Trademark Trial and Appeal Board Electronic Filing System. htips://estta.uspto.gov
`
`ESTTA Tracking number:
`Filing date:
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`ESTTA1525315
`03/19/2026
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ex Parte Appeal -
`
`99292626
`
`Serial No.
`Appellant Elite Legal Document Service
`Applied for mark OCCUPY MARS
`Correspondence DAVID UPTON
`address ELITE LEGAL DOCUMENT SERVICE LLC CALIFORNIA USA
`1001 LILLYHILL DR
`APT 40
`NEEDLES, CA 92363
`UNITED STATES
`Primary email: dupton@tellit2thejudge.com
`Secondary email(s): moecity3@yahoo.com, du49@nau.edu
`909-450-3925
`Submission GRIEVANCE AGAINST TRADEMARK PRACTITIONER
`Attachments Greivance Against Trademark Practitioner.pdf(2757257 bytes )
`Filer's name David Upton
`Filer's email dupton@tellit2thejudge.com
`Signature /David Upton/
`
`Date
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`03/19/2026
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`
`
`
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`Applicant:
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`Serial No.:
`Filed:
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`Mark:
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE OF ENROLLMENT AND DISCIPLINE
`
`Elite Legal Document Service
`LLC
`
`99292626
`July 19, 2025
`
`Occupy Mars
`
`Examining Attorney:
`David I. Dubin
`
`Law Office: 107
`
`GRIEVANCE AGAINST TRADEMARK PRACTITIONER
`
`
`
`
`
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`
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`VERIFIED STATEMENT OF FACTS
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`I, David Upton, hereby declare as follows:
`
`1. I am the Owner/Managing Member of Elite Legal Document Service, LLC (hereinafter
`“Applicant”), and the party on whose behalf relief is herein sought;
`
`2. In the course of prosecuting the above-referenced Trademark application, Examiner
`David I. Dubin (Examiner Dubin) has engaged in discriminatory trademark examining
`practices biased in favor of foreign industries and in direct defiance of established rules
`of Federal Statutory and Supreme Court law;
`
`3. Examiner Dubin is advancing an agenda of weaponizing the discretionary functions of
`the USPTO against Applicant by manipulating the application record and law to refuse
`Applicant’s Trademark Application to inflate his own self-importance and ruin the
`reputation and progress of Applicant, which implicates the common law tort of abuse of
`process in the context of misusing the application examining process to accomplish a
`purpose other than that for which the examining process was designed to accomplish;
`
`4. Facts exist that demonstrate that the Office of Enrollment and Discipline has a sua sponte
`duty under 18 U.S.C §§ 2 and 3, to refer the following conduct of Examiner Dubin to
`United States Attorney for the Central District of California, Bilal A. Essayli, for Federal
`Grand Jury Indictment:
`
`a. On October 15, 2025, Examiner Dubin acted under color of 15 U.S.C. §§1051-1053,
`and 1127 with the mens rea tantamount to 18 U.S.C §§ 241 and 242 violations when
`he refused Applicant’s Trademark registration Application for failure-to-function as a
`trademark (Exhibit A)';
`
`(1) 15U.S.C § 1051(a) involves use in commerce. Therefore, Examiner Dubin
`acted with the mens rea tantamount to 18 U.S.C §§ 241 and 242 violations when
`he refused Applicant’s Trademark Application under Trademark Act § 1 where
`the record clearly demonstrates the Mark is already in use in commerce.?
`
`(i1)) 15 U.S.C § 1052 proscribes certain content from being registered on the
`principal register however, does not encompass Examiner Dubin’s social and/or
`political-based message refusal.
`
`"Emphasized points in Exhibits are highlighted.
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`2 https://tellit2thejudge.com/collections/occupy-mars%E2%84%A2-premium-apparel-
`and-accessories
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`10f2
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`(i11) 15 U.S.C § 1053 involves registerable service marks and confers no statutory
`jurisdiction on Examiner Dubin in his capacity as an agent of the executive
`authority of the United States, to “execute” his social and/or political-based
`message failure-to-function refusal.
`
`(iv) 15 U.S.C § 1127 in pari materia with the Federal Circuit, U.S. Court of Appeals
`recent opinion in In re Brunetti, No. 23-1539, slip op. (Fed. Cir. Aug. 26, 2025)
`(Exhibit B) belies Examiner Dubin’s failure-to-function as a trademark refusal
`in a manner encompassed by the plurality opinion articulated in Screws v.
`United, 325 U.S. 91 (1949) for 18 U.S.C § 242 violations ([h]e violates the
`statute not merely because he has a bad purpose, but because he acts in defiance
`of announced rules of law” Screws v. United, supra, 325 U.S., at 104 (emphasis
`added). See, also, United States v. Kozminski, 487 U.S 931, 941 (1988)(parallel
`construction of 18 U.S.C § 241).
`
`b. Examiner Dubin further acted with the mens rea tantamount to 18 U.S.C §§ 241 and
`242 violations within the meaning of the Equal Protection of Law Clause of U.S.
`Constitution, Amendment 14, when he executed the failure-to-function as a
`Trademark refusal with full knowledge of the proven fact of functionality under
`USPTO, Serial No. 79368360 (Exhibit C).
`
`c. On January 5, 2026, after Applicant filed a Petition to Director John A. Squires on
`December 31, 2025 complaining about the conduct of Examiner Dubin, Examiner
`Dubin released fourteen (14) public notes that he was concealing as a part of his ploy
`to manipulate the Application record and law to deny Applicant’s Trademark
`registration application with the men rea tantamount to 18 U.S.C §§ 1001(a)(1) and
`1519 violations (Exhibit D).
`
`5. As adirect and proximate result of Examiner Dubin’s efforts to render Applicant a
`marketplace failure despite Applicant’s status as the Senior user of the Mark as an online
`retail store service provider under USPTO international class 035, Applicant has incurred
`in the range of $1,125.00+ USPTO fees post fraud-tainted registration refusal, loss of
`potential earning hours for time prosecuting trademark application post botched
`registration refusal at a rate of $300 per hour for 510 hours equal to $153,000.00, and loss
`of potential licensing fee and royalties income estimated in the amount of $750,000.00,
`for a total of $904,125.00 in damages (Exhibit E).
`
`I declare under penalty of perjury under the laws of the State of California and the United States
`of America that the foregoing is true and correct. Executed this 19% day of March, 2026, at
`Needles, California.
`
`Dated: March 19, 2026 é/fi@}b, .
`
`D d Upton Owner/Managmg Member
`Elite Legal Document Service LLC
`(909) 450-3925
`dupton@tellit2thejudge.com
`
`20of2
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`OFFICE OF ENROLLMENT AND DISCIPLINE
`GRIEVANCE AGAINST TRADEMARK PRACTITIONER
`
`Index of Exhibits
`Exhibit DOCUMENT
`
`A October 15, 2025, Subsequent Final Office Action by Attorney David I. Dubin (5
`pages total)
`
`B CAFC Slip Opinion TTAB 23-1539; In re Brunetti, No. 23-1539, slip op. (Fed. Cir.
`Aug. 26, 2025) (24 pages total)
`
`C Polish “OCCUPY MARS?” registration certificate under USPTO, Serial No. 79368360
`(2 pages total)
`
`D USPTO, Serial No. 99292626, Trademark Application Chronological Documents
`Docket (3 pages total)
`
`E Claim For Damage, Injury, or Death Standard Form 95, dated February 20, 2026 (2
`
`pages total)
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`EXHIBI'T
`
`“A”
`
`
`
`
`
`
`
`
`To: Elite Legal Document Service(dupton@tellit2thejudge.com)
`Subject: U.S. Trademark Application Serial No. 99292626 - OCCUPY MARS
`Sent: October 15, 2025 01:57:15 PM EDT
`
`Sent As: tmng.notices(@uspto.gov
`
`Attachments
`
`2025-10-15_13-44-46.jpg
`
`2025-10-15_13-50-57.jpg
`
`Occupy Mars Poster Print - HypeSheriff.pdf
`
`Occupy Mars Shirt Classic T-shirt By Bquang90 - Artistshot.pdf
`
`Occupy Mars Shirt Men's Deluxe T-Shirt Occupy Mars Shirt Mens Tri-blend T-Shirt _
`CafePress.pdf
`
`Occupy Mars Space Apparel T-Shirt - Walmart.com.pdf
`
`Occupy Mars T-Shirt with American Flag Bold Letter _ Zazzle.pdf
`
`Sci-Fi Space Interstellar Rocket Starship Occupy Mars Men's T-shirt Back Print -
`Monsterry.pdf
`
`Terraform Occupy Mars Space Solar System Science Gift Youth T-shirt _ Mazezy DE.pdf
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No. 99292626
`
`Mark: OCCUPY MARS
`
`Correspondence Address:
`
`Elite Legal Document Service
`
`1001 LILLYHILL DR
`
`APT 40
`
`Needles CA 92363
`
`United States
`
`Applicant: Elite Legal Document Service
`Reference/Docket No. N/A
`
`Correspondence Email Address: dupton@tellit2thejudge.com
`
`SUBSEQUENT FINAL OFFICE ACTION
`
`Issue date: October 15, 2025
`
`The trademark examining attorney has carefully reviewed both of applicant’s Response to Office
`Action filed on October 14, 2025.
`
`Exh. A-3
`
`
`
`
`
`
`
`
`In a previous Office action dated October 10, 2025, the trademark examining attorney refused
`registration of the applied-for mark based on the following: (1) Failure to Function Refusal; and (2)
`Drawing Amendment Requirement.
`
`The trademark examining attorney notes that the following requirement is withdrawn: Drawing
`Amendment Requirement. See TMEP §§713.02, 714.04.
`
`The trademark examining attorney maintains and now makes FINAL the refusal in the summary of
`issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
`
`SUMMARY OF ISSUES MADE FINAL that applicant must address:
`* Failure to Function Refusal
`
`Failure to Function Refusal:
`
`For the reasons set forth below, the refusal is now made FINAL
`37 C.F.R. §2.63(b).
`
`As previously noted, registration is refused because that does
`not function as a trademark or service mark to indicate the source of applicant’s goods and services and
`to identify and distinguish them from others. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C.
`§81051-1053, 1127. In this case,
`
`. See In re GO & Assocs., LLC, 90 F.4th 1354, 1356-57, 2024 USPQ2d 616, at *3 (Fed. Cir.
`2024) (EVERYBODY VS RACISM not registrable for tote bags, apparel, and services involving
`promoting awareness of the need for racial reconciliation because the mark would be perceived merely
`as a commonly used message to convey an anti-racist sentiment); In re Hulting, 107 USPQ2d 1175,
`1177-79 (TTAB 2013) (holding NO MORE RINOS!, a slogan meaning “No More Republicans In
`Name Only,” not registrable for a variety of paper items, shirts, and novelty buttons because the mark
`would be perceived merely as a commonly used political message); TMEP §1202.04(b).
`
`Terms and phrases that merely convey an informational message are not registrable. In re DePorter,
`129 USPQ2d 1298, 1299 (TTAB 2019) (citing In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB
`2010)); see In re GO & Assocs., LLC, 90 F.4th at 1356, 2024 USPQ2d at *3. Determining whether a
`term or phrase functions as a trademark or service mark depends on how it would be perceived by the
`relevant public. In re Vox Populi Registry Ltd., 25 F.4th 1348, 1351, 2022 USPQ2d 115, at *2 (Fed.
`Cir. 2022) (citing In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *3 (TTAB 2020));
`TMEP §1202.04. When there are no limitations on the goods or services in the application, the relevant
`public comprises all potential purchasers of the goods or services. In re Team Jesus LLC, 2020
`USPQ2d 11489, at *3 (TTAB 2020) (citing In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *5
`(TTAB 2019)); see TMEP §1202.04. “The more commonly a term or expression is used, the less likely
`that the public will use it to identify only one source and the less likely that it will be recognized by
`purchasers as a trademark [or service mark].” In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *3
`(TTAB 2019) (citing In re Hulting, 107 USPQ2d at 1177); TMEP §1202.04(b).
`
`Applicant argues that the stated refusal must be reversed based of the treatment of one (1) prior
`registered mark. However, as applicant is well-aware, it is well settled that each application must be
`decided on its own facts; the USPTO is not bound by prior decisions involving different records.
`See In re Boulevard Ent., Inc., 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003) (citing In
`
`Exh. A-4
`
`
`
`
`
`
`
`
`re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566); In re Datapipe, Inc., 111 USPQ2d 1330,
`1336 (TTAB 2014); TMEP §1209.03(a). Eligibility for registration must be determined on the
`basis of the facts and evidence in the record at the time registration is sought, which includes
`during examination and any related appeal. In re Chippendales USA Inc., 622 F.3d 1346, 1354, 96
`USPQ2d 1681, 1686 (Fed. Cir. 2010); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1344, 213
`USPQ 9, 18 (C.C.P.A. 1982); In re Thunderbird Prods. Corp., 406 F.2d at 1391, 160 USPQ at
`732. The Trademark Trial and Appeal Board "is not bound by the mistakes or decisions made by
`Trademark Examining Attorneys in other cases." In re Grass Gmbh, 2006 USPQ2d (BNA) 1600,
`1603 (TTAB 2006).
`
`Applicant argues, among other things, that the "[e]xamining [a]ttorney relies on primarily non-
`precedent [sic] cases to arbitrarily categorize the proposed mark as sentiment, informational message,
`or slogan and presents evidence aimed at showing common use of the proposed mark in various
`contexts that do not establish that the proposed mark is incapable of functioning as an indicator of the
`source of [a]pplicant's clothing goods and services." However, the attached and previously attached
`evidence from Reddit, Wikipedia, Book of the Day, Times Now World, Rolling Stone, Vanity Fair,
`LookHuman, Walmart, Things of the Stars, Etsy, Newsweek, NDTV World, the Los Angeles Times,
`Sarah Wilson, Instagram, Times of India, LAD Bible, Cybernews, CNN, SpaceX Fanstore, LA Pop
`Art, LookHuman, Engineering Outfitters, TeePublic, Poshmark, Pinehart, Monsterry, HypeSheriff,
`Mazezy, Yinzylvania, Heshijiazhu, Zazzle, and Artist Shot, shows that
`
`Because consumers are accustomed to seeing this term or phrase used in ordinary language by
`many different sources, they would not perceive it as a mark identifying the source of applicant’s goods
`and services but rather as
`
`Applicant further argues that the stated refusal "infinges upon [a]pplicant's managerial authority to rect
`the affairs of its company[.]" This argument is not relevant to the stated refusal.
`
`Finally, it is noted that applicant contacted the undersigned Examining Attorney to request that the
`stated refusal be withdrawn. When advised that the stated refusal would not be withdrawn based on the
`evidence of record, applicant asserted that it was "preparing a press release on the current state of
`affairs with examining attorneys and their role in the failure of the American economy." This electronic
`correspondence is attached herein. At best, applicant's statement is nonsensical. However, in context of
`applicant's initial request to withdraw the stated refusal, to
`coerce the undersigned Examining Attorney to withdraw the stated refusal. Applicant is advised that
`threats will not overcome this refusal and is advised to cease all forms of threatening communication.
`
`An applicant may NOT overcome this refusal by amending the application to seek registration on
`the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). In
`re Ocean Tech., Inc., 2019 USPQ2d 450686, at *8; TMEP §1202.04(d); see In re TracFone Wireless,
`Inc., 2019 USPQ2d 222983, at *4 (TTAB 2019). Nor will submitting a substitute specimen overcome
`this refusal. In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6 (TTAB 2020) (quoting D.C. One
`Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016)); TMEP §1202.04(d).
`
`Accordingly, the as a
`trademark is made final.
`
`Response Options to Final Office Action:
`
`Exh. A-5
`
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`
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`Applicant may respond to this final Office action by filing (1) a request for reconsideration that fully
`resolves the outstanding refusal, and/or (2) an appeal of this final determination to the Trademark Trial
`and Appeal Board. 37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see TBMP ch. 1200.
`
`In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to
`37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP
`§1201.05; TMEP §1704 (explaining petitionable matters).
`
`Please note that an applicant may petition the Director only once to revive an abandoned application
`due to unintentional delay based on non-receipt of the same Office action. See 37 C.F.R. §2.66(b)(3).
`
`Assistance:
`
`If applicant has questions regarding this Office action, please telephone or e-mail the assigned
`trademark examining attorney. All relevant e-mail communications will be placed in the official
`application record; however, an e-mail communication will not be accepted as a response to this Office
`action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191;
`TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide
`additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the
`trademark examining attorney may not provide legal advice or statements about applicant’s rights. See
`TMEP §§705.02, 709.06.
`
`Response deadline. File a request for reconsideration of this final Office action and/or a timely appeal
`to the Trademark Trial and Appeal Board (TTAB) within three months of the “Issue date” below to
`avoid abandonment of the application. Review the Office action and respond using one of the links
`below to the appropriate electronic forms in the “How to respond” section below.
`
`Request an extension. For a fee, applicant may request one three-month extension of the response
`deadline prior to filing a response and/or an appeal. The request must be filed within three months of
`the “Issue date” below. If the extension request is granted, the USPTO must receive applicant’s
`response and/or appeal within six months of the “Issue date” to avoid abandonment of the application.
`
`How to respond. File a request form for reconsideration of this final Office action that fully
`resolves all outstanding requirements and/or refusals and/or file a timely appeal form to the
`
`Trademark Trial and Appeal Board with the required fee(s). Alternatively, applicant may file a
`request form for an extension of time to file a response for a fee.
`
`Law Office 107
`(571) 270-0958
`David.Dubin@USPTO.GOV
`
`Exh. A-6
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`RESPONSE GUIDANCE
`
`* Missing deadline to responding to this letter will cause the application to abandon. A
`response, appeal, or extension request must be received by the USPTO before 11:59 p.m.
`Eastern Time of the last day of the response deadline. Trademark Electronic Application System
`(TEAS) and Electronic System for Trademark Trials and Appeals (ESTTA) system availability
`could affect an applicant’s ability to timely respond. For help resolving technical issues with
`TEAS, email TEAS @uspto.gov.
`
`* Responses signed by an unauthorized party are not accepted and can cause the application to
`abandon. If applicant does not have an attorney, the response must be signed by the individual
`applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If
`applicant has an attorney, the response must be signed by the attorney.
`
`e If needed, find contact information for the supervisor of the office or unit listed in the
`signature block.
`
`Exh. A-7
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`EXHIBI'T
`
`GCB”
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`
`
`Case: 23-1539 Document: 95 Page:1 Filed: 08/26/2025
`
`Anited States Court of Appeals
`for the Jfederval Civcuit
`
`IN RE: ERIK BRUNETTI,
`Appellant
`
`2023-1539
`
`Appeal from the United States Patent and Trademark
`Office, Trademark Trial and Appeal Board in Nos.
`88308426, 88308434, 88308451, 88310900.
`
`Decided: August 26, 2025
`
`JOHN R. SOMMER, John R. Sommer, Attorney-at-Law,
`Villa Park, CA, argued for appellant. Also represented by
`KELLY KRISTINE PFEIFFER.
`
`BRADLEY HINSHELWOOD, Appellate Staff, Civil Divi-
`sion, United States Department of Justice, Washington,
`DC, argued for appellee Coke Morgan Stewart. Also repre-
`sented by BRIAN M. BOYNTON, DANIEL TENNY; AMY J.
`NELSON, Office of the Solicitor, United States Patent and
`Trademark Office, Alexandria, VA.
`
`Before LOURIE, DYK, and REYNA, Circuit Judges.
`Opinion for the court filed by Circuit Judge DYK.
`Dissenting opinion filed by Circuit Judge LOURIE.
`
`Exh. B-8
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`
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`Case: 23-1539 Document: 95 Page:2 Filed: 08/26/2025
`
`2 IN RE: BRUNETTI
`
`DYK, Circuit Judge.
`
`Erik Brunetti appeals a decision of the Trademark
`Trial and Appeal Board (“Board”). The Board affirmed the
`examining attorney’s refusal to register the word FUCK as
`a trademark for certain goods and services because it failed
`to function as a trademark. In re Brunetti, No. 88308426,
`2022 WL 3644733 (T.T.A.B. Aug. 22, 2022). We reject
`many of Mr. Brunetti’s arguments but nonetheless con-
`clude that the decision of the Board lacks sufficient clarity,
`and, accordingly, we vacate and remand for further pro-
`ceedings.
`
`BACKGROUND
`
`In February 2019, Mr. Brunetti filed four intent-to-use
`trademark registration applications. He sought registra-
`tion on the principal register of the standard character
`mark FUCK (the “proposed mark” or the “applied-for
`mark”) for (1) goods including sunglasses and carrying
`cases for cell phones, laptops, and glasses;! jewelry,
`watches, and related products;2 backpacks, wallets, lug-
`gage, and other bags;? and (2) services including retail
`store services featuring the aforementioned goods and a
`wide variety of other consumer goods.# S. App’x 1-2.5
`
`1 Application Serial No. 88308426 for goods in Inter-
`national Class 9.
`
`2 Application Serial No. 88308434 for goods in Inter-
`national Class 14.
`
`3 Application Serial No. 88308451 for goods in Inter-
`national Class 18.
`
`4 Application Serial No. 88310900 for services in In-
`ternational Class 35.
`
`5 Citations to “S. App’x” refer to the supplemental
`appendix filed by the government with its Response Brief.
`
`Exh. B-9
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`
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`Case: 23-1539 Document: 95 Page:3 Filed: 08/26/2025
`
`IN RE: BRUNETTI 3
`
`After issuing non-final refusals and receiving re-
`sponses from Mr. Brunett1,® the United States Patent and
`Trademark Office (“PTO”) examining attorney refused the
`trademark applications on the ground that “the applied-for
`mark is a slogan or term that does not function as a trade-
`mark or service mark to indicate the source of applicant’s
`goods and/or services and to identify and distinguish them
`from others.” S.App’x 191; accord S. App’x 2048, 2641,
`3113.7 The examining attorney refused the applications
`under the heading “Refusal under Trademark Act Sec-
`tions 1, 2, 3, and 45—Widely-used Commonplace Wording.”
`Id. Inrelation to the jewelry and related goods application,
`for example, the examining attorney explained “the ap-
`plied-for mark is a commonplace term, message, or expres-
`sion widely used by a variety of sources that merely
`conveys an ordinary, familiar, well-recognized concept or
`sentiment.” Id. The examining attorney “attached evi-
`dence from multiple internet websites and internet based
`periodicals [to] show|[] that the term FUCK is commonly
`used as a versatile expression that conveys a wide range of
`emotion, from disdain to joy.” S. App’x 192; see
`
`6 The applications were 1initially refused on the
`ground that the proposed mark “[c]onsists of or comprises
`immoral[] . .. or scandalous matter.” 15 U.S.C. § 1052(a).
`The Supreme Court subsequently held, in a separate case
`involving Mr. Brunetti, that section 1052(a)’s bar on regis-
`tering immoral or scandalous matter was unconstitutional.
`Iancu v. Brunetti, 588 U.S. 388, 390 (2019). The examining
`attorney then reexamined the applications, leading to the
`decisions under review here.
`
`7 The record and legal issues applicable to each ap-
`plication are substantively similar. The Board thus pri-
`marily referred to Mr. Brunetti’s application for jewelry,
`watches, and related property, S. App’x 4 n.6, and we fol-
`low suit.
`
`Exh. B-10
`
`
`
`
`
`
`
`
`Case: 23-1539 Document: 95 Page: 4 Filed: 08/26/2025
`
`4 IN RE: BRUNETTI
`
`S. App’x 195-382 (attached evidence). The evidence in-
`cluded images of jewelry and other goods with no connec-
`
`tion to Mr. Brunetti marketed on websites. See, e.g.,
`S. App’x 289-339.
`
`On August 22, 2022, the Board in a precedential opin-
`ion affirmed the refusals to register the proposed mark for
`failure to function as a mark. The Board concluded that
`“[m]ere commonality[] . .. is not the test” for a failure to
`function refusal but, instead, the Board “must assess
`whether Applicant’s proposed mark, [FUCK], functions as
`a mark based on whether the relevant public, i.e. purchas-
`ers or potential purchasers of the identified [] goods and []
`services ... would perceive [FUCK] as identifying the
`source or origin of such goods and services.” S. App’x 36
`(quoting In re Team Jesus LLC, 2020 U.S.P.Q.2d 11489,
`2020 WL 7312021, at *3 (T.T.A.B. 2020)) (alterations in
`original). But the Board explained that “[m]atter may be
`merely informational and fail to function as a trademark if
`it is a common term or phrase that consumers of the goods
`or services identified in the application are accustomed to
`seeing used by various sources to convey ordinary, familiar,
`or generally understood concepts or sentiments.”
`S. App’x 12. “[T]here are designations, including certain
`widely-used messages, which are inherently incapable of
`being regarded as source indicators.” S. App’x 34-35.
`“Such widely used messages will be understood as merely
`conveying the ordinary concept or sentiment normally as-
`sociated with them, rather than serving any source-indi-
`cating function.” S. App’x 12.
`
`The Board then 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.”
`S. App’x 38-39. Next, the Board considered the applied-for
`mark’s use in the marketplace, explaining that
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`Exh. B-11
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`IN RE: BRUNETTI 5
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`“[p]Jrominent 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.” S. App’x 44 (cit-
`ing In re Mayweather Promotions, LLC, 2020 U.S.P.Q.2d
`11298, 2020 WL 6689736, at *5 (T.T.A.B. 2020)). The
`Board concluded that:
`
`The record before us establishes that the word
`FUCK expresses well-recognized familiar senti-
`ments and the relevant consumers are accustomed
`to seeing it in widespread use, by many different
`sources, on the kind of goods identified in the [ap-
`plications at issue]. Consequently, we find that it
`does not create the commercial impression of a
`source indicator, and does not function as a trade-
`mark to distinguish Applicant’s goods and services
`in commerce and indicate their source.
`
`S. App’x 46. Accordingly, the Board affirmed the refusals
`to register. S. App’x 58.
`
`Mr. Brunetti appealed. We have jurisdiction under
`28 U.S.C. § 1295(a)(4)(B).
`
`DISCUSSION
`
`We review the Board’s decision in accordance with the
`standards of the Administrative Procedure Act (“APA”).
`Bridgestone/ Firestone Rsch., Inc. v. Auto. Club De L’Quest
`De La France, 245 F.3d 1359, 1361 (Fed. Cir. 2001) (citing
`Dickinson v. Zurko, 527 U.S. 150, 152 (1999)). We evaluate
`the Board’s legal conclusions de novo. In re
`HOTELS.COM, L.P., 573 F.3d 1300, 1302 (Fed. Cir. 2009).
`We uphold the Board’s factual findings unless they are ar-
`bitrary, capricious, an abuse of discretion, or unsupported
`by substantial evidence. Id. “The [APA] ... establishes a
`scheme of ‘reasoned decisionmaking,” which requires that
`“the process by which [an agency] reaches [a] result must
`be logical and rational.” Allentown Mack Sales & Serv.,
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`Exh. B-12
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`6 IN RE: BRUNETTI
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`Inc. v. NLRB, 522 U.S. 359, 372 (1998) (quoting Motor Ve-
`hicle Mfrs. Ass’n of United States, Inc. v. State Farm Mut.
`Auto. Ins. Co., 463 U.S. 29, 52 (1983) (“State Farm”)).
`
`We reject most of Mr. Brunetti’s arguments but con-
`clude that the Board has failed to articulate a satisfactory
`explanation for its action.
`
`I
`
`We begin by considering Mr. Brunetti’s arguments that
`the Board violated various constitutional rights and that
`the Supreme Court’s decision in Iancu v. Brunetti, 588 U.S.
`388 (2019), dictates the outcome of this case. We find these
`arguments unpersuasive.
`
`First, Mr. Brunetti argues that the PTO has violated
`the First Amendment by engaging in viewpoint discrimi-
`nation because it has allowed trademark registration of
`“positive terms,” such as FUCK CANCER and LOVE, while
`refusing registration of “negative terms” or “profanity,”
`such as the applied-for mark. Appellant’s Br. 52—-53 (citing
`Iancu v. Brunetti, 588 U.S. 388 (2019); Matal v. Tam,
`582 U.S. 218 (2017)). The Board explained that the focus
`of a failure-to-function refusal is “whether the relevant con-
`sumers perceive [the applied-for mark] as a trademark”
`and that such a “refusal applies evenhandedly, regardless
`of any viewpoint expressed.” S. App’x 51. Mr. Brunetti has
`1dentified no basis for concluding that the Board’s analysis
`in this case deviated from that viewpoint-neutral principle.
`
`Second, Mr. Brunetti argues that the PTO 1is retaliat-
`ing against him for exercising his “right to petition” the
`courts for redress. Appellant’s Br. 53-55. Mr. Brunetti ap-
`pears to be referring to his prior case addressed by the Su-
`preme Court in Iancu v. Brunetti, 588 U.S. 388 (2019),
`where Mr. Brunetti prevailed and the Supreme Court held
`that the PTO had erred in declining to register the mark
`FUCT on the ground that it was “immoral or scandalous”
`within the meaning of 15 U.S.C. § 1052(a). Brunetti,
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`Exh. B-13
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`IN RE: BRUNETTI 7
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`588 U.S. at 390 (holding that section 1052(a) bar to regis-
`tration of “immoral[ ] or scandalous” trademarks violated
`the First Amendment). Mr. Brunetti’s sole evidence of re-
`taliation is that the refusals in this case came after his Su-
`preme Court victory. We conclude Mr. Brunetti has failed
`to show the Board’s decision in this case is retaliatory.
`
`Third, Mr. Brunetti appears to argue that Iancu
`v. Brunetti dictates the outcome of this case. We disagree.
`Iancu v. Brunetti addressed a different legal issue (the con-
`stitutionality of a prohibition on scandalous words) than is
`present in this case (failure to function as a mark).
`588 U.S. at 390. It also addressed a fundamentally differ-
`ent mark (FUCT as compared to FUCK). The applied-for
`mark in this case is a well-defined and widely used word.
`FUCT, on the other hand, is not a word at all; it 1s wordplay
`on its “phonetic twinl[,] ... ‘fucked,” In re Brunetti,
`877 F.3d 1330, 1338 (Fed. Cir. 2017), affd sub nom. Iancu
`v. Brunetti, 588 U.S. 388 (2019). Iancu v. Brunetti thus did
`not answer the question in this case: whether the Board
`erred in determining the applied-for mark fails to function
`as a trademark. Additionally, Mr. Brunetti’s successful
`registration of the FUCT mark, see U.S. Trademark Regis-
`tration No. 6230977 (registered Dec. 29, 2020), does not
`guarantee him the ability to register a separate and funda-
`mentally different mark.
`
`II
`
`Mr. Brunetti next appears to argue that, in affirming
`the examining attorney’s refusals, the Board improperly
`created an “entirely novel” failure-to-function doctrine
`“wherein there are some words or phrases that just can
`never be registered for any goods or services because the
`terms are allegedly ‘too widely-used.” Appellant’s Br. 6-7
`(emphases omitted).
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`Exh. B-14
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`8 IN RE: BRUNETTI
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`A
`
`The registrability of a trademark is governed by the
`Lanham Act. See 15 U.S.C. §§ 1051, 1052. By definition, a
`“trademark” must indicate a product’s source:
`
`The term “trademark” includes any word, name,
`symbol, or device, or any combination thereof—
`(1) used by a person, or (2) which a person has a
`bona fide intention to use in commerce . . ., to iden-
`tify and distinguish his or her goods, including a
`unique product, from those manufactured or sold
`by others and to indicate the source of the goods,
`even 1if that source is unknown.
`
`15 U.S.C. §1127. It is thus “a threshold requirement of
`registrability that [an applied-for] mark ‘identify and dis-
`tinguish’ the goods and services of the applicant from those
`of others, as well as ‘indicate the source’ of those goods and
`services.” In re GO & Assocs., LLC, 90 F.4th 1354, 1356
`(Fed. Cir. 2024) (quoting 15 U.S.C. § 1127); Jack Daniel’s
`Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 146 (2023)
`(“[A] trademark is not a trademark unless it identifies a
`product’s source (this is a Nike) and distinguishes that
`source from others (not any other sneaker brand).”).
`
`To distinguish one producer’s goods or services from
`another’s, and thus be a registerable trademark, a pro-
`posed mark must be “distinctive,” either inherently or
`through the acquisition of secondary meaning.
`1 J. Thomas McCarthy, McCarthy on Trademarks & Un-
`fair Competition § 4:13 (5th ed.) (“McCarthy”). “Distinc-
`tiveness is often expressed on a