Failure to function after Brunetti

A failure-to-function refusal says that the applied-for matter, however displayed, would not be seen as identifying the source of the goods or services. There is no single statutory section for it. It rests on the definition of "trademark" in 15 U.S.C. §1127: a mark must "identify and distinguish" the applicant's goods and "indicate the source." Office actions cite §§1, 2, 3 and 45 together. In In re Brunetti, No. 2023-1539 (Fed. Cir. Aug. 26, 2025), the Federal Circuit vacated a precedential Board decision applying the refusal. The court affirmed most of what the Board had said, and it still sent the case back.

The decision

Erik Brunetti filed four intent-to-use applications in 2019 to register FUCK in standard characters. They covered sunglasses and phone cases (Class 9), jewelry (Class 14), bags (Class 18) and retail store services (Class 35). The examining attorney refused all four as "widely-used commonplace wording." The record included pages of unrelated sellers' merchandise bearing the word. In a precedential 2022 decision, the Board affirmed. It held that "[m]ere commonality . . . is not the test." It also held that "certain widely-used messages" are "inherently incapable of being regarded as source indicators" (slip op. at 4).

Judge Dyk, writing for the majority, rejected most of the applicant's arguments.

• No viewpoint discrimination. The refusal turns on consumer perception and "applies evenhandedly" (at 6).
• Iancu v. Brunetti does not control. That case struck down the scandalousness bar for FUCT, a different mark and a different legal question (at 6–7).
• Commonness alone is not a ground for refusal. Ordinary words can be arbitrary marks, CAMEL for cigarettes being the court's example (at 11).
• Third-party use is proper evidence. The Board was right to consider other sellers' prominent use of the word on the same kinds of goods (at 20, citing In re GO & Associates, 90 F.4th 1354, 1357 (Fed. Cir. 2024)).

The court also said the case was not an ordinary informational-matter refusal. Phrases like ONCE A MARINE, ALWAYS A MARINE, I ♥ DC and DRIVE SAFELY each "convey[] recognized information." An "all-purpose word" like this one conveys no single idea (at 12).

Then the court turned to the problem. The PTO had registered other all-purpose words, including LOVE for fresh fruit and the same word for snow globes and for gummy candies. The PTO did not dispute these registrations. The Board had dismissed them as irrelevant "in a vacuum without any contextual information." It never said what that context would be, or what evidence could rebut a prima facie case. In the court's words, "The Board determined that Mr. Brunetti failed to meet a standard, but it did not articulate what that standard would be" (at 18). The inconsistent registrations were "strong evidence of the failure to articulate coherent rules." The approach resembled "I know it when I see it," which is incompatible with reasoned decision-making under the Administrative Procedure Act (at 18–19). The court noted, as a reason for concern, "the increasing number of failure-to-function refusals in recent years" (at 20).

Judge Lourie dissented. He agreed the Board's analysis had "shortcomings," but he would have affirmed. In his view the word's ubiquity on the identified goods meant it could not identify any one source.

As of this writing we have not found a Board decision on remand.

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What changed

The standard has to be stated. An examining attorney still carries the initial burden of a prima facie case. Brunetti did not decide whether the Board's burden-shifting framework is correct (slip op. at 10 n.9). What it decided is that a refusal resting on ubiquity must explain why this word fails when similar words have been registered, and what evidence would show otherwise. Applicants can now ask for that explanation. In our view, if a final refusal does not give it, that is an appealable defect.

Inconsistent registrations carry more weight. The long line of cases holding that the Office is not bound by its past mistakes still stands (In re Cordua Restaurants, 823 F.3d 594, 600 (Fed. Cir. 2016); In re Nett Designs, 236 F.3d 1339, 1342 (Fed. Cir. 2001)). But Brunetti treats a pattern of registering similar matter as evidence that the governing rule is unclear. It does not treat that pattern as a reason to register.

What did not change

Widely used messages remain unregistrable. TMEP §1202.04(b) and the informational-matter cases remain good law. A phrase that consumers are used to seeing from many sources, conveying a familiar sentiment, still fails.

Dual function remains available. A slogan can inform and identify source at once. GO & Associates gives MAKE AMERICA GREAT AGAIN, JUST DO IT, A DIAMOND IS FOREVER and CAN YOU HEAR ME NOW? as examples (90 F.4th at 1358, quoted in Brunetti, slip op. at 19 n.16).

Placement and stylization still matter. Design or stylization can create "an impression on the purchasers separate and apart from the impression made by the words themselves" (In re Vox Populi Registry Ltd., 25 F.4th 1348, 1353 (Fed. Cir. 2022)). So can the location of the matter on the goods.

Ornamental and trade dress refusals are untouched. In In re Ralph's Famous Italian Ices Franchise Corp., Serial No. 90302728 (TTAB June 25, 2026) (precedential), the Board affirmed a refusal of blue-and-white vertical stripes as ornamental matter that was not inherently distinctive. It also held that the applicant had not proved acquired distinctiveness under §2(f), given the "plethora of third-party uses" of similar stripes on the same goods (slip op. at 65). Third-party use is still how these cases are decided.

How to build the record now

Practice suggestions; the editors' view.

1. Ask for the standard. In the response, quote Brunetti and ask the examining attorney to say what context or evidence would show that the matter functions as a mark. A refusal that answers is easier to rebut. One that does not answer has a weakness that the Board must address on appeal.
2. Put the inconsistent registrations in the record properly. Submit copies of the registrations, not a list, for the same or closely related goods. Explain why they are comparable. After Brunetti, their value lies in showing that the rule is unclear, so argue them that way.
3. Show how the applicant actually uses the matter. Specimens that place the matter where consumers expect brands, such as hang tags, neck labels and the product listing's brand field, are better evidence than large ornamental displays.
4. Offer evidence of perception. A survey, declarations from the trade, unsolicited media references that treat the matter as the applicant's brand. Brunetti faulted the Board for not saying what rebuttal evidence would count. That is not a reason to come without any.
5. Advise early. For an owner choosing a mark, a common phrase already sold by many others on the same goods remains a poor candidate. The point of Brunetti is that a refusal must be explained, not that it will be withdrawn.

This is general information, not legal advice. For choosing a mark that avoids the problem, see the Before You File guide on choosing a strong mark.