Rapunzel potentially was released from the trademark monopoly tower, not by her hair, but by trademark opposer and law professor Rebecca Curtin. In a decision issued on December 28, 2018, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) denied trademark applicant United Trademark Holdings, Inc.’s (“Applicant”) motion to dismiss Prof. Curtin’s opposition to registration for lack of standing.
Background
Applicant United Trademark Holdings, Inc. applied to register the trademark RAPUNZEL with the USPTO for dolls and toy figures on November 20, 2017.
Professor Rebecca Curtin of Suffolk Law School found the application while researching for an article about trademarks and the public domain. Through her school’s Intellectual Property and Entrepreneurship Clinic, Prof. Curtin timely filed a Notice of Opposition with the Board, alleging that the term RAPUNZEL failed to function as a trademark, was descriptive, generic and/or functional, and that Applicant committed fraud on the USPTO by filing an application for a name that it knew it did not exclusively own.
Applicant responded with a Motion to Dismiss, asserting that Prof. Curtin had no standing to pursue the opposition. Specifically, Applicant argued that Prof. Curtin failed to allege that she was a competitor in the doll and toy figure industry, or that she had any other “direct stake in using Applicant’s RAPUNZEL mark in a descriptive or generic manner.” The Board disagreed.
The Board’s Reasoning
The Board noted that the Court of Appeals for the Federal Circuit long ago set forth a liberal standard for standing, namely that “[a] petitioner is authorized by statute to seek cancellation of a mark where it has both a real interest in the proceeding as well as a reasonable basis for its belief of damage.” Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999). A “real interest” is a “direct and personal stake” in the outcome of the proceeding. Id., 50 USPQ2d at 1026. Under the “real interest” requirement, a plaintiff must have “a legitimate personal interest in the opposition.” With respect to the second inquiry, the plaintiff’s belief of damage “must have a reasonable basis in fact.” Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012)
In this case, Prof. Curtin’s Notice of Opposition alleged:
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Opposer, Rebecca Curtin, is a professor of law teaching trademark law, and is also a consumer who participates amongst other consumers in the marketplace for dolls and toy figures of fairytale characters, including Rapunzel. Opposer is a mother of a young girl who has purchased and continues to purchase dolls, including fairy tale dolls. As such, Opposer has a legitimate interest in the outcome of this proceeding. By allowing an individual private company to trademark the name of a famous fairy tale character in the public domain, Opposer and other consumers will be denied access to healthy marketplace competition for products that represent the well-known fictional character. Opposer and other consumers will also likely face an increased cost of goods associated with Rapunzel merchandise, given the lack of competition. Opposer believes that a trademark registration in the fairy tale character’s name for dolls could chill the creation of new dolls and toys by fans of the fairy tale, crowding out the substantial social benefit of having diverse interpreters of the fairy tale’s legacy. Opposer and other consumers will also be denied access to classic, already existing, Rapunzel merchandise whose sale may be precluded if Applicant receives a registration for the name “Rapunzel.”
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Further, Opposer is a member of a community of purchasers of fairy tale dolls and toys that will be similarly damaged by registration of the subject application. Opposer believes that this community includes hundreds of people who purchase fairy tale dolls and toys that will potentially be damaged if the subject mark is registered. Opposer has documented contact with several organizations and interest groups which have expressed their belief that allowing the subject mark to be registered would cause damage. Opposer has also obtained more than 171 petition signatures from other individual consumers who share Opposer’s belief, with 157 of those petition signers residing in the United States. See Exhibit B attached hereto. A number of the signatures include a statement about the damage that would result from allowing the subject mark to be registered …”
(Emphases added).
These facts, the Board found, demonstrate that Prof. Curtin sufficiently alleged that she had a direct and personal stake in the outcome of the proceeding and that her belief of damage had a reasonable basis in fact. Although being a competitor who needs to use a particular designation to describe its own goods is a well-established basis for alleging and proving standing, the Board had no trouble finding that being a competitor was not the only basis for standing.
“Consumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain, ‘(1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.’ In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978) (internal citation omitted) (Board emphasis). Hence, members of the consuming public may have a real interest in preventing exclusive appropriation of merely descriptive or generic terms by trademark owners.”
(Slip. Op. at 9)
Therefore, the Board denied the motion to dismiss and permitted the opposition to continue.
With respect to Prof. Curtin’s claim that the mark RAPUNZEL was functional, the Board dismissed it because the concept of trademark functionality applies only to product configuration or design, not word marks.
Prof. Curtin’s fraud claim was also rejected because it was insufficiently pleaded. The crux of Prof. Curtin’s fraud claim was that Applicant knew that it did not have exclusive rights to the word RAPUNZEL based on the wealth of stories and dolls about that character in the marketplace. However, the Board rejected the claim because the Notice of Opposition did not contain any specific facts to support the allegation that Applicant knew that it did not have exclusive rights to the mark.
Finally, the Board addressed Prof. Curtin’s claim that the term RAPUNZEL was generic. A genericness claim must allege that: (i) the wording at issue is widely used generically to identify the genus of goods or services identified in the opposed application, and that (ii) consumers primarily understand the wording to be the generic name or identifier of or adjective for the genus of goods or services. The Notice of Opposition failed because it did not allege that consumers primarily understand the word “Rapunzel” to be the generic name or adjective for dolls and toy figures.
The Board found, however, that the claims of mere descriptiveness and failure-to-function were adequately pleaded.
Professor Curtin was allowed 30 days within which to submit a second amended notice of opposition with sufficiently pleaded fraud and genericness claims.
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While most consumers have neither the savvy nor the resources to oppose trademarks that would inhibit or harm their purchasing power in the marketplace, the Board clearly demonstrated an openness to consumer protection by allowing them to do so. The Board also broadened the concept of standing by examining factually whether an opposer has a direct and personal stake in the outcome of an opposition that may well extend beyond competitors and consumers.
