Monday, December 31, 2018

Ordinary Consumer Has Standing to Oppose RAPUNZEL for Dolls, Says TTAB

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 Rebecca Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (December 28, 2018) [not precedential].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.

Read comments and post your comment here.

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.


At 8:30 AM, Anonymous Anonymous said...

OK. Great. Everybody has standing for any or no reasons. Make way for the deluge of anti-MAGA (based on e.g., misdescriptiveness, fraud (sadly 2(a) obscenity is no more), trademark attorney activism cometh. Schwimmer and Welch, powers, activate!

At 8:38 AM, Anonymous Joseph Dreitler said...

Not only is the legislative history clear, I can cite numerous USDC decisions that state “the Lanhamb Act is not a consumer protection statute.” Cite a single District Courtbcase that says otherwise.

At 8:47 AM, Anonymous Paul Reidl said...

This is not good for trademark owners or the TTAB The floodgates are now open

At 9:54 AM, Anonymous Anonymous said...

Consumer standing made sense under the former provisions of Section 2(a) regarding disparaging matter, etc. Consumer standing makes much less sense under any other provision. I hope this goes to the CAFC.

At 5:37 PM, Blogger xian said...

You are conflating the Article III "case or controversy" requirement and the doctrine of prudential standing with the standing requirement to participate in an administrative proceeding. The latter standing requirement is statutory - Section 13(a) allows any person who believes that he would be damaged to file an opposition. Why does it matter if courts have or have not stated that the Lanham Act is a consumer protection statue? The legislative history is clear that Lanham Act was meant to protect both consumers and trademark owners. What floodgate is opened? It is common in other areas for parties who lack judicial standing to be allowed to bring a claim in administrative proceedings. Indeed administrative challenges to marks such as this aids the PTO in its duty to promote commerce and is more efficient than a lawsuit (promotes resolution before damage has been suffered in the marketplace and often before the applicant has invested significant resources in its proposed mark). It also helps alleviate some of the problems created when only market players participate in trademark litigation.


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