Some sweary trademarks still off limits

This post set out to be a fun romp through the naughty marks in the U.S. federal trademark register. Don’t worry, that post is still forthcoming . . . but in the meantime I’ve learned about a distressing trend that’s stopping lots of sweary marks from attaining federal registration.

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 FUCK- and SHIT-formative marks, like GOOD SHIT, APESHIT and YOU FUCKING GOT THIS.

As a brief refresher, for decades the USPTO could not by statute register marks its examining attorneys found “scandalous.” This led to rejection of many naughty marks, including ASSJACKED, I BANGED BETTY, YOU CUM LIKE A GIRL, PUSSY, GRANDMA SCHITTHED’S OUTHOUSE BROWN for beer and ale, and this lovely one for chocolate suckers molded in the shape of a rooster:

Dark times for curse word aficionados, to be sure.

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 FUCT for apparel, including clothes for infants:

Brunetti had also applied separately for a registration for FUCT 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 FUCT 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 FUCT “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.

Erik Brunetti’s not the only one who’s fucked here. Unfortunately, the USPTO has refused plenty of other sweary applications on the ground that they’re too “commonplace” to be trademarks. For example:

• APESHIT (clothes)
• EAT SHIT (clothes)
• GIVE A SHIT (clothes)
• HOLY SHIT (clothes)
• GOOD SHIT (one application for beer, spirits, wine; another application for cigarettes)
• FUCK YEAH (clothes)
• YOU FUCKING GOT THIS (jewelry)
• KEEP FUCKING GOING (jewelry)
• GET THE FUCK OUT (game software, online games, clothes)

Others are not so obviously “commonplace messages” but the USPTO still thinks they are:

• I’M READY TO GET THE FUCK ASAP AFTER THIS SHIT (clothes)
• REAL HOT GIRL SHIT (clothes)
• YOU’RE AWESOME KEEP THAT SHIT UP (bottles, glasses, dinnerware, oven mitts, etc.)
• MY DOODLE AND I TALK SHIT ABOUT YOU (clothes)

It’s unclear whether these phrases could ever be trademarks under the USPTO’s theory.

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.

The USPTO legitimately rejected an application for DRIVE SAFELY for automotive services because it was such a common expression in that context that no one would think it was a trademark. Fair enough. But DRIVE SAFELY for condoms, say, would be a pretty darn good trademark.

I think HOLY SHIT could certainly function as a trademark for clothes. I believe that consumers would think that GET THE FUCK OUT identified a single online game producer. And YOU’RE AWESOME KEEP THAT SHIT UP oven mitts? Genius!

Granted, some of these common phrases could be weak marks or might not be used as a mark by the applicant, maybe stuck on the front of a t-shirt. Even so, this reflexive ground for rejection where a phrase with a swear word is on a mug on Etsy is an easy out for the USPTO.

And it’s especially galling when the marks are clever combinations where the naughty message has a twist, like FUCK ME for vibrators, SHUT THE FUCK UP for legal services, CALM THE FUCK DOWN for candles, FUCK THAT for branding services, and the possibly-clever SHIT for toilet paper. All of those applications were rejected as commonplace messages.

WTF, USPTO?

 

Thanks to John R. Sommer of Stussy, Inc. (Erik Brunetti’s victorious attorney) and Megan Carpenter, brilliant Dean of the University of New Hampshire School of Law, for bringing this not-commonplace situation to my attention.