[This guest post was written by Kira-Khanh McCarthy, a 2L at University of Notre Dame Law School]. Here’s an interesting TTAB case to keep your eye on! Applicant, United Trademark Holdings, Inc., filed for registration of the mark RAPUNZEL for dolls and toy figures. Rebecca Curtin, a law professor, timely filed a Notice of Opposition, alleging that Applicant’s mark failed to function as a trademark under Sections 1, 2, and 45 of the Trademark Act on the grounds that it is purely informational and highly descriptive, if not generic, of the goods. Opposer Curtin argued that Rapunzel is “synonymous with the name of a well-known childhood fairytale character” and has long been in the public domain. In addition, Opposer Curtin claimed that the mark is functional under Section 2(e)(5) since it identifies the fictional character Rapunzel. Rebecca Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 [(documents here].

In response, Applicant United filed a Motion to Dismiss pursuant to Fed. R. Civ. P. 12(b)(6) for lack of standing. Applicant asserted that Opposer is a law professor at Suffolk University Law School (in Boston), and thus is not a competitor and “has not used the mark in connection with the manufacture or sale of dolls.” In fact, Applicant accused Professor Curtin of using the opposition proceeding as an academic exercise for students in the law school’s IP clinic. Applicant therefore urged the Board to dismiss the opposition since Opposer did not sufficiently plead a “real interest” or a “reasonable belief in damage.” See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).

Professor Curtin then amended the opposition and contended that she does have a real interest in the proceedings even though she is not a competitor or manufacturer of the goods at issue. The Professor attested that she is a consumer of fairytale-themed goods and as such would be irreparably harmed by the registration of the mark RAPUNZEL. Indeed, the amended opposition cited two cases where opposers had standing despite the fact that they were not competitors. The Federal Circuit in Ritchie v. Simpson held that the plaintiff had standing to oppose a scandalous mark because his view was that of the affected public. 170 F.3d 1092 (Fed. Cir. 1999). Likewise, the Board in Andrew R. Flanders v. Dimarzio, Inc. found that a musician/consumer had standing to cancel the registration of cream-colored guitar picks, due to his purchasing ability. 2017 WL 3718339 (Trademark Tr. & App. Bd. July 25, 2017) [not precedential].

Applicant’s response to the amended opposition attempts to distinguish both Ritchie and Flanders from the present case. It continues to argue that Opposer is simply a member of the general public and should not have standing to oppose the registration of the RAPUNZEL mark. The TTAB will likely not deliver a decision on this issue for another few months.

Considering Standing: In a recent case, the Supreme Court redefined the requirements for standing in Lanham Act cases. A plaintiff must “come within a zone of interest” to sue under 15 U.S.C. § 1125(a). SeeLexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014). In order to determine whether a plaintiff falls within this zone of interest, a court should use traditional tools of statutory interpretation. Id. at 127. Consequently, the TTAB’s decision in this case may well hinge on whether Professor Curtin’s connection to the goods fits within the statutory language of Section 45 of the Trademark Act, and in particular the statement of the intent of the Lahnam Act:

The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations (emphasis added).

Letters of Protest: Here, Opposer filed a Notice of Opposition to prevent allowing one manufacturer to register RAPUNZEL for dolls and toy figures. However, challengers of pending marks may also file a Letter of Protest through the PTO. Any individual can file a Letter of Protest in order to provide an examining attorney with helpful documents and registrations. If a mark has been published, letters of protest will need to include clear evidence that the PTO erred in approving the mark for publication. For more information on the LOP process, go here.

Read comments and post your comment here.

TTABlog comment: Note that Disney obtained an extension of time to oppose the RAPUNZEL application, but did not pursue it. Why do you think so? BTW: How did this mark get past the examining attorney?

Kira comment: Special shout-out to Professor Robin Effron, my visiting 1L civil procedure professor! — https://imgflip.com/i/kqmu6

Text Copyright Kira-Khanh McCarthy and John L. Welch 2018.