Feb 11 | 2019

You Don’t Have to Scale a High Tower to Oppose a Trademark

A recent Trademark Trial and Appeal Board decision illustrates the Board’s very generous policy on standing in opposition and cancellation proceedings.

In Rebecca Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (TTAB Dec. 28, 2018), Applicant, United Trademark Holdings, Inc., filed for registration of the mark RAPUNZEL for dolls and toy figurines. Rebecca Curtin, a law professor at Suffolk University Law School, filed a Notice of Opposition arguing that Applicant’s mark should not be entitled to registration because the mark, RAPUNZEL, fails to function as a mark and is merely descriptive of dolls featuring the classic fairy tale character of the same name. Applicant attempted to dismiss Professor Curtin’s opposition, asserting that Curtin lacked standing because she “failed to allege that she is a competitor in the doll and toy figure industry, or that she has any other direct stake in using Applicant’s RAPUNZEL mark in a descriptive or generic manner.”

The Board found Applicant’s arguments unconvincing and, in its ruling pointed out that “although being a competitor is a well-established basis for alleging and proving standing… Opposer is not required to allege that she is a competitor.”  Instead, the Board found that Professor Curtin’s status as a consumer of dolls and toy figurines provided her with sufficient standing as “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.”

As a general consumer of dolls, the Board felt that Professor Curtin established a direct interest in opposing the mark and satisfied the “liberal threshold” for standing established in the Federal Circuit case Ritchie v. Simpson, 50 USPQ2d 1023 (Fed. Cir. 1999). In Ritchie, the Federal Circuit stated, “[i]n no case has this court ever held that one must havea specific commercial interest, not shared by the general public, in order to have standing as an opposer… 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.” Turning to the facts of Curtin, the Board put it simply: “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.”

Interestingly, the Board’s Curtin decision made no mention of the Supreme Court case Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014). Lexmark involved a different Lanham Act claim (false advertising) and clarified that standing in Lanham Act cases requires a plaintiff to “come within a zone of interest.”  The Court in Lexmark placed great importance on the plain text of the Lanham Act, noting that in Section 45, the Act explicitly states that 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. . . [and] to protect persons engaged in such commerce against unfair competition. . .” 15 U.S.C. 1127 (emphasis added). Ignoring Lexmark, the Board in Curtin relied on the Federal Circuit’s ruling in Ritchie and emphasized that, given the particular facts of Curtin, “Opposer is not required to allege that she is a competitor in the doll and toy figure industry to support her claims that the applied-for mark fails to function as a trademark, or is merely descriptive of or generic for the identified goods.”

The Board’s opinion strongly suggests that it maintains a very liberal view on what a party must do to establish standing in trademark opposition or cancellation proceedings. As a result, the Board is likely to see an uptick in these proceedings, given its broad interpretation and application of the standing requirement. The cost of these proceedings, however, may balance things out.

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