TTAB Bifurcates "RAPUNZEL" Doll Opposition; Will Re-Visit "Standing" Issue Before Considering Merits of Professor Curtin's Claims

The Board has decided to take a second look at the issue of opposer's entitlement to bring a statutory cause of action in the RAPUNZEL trademark opposition. Opposer Rebecca Curtin, a professor at Suffolk University Law School in Boston, alleges that the proposed 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, for the goods. Applicant United previously moved to dismiss on that ground that Professor Curtin lacked standing because she is not a competitor and "has not used the mark in connection with the manufacture or sale of dolls." [TTABlogged here]. The Board disagreed, observing that "[c]onsumers, 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 Rebecca Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (December 28, 2018) [not precedential].

In April 2021, Professor Curtin moved for partial summary judgment on the "entitlement" claim, but the Board has denied the motion because "genuine disputes of material fact remain for trials" regarding that issue. [pdf here].

The Professor maintained that she has a real interest in the proceeding: she is "a mother of a young girl who has purchased and continues to purchase dolls, including fairy tale dolls," and therefore she and other consumers will be damaged if the mark is registered because they "will have to expend increased time and costs in locating and identifying Rapunzel character dolls and toys" and "will be denied access to healthy marketplace competition for the identified goods."

The Board observed that Lexmark provides the applicable standard for determining whether a party is entitled to bring a statutory cause of action.

[T]o establish entitlement to a statutory cause of action under Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063 and 1064, on summary judgment, a plaintiff must demonstrate that there is no genuine dispute of material fact that its interest in opposing or cancelling the registration is within the zone of interests protected by the statute and that plaintiff has a reasonable belief of damage proximately caused by registration of the mark. Corcamore, 2020 USPQ2d 11277, at *6-7; cf. Empresa Cubana Del Tabaco, 111 USPQ2d at 1062.

The Board concluded that, in light of recent case law, it is "appropriate to revisit this issue." It therefore bifurcated the proceeding into two phases: the first dealing with the issue of Professor Curtin's entitlement to bring a statutory cause of action, and the second phase (if necessary) dealing with the merits.

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TTABlogger comment: Suppose the Board rules in favor of Professor Curtin on all the issues. If the applicant appeals that decision, will it have Article III standing? See the CAFC's recent Brooklyn Brew Shop decision [TTABlogged here] in which the CAFC made clear that Article III standing requires a different (and higher) standard than entitlement to a statutory cause of action before an administrative tribunal.

Text Copyright John L. Welch 2021.