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TTAB Rules Consumer Has Standing to Oppose Trademark Registration

Publications / Jan 07, 2019

TTAB Rules Consumer Has Standing to Oppose Trademark Registration

By Clyde Shuman

The Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office has ruled that an individual consumer had standing to oppose an application to register “Rapunzel” as a trademark, rejecting the argument that only a competitor could do so. In Rebecca Curtin v. United Trademark Holdings Inc., case number 91241083 (TTAB), the Board denied United Trademark Holdings’ motion to dismiss the opposition filed by law professor Rebecca Curtin, holding that private consumers have the right to file such cases.

Professor Curtin had filed a notice of opposition to the registration of the “Rapunzel” mark for use in connection with dolls and toy figures, arguing that the fairy tale name was too generic to be protected by trademark law. United Trademark Holdings moved to dismiss the opposition proceeding, arguing that Professor Curtin 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 the “Rapunzel” mark “in a descriptive or generic manner.” Accordingly, per United Trademark Holdings, Professor Curtin had failed to allege any “real interest” and “reasonable belief in damage,” required to maintain an opposition proceeding.

The Board disagreed, noting the Federal Circuit’s holding that standing required “both a real interest in the proceeding as well as a reasonable basis for its belief of damage.” To satisfy the “real interest” requirement, a petitioner must have “a legitimate personal interest in the opposition.” To satisfy the “reasonable basis” requirement, the petitioner’s belief of damage “must have a reasonable basis in fact.”

Here, Professor Curtin alleged that she was a teacher of trademark law, as well as a consumer who participates amongst other consumers in the marketplace for dolls and toy figures of fairytale characters, including Rapunzel (in this case, for her young daughter). She alleged further that, by allowing an individual private company to trademark the name of a famous fairy tale character in the public domain, she and other consumers would be denied access to healthy marketplace competition for products that represent the well-known fictional character, with a likely increase in the cost of goods associated with Rapunzel merchandise, given the lack of competition.

In view of the foregoing, the Board found that Professor Curtin had sufficiently alleged a direct and personal stake in the outcome of the proceeding and that her belief of damage had a reasonable basis in fact. The Board said, “Insofar as Opposer has alleged that she has purchased and continues to purchase goods identified by the names of fairytale characters, the Board is not persuaded by Applicant’s contention that Opposer has not differentiated herself from “any other potential consumer of dolls.”

With respect to the damage requirement, the Board said (citations omitted, emphasis added):
Moreover, although being a competitor who needs to use a particular designation to describe its own goods is a well-established basis for alleging and proving standing [,] 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.

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.”

The Board held that members of the consuming public may have a real interest in preventing exclusive appropriation of merely descriptive or generic terms by trademark owners. Thus, per the Board, if Professor Curtin is able to prove the merits of her allegations, “she is not a mere intermeddler, [but] has a real interest in this case, and [ ] has alleged a reasonable basis for her belief in damage resulting from Applicant’s registration of the applied-for mark.”

Notably, the Board’s order did not decide the merits of Professor Curtin’s opposition proceeding, but merely refused to dismiss her case. Opposition proceedings normally are filed by competing companies, who argue they will be harmed by registration of generic or descriptive marks which they would need to be able to use. By contrast, Professor Curtin argued that allowing registration of the “Rapunzel” mark would drive up the cost of dolls by reducing competition. Whether Professor Curtin’s argument will succeed on the merits has yet to be seen.

The Board also allowed Professor Curtin’s claim that the “Rapunzel” mark fails to function as a trademark, i.e., it is not a source indicator.

The Board did dismiss Professor Curtin’s claim under 15 U.S.C. § 1052(e)(5), which bars registration of wholly functional marks (e.g., grit-indicating color stripes on abrasive disks), saying the section had no bearing on an application to register a word mark. The Board also dismissed Professor Curtin’s fraud claim as insufficiently pleaded. The Board also dismissed her claim that the term “Rapunzel” is generic, finding that Professor Curtin had not alleged that consumers primarily understand the word “Rapunzel” to be the generic name or adjective for dolls and toy figures, the goods identified in the application. However, the Board allowed Professor Curtin until January 21, 2019 to submit a second amended notice of opposition with sufficiently pleaded fraud and genericness claims, failing which the proceeding shall move forward solely on the failure to function as a mark and mere descriptiveness claims.