Precedential No. 14: TTAB Dismisses RAPUNZEL Opposition: Professor Failed to Prove Entitlement to a Cause of Action

Unsurprisingly, the Board dismissed Professor Rebecca Curtin's opposition to registration of the mark RAPUNZEL for dolls and toy figures, finding that Curtin, as a mere consumer of fairytale-themed products, failed to prove her entitlement to a statutory cause of action. The Board addressed this single, threshold question: "[I]s Opposer Rebecca Curtin, as a purchaser of goods bearing the challenged mark, entitled to oppose the mark’s registration under Section 13 of the Trademark Act, 15 U.S.C. § 1063, when she alleges the proposed mark is both invalid and the subject of a fraudulent application?" The Board said no. Rebecca Curtin v. United Trademark Holdings, Inc., 2023 USPQ2d 535 (TTAB  2023) [precedential] (Opinion by Judge Michael B. Adlin).

Opposer Curtin alleged that she is a consumer who "participates amongst other consumers in the marketplace for dolls and toy figures of fairytale characters, including Rapunzel." She "believes" that if applicant obtains a registration for the mark RAPUNZEL, she and others "will be denied access to healthy marketplace competition for products that represent the well-known fictional character,' and further that they will "also likely face increased cost of goods associated with Rapunzel merchandise, given the lack of competition." She further believes that the registration "could chill the creation of new dolls and toys by fans of the Rapunzel fairytale, crowding out the substantial social benefit of having diverse interpreters of the fairy tale's legacy."

Entitlement to a statutory cause of action is a threshold requirement of every inter partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC , 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020), cert. denied , 142 S.Ct. 82 ( (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125 26 , 109 USPQ2d 2061 (2014)).  "A plaintiff may oppose registration of a mark when doing so is within the zone of interests protected by the statute and she has a reasonable belief in damage that would be proximately caused by registration of the mark. Corcamore, LLC v. SFM, LLC , 978 F.3d 1298, 2020 USPQ2d 11277, at * 6-7 (Fed. Cir. 2020), cert. denied , 141 S.Ct. 2061 (2021) (holding that the test in Lexmark is met by demonstrating a real interest in opposing or cancelling a registration of a mark, which satisfies the zone of interests requirement, and a reasonable belief in damage by the registration of a mark, which demonstrates damage proximately caused by registration of the mark). Meenaxi Enter., Inc. v. Coca Cola Co. Co., 38 F.4th 1067, 2022 USPQ2d 602, at *3 4 (Fed. Cir. 2022) (“While the zone of interest test is not especially demanding … it nonetheless imposes a critical requirement.”) (cleaned up).

Here, "the essential problem" for Opposer Curtin is that mere consumers "are generally not statutorily entitled to oppose registration under 115 U.S.C. § 1063."

The Board observed that Section 1063 entitles "[any person who believes that [she] would be damaged by the registration of a mark" to oppose it. Although this language is quite broad, it is not to be given an expansive reading. As required by Lexmark, the Board must first look to see whether Curtin came within the "zone of interests" protected by the Trademark Act.

In Lexmark, the Supreme Court pointed out that "[i]dentifying the interests protected by" the Trademark Act "requires no guesswork." Lexmark, 109 USPQ2d at 268. Section 45 of the Act identifies those interests:

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 trademarks, trade names, and unfair competition entered into between the United States and foreign nations. (emphasis by the Board).

In short, the Trademark Act "regulates commerce and protects plaintiffs with commercial interests."

The Court in Lexmark concluded that the "zone of interests" in a suit under Section 43(a)(1) of the Act - which, like Section 13, may be invoked by a person 'who believes that her or she is likely to be damaged' by the challenged act - "a plaintiff must allege an injury to a commercial interest in reputation or sales.” Lexmark, 109 USPQ2d at 2069 (emphasis by the Board). In Corcamore, the CAFC found “no principled reason why the analytical framework articulated by the Court in Lexmark should not apply to [15 U.S.C.] § 1064,” Corcamore, 2020 USPQ2d 11277, at *6.

The Court specifically stated that while consumers “may well have an injury in fact” caused by violations of the Trademark Act, they “cannot invoke the protection” of the statute based solely on injuries suffered as consumers , “a conclusion reached by every Circuit to consider the question.” Id. (“Even a business misled by a supplier into purchasing an inferior product is, like consumers generally, not under the Act’s aegis.”)

If, according to Lexmark, a business that buys goods or services does not fall within the Act, then "[a] fortiori, a mere consumer that buys goods or services is not under the Trademark Act’s aegis."

Put simply, the Trademark Act does not provide “consumer standing.” That is, it does not entitle mere consumers to a statutory cause of action ; a statutory cause of action is reserved for those with commercial interests. Id. at 2071

In addition, Curtin "must show economic or reputational injury flowing directly from” Applicant’s registration of RAPUNZEL. Lexmark, 109 USPQ2d at 2069.

However, “[t]hat showing is generally not made when” a defendant’s conduct “produces injuries to a fellow commercial actor that in turn affect the plaintiff. For example, while a competitor who is forced out of business by a defendant’s false advertising generally will be able to sue for its losses, the same is not true of the competitor’s landlord, its electric company, and other commercial parties ….” Id. at 2069 70.

Here, Curtin's evidence of the damage she would allegedly suffer is "too remote from registration and is entirely speculative." She assumes, without evidence, that applicant will be "so successful in enforcing its asserted rights that it will reduce 'marketplace competition,' 'chill the creation of new dolls and toys' and prevent 'access to classic, already existing, Rapunzel merchandise.'" 

Furthermore, the Board pointed out, "registration would at most preclude others from using RAPUNZEL as their own source indicator for such products, subject to defenses such as 15 U.S.C. § 1115(b)(4) (creating a defense to infringement where the 'term or device … is descriptive of and used fairly and in good faith only to describe the goods and services of such party').

And so, the Board concluded that Opposer Curtin had failed to prove her entitlement to a statutory cause of action, and it dismissed the opposition.

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TTABlogger comment: The Lexmark decision was at the heart of this ruling. Too bad the Board ignored it in its original ruling in favor of Curtin.

Text Copyright John L. Welch 2023.