Fuck No: Understanding Failure-to-Function Refusals

In the world of trademark law, there is a common misconception that simply using a word or logo on a product makes it a mark. However, the USPTO often issue a failure-to-function refusal – a technical roadblock that states the mark does not act as a source identifier. This post explores the failure-to-function doctrine and two Federal Circuit cases that define its boundaries.

What is a Failure-to-Function Refusal?

A trademark’s primary job is to act as a source identifier. It reveals to the consumer that a product from Company X is not from Company Y. A failure-to-function refusal¹ occurs when a proposed mark is used in a way that consumers perceive as something other than a brand name.

Common categories for this refusal include:

• Informational Matter: common phrases like viral slogans “Russian warship, go fuck yourself” (see here) are merely informational, and do not indicate source of the goods or services.²
• Ornamentation: a design or words that appear to be purely decorative (e.g., a large floral pattern on a t-shirt or a slogan) rather than a logo.³
• Widely Used Messages: expressions of support, religious sentiments, or everyday idioms that are used so frequently by so many people that no one person can claim them as a brand.

Case Study 1: In re Vox Populi Registry Ltd.⁴

The issue was whether a website extension function as a trademark. Vox Populi, the registry operator for the .SUCKS generic top-level domain (gTLD), attempted to register “.SUCKS” as a trademark for its registry services. The USPTO refused, arguing that the public would only see “.SUCKS” as a functional part of a web address—not as a brand indicating Vox Populi as the source.

The Federal Circuit affirmed. The court held that consumer perception is the litmus test for failure-to-function. Also, because the public is accustomed to seeing gTLDs (like .com or .org) as non-source-identifying technical shortcuts, Vox Populi had to prove that the public viewed “.SUCKS” specifically as a brand (which it did not). Third, the court rejected a stylized version of the mark, noting that “pixelated” font wasn’t enough to create a separate commercial impression from the non-registrable text.

Case Study 2: In re Brunetti⁵

The issue was whether a widely-used profanity (i.e., “fuck”) functions as a trademark. Following the Supreme Court’s ruling that the USPTO cannot refuse scandalous marks, Erik Brunetti (founder of the brand FUCT) sought to register FUCK itself for various goods. The USPTO refused, issuing a failure-to-function refusal. The Examining Attorney argued that the word is so common as an expression of sentiment that consumers would not see it as a brand.

The Federal Circuit vacated and remanded for further proceeding. While the court did not say the word must be registered, it criticized the USPTO’s “I know it when I see it” approach. The court ruled that the USPTO must provide a consistent, evidence-based standard for why a word is too common to be a brand. Further, it noted the inconsistency in the USPTO’s record, where other common words were allowed while this one was refused. This case warns the USPTO that failure-to-function refusals cannot be used as a backdoor to resurrect the old scandalous and immoral ban.

Takeaways

If you are planning to register a slogan or a common phrase, your specimen of use is everything.

• Do not just put the slogan in big letters across the front of a shirt (this is merely ornamentation).
• Do put the mark on a tag or a label where consumers expect to see a brand name.

Note that a failure-to-function refusal is often a critique of your marketing layout as much as the mark itself. For more information, please contact Yonaxis I.P. Law Group.

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Footnotes

1. See 15 U.S. § 1051, 15 U.S. § 1052, 15 U.S. § 1127. ↩

2. See, e.g., In re GO & Assocs., Inc., 90 F.4th 1354, 1356, 2024 USPQ2d 616, at *3 (Fed. Cir. 2024) (EVERYBODY VS RACISM for tote bags, apparel, and services involving promoting awareness of the need for racial reconciliation). ↩

3. TMEP 1202.03(f)(i); In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) (“[T]he designation ‘ASTRO GODS’ and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant’s shirts.”). ↩

4. 25 F.4th 1348 (Fed. Cir. 2022). ↩

5. 151 F.4th 1367 (Fed. Cir. 2025). ↩