] Id. at *8, N.17 (citing 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”); Lucas Daniel Cuatrecasas, Failure to Function and Trademark Law’s Outermost Bound, 96 N.Y.U. L. Rev. 1312, 1325 (2021) (“[T]he TTAB has been churning out an increasing number of failure-to-function decisions.”); id. at 1326 (graph showing growth).
[29] TMEP 1202.04(b) https://tmep.uspto.gov/RDMS/TMEP/current#/current/ch1200_d29b4b_25b93_92.html (last visited September 22, 2025).
[30] Id.
[31] See Office Action Response, Application Ser. No. 88571984, Filed March 11, 2020, available at https://tsdr.uspto.gov/documentviewer?caseId=sn88571984&docId=ROA20200312201551&linkId=19#docIndex=18&page=1 (last visited September 22, 2025).
[32] This chart was generated using Chat GPT, chat thread available at https://chatgpt.com/s/t_68d2267a08b0819184a17d8e6b1f219f (last visited Sept. 21, 2025).
[33] Paris Convention for the Protection of Industrial Property, art. 6quinquies(B)(3), WIPO, https://www.wipo.int/wipolex/en/text/288514 (last visited Sept. 21, 2025).
[34] Agreement on Trade-Related Aspects of Intellectual Property Rights, arts. 15 & 17, WTO,
https://www.wto.org/english/docs_e/legal_e/27-trips_04_e.htm (last visited Sept. 21, 2025).
[35] Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the EU Trade Mark, art. 7(1)(f), EUR-Lex, https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:32017R1001 (last visited Sept. 21, 2025).
[36] Trade Marks Act 1994, § 3(3)(a) (UK), https://www.legislation.gov.uk/ukpga/1994/26/section/3 (last visited Sept. 21, 2025).
[37] Intellectual Property Office of Ireland, CP14: Trade marks contrary to public policy or accepted principles of morality (May 7, 2024), https://www.ipoi.gov.ie/en/law-practice/legislation/trade-marks/trade-marks-practice-and-procedures/cp14_.pdf (last visited Sept. 21, 2025).
[38][38] Trademarks Act, R.S.C., 1985, c. T-13, § 9(1)(j), Justice Laws (Can.), https://laws-lois.justice.gc.ca/eng/acts/t-13/section-9.html (last visited Sept. 21, 2025).
[39] Trade Marks Act 1995 (Cth), s 42(a), AustLII, https://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/s42.html (last visited Sept. 21, 2025).
[40] Trade Marks Act 2002 (NZ), s 17(1)(c), https://www.legislation.govt.nz/act/public/2002/0049/latest/DLM164459.html (last visited Sept. 21, 2025).
[41] The Trade Marks Act, 1999 (India), § 9(2)(b), (c), https://indiankanoon.org/doc/326823/ (last visited Sept. 21, 2025).
[42] IPOS, Trade Mark Guidelines—Chapter 9, https://www.ipos.gov.sg/about-ip/trade-marks/tm-guides/ (last visited Sept. 21, 2025).
