The Board denied the Rule 12(b)(6) motion of Applicant, United Trademark Holdings, Inc., to dismiss this opposition to registration of the mark RAPUNZEL for dolls and toy figures. Opposer Rebecca Curtin, a professor at Suffolk University Law School, alleged that applicant’s mark fails 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. United asserted that Professor Curtin lacks standing because she is not a competitor and “has not used the mark in connection with the manufacture or sale of dolls.” The Board, relying on the CAFC’s Ritchie v. Simpson decision, disagreed, observing that “Consumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain.” Rebecca Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (December 28, 2018) [not precedential].

Standing: Professor Curtin maintained that, as a consumer of dolls, “she has purchased and continues to purchase said goods, and that registration of the applied-for mark by Applicant would constrain the marketplace of such goods sold under the name ‘Rapunzel,’ raise prices of  ‘Rapunzel’ dolls and toy figures, and deny consumers, such as herself, the ability to purchase ‘Rapunzel’ dolls offered by other manufacturers.” The Board deemed these allegations sufficient to establish that she has a direct and personal interest in the outcome of the proceeding, in accordance with the “liberal threshold” established in Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).

The Board was unmoved by United’s contention that Curtin did not differentiate herself from “any other potential consumer of dolls.”

As the Federal Circuit has stated, “In no case has this court ever held that one must have a specific commercial interest, not shared by the general public, in order to have standing as an opposer. Nor have we ever held that being a member of a group with many members is itself disqualifying. The crux of the matter is not how many others share one’s belief that one will be damaged by the registration, but whether that belief is reasonable and reflects a real interest in the issue.” Ritchie v. Simpson, 50 USPQ2d at 1027 (citing 15 U.S.C. § 1063). 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).

Since Professor Curtin established standing as to her mere descriptiveness claim, she may also assert any other grounds in the opposition. Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1877 (TTAB 2011).

Asserted Claims: The Board dismissed with prejudice Curtin’s Section 2(e)(5) functionality claim because Section 2(e)(5) “has no bearing on an application to register a word mark.” The Board struck her fraud claim because she did not set forth allegations of specific facts upon which the claim was based. And the Board also struck Curtin’s claim of genericness because she 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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TTABlog comment: For more details and commentary, see the October 29, 2018 blog post by Kira-Khanh McCarthy: “Does a Law School Professor Have Standing to Oppose RAPUNZEL for Dolls and Toy Figures?” [here]

Text Copyright John L. Welch 2018.