Not Clear Enough the Ttab S Standard for the Registrability of All Purpose Word Marks Lacked Clarity

Written by:Justin J. Gillett and Susan E. Pratt, Ph.D.

IN RE: ERIK BRUNETTI

Before Lourie, Dyk, and Reyna. Appeal from the Trademark Trial and Appeal Board.

Summary:  The Federal Circuit vacated and remanded a decision of the Trademark Trial and Appeal Board (TTAB) refusing to register a commonplace word because the TTAB’s decision lacked clarity.

Erik Brunetti sought to register the “F” word for goods including sunglasses, jewelry, and related products and retail store services. The examining attorney refused to register the proposed word mark and the TTAB affirmed. Relying on wide third-party usage, the TTAB found that the mark was ubiquitous with many meanings (i.e., an all-purpose word mark) that did not create the commercial impression of a source indicator and therefore did not function as a trademark. Mr. Brunetti appealed.

On appeal, Mr. Brunetti argued that the TTAB erred because it allows the registration of some all-purpose word marks while denying the registration of others without any explanation as to the inconsistent treatment. The Federal Circuit agreed. It noted that the TTAB’s reliance on third-party use to affirm the examining attorney’s refusal was appropriate, but that the TTAB did not create a coherent standard that could guide examining attorneys and the TTAB in determining when all-purpose word marks are registrable and when they are inherently incapable of being regarded as a source indicator. The TTAB’s lack of a sufficiently clear explanation made it impossible to determine whether substantial evidence supported the TTAB’s finding that the applied-for mark did not function as a source identifier.  The Federal Circuit vacated the decision and remanded for the TTAB to provide a clearer explanation.

Editor: Sean Murray