“Rapunzel, Rapunzel, let down your hair, so that I may climb thy golden stair . . .”
Almost everyone is familiar with the childhood fairy tale “Rapunzel.” A young girl with beautiful, long blonde hair is locked in a tower by a witch. The only way in and out of the doorless tower is through a window at the top. One day, a prince comes to the tower and Rapunzel and the prince fall in love. Rapunzel offers her long hair to serve as a ladder, and the two manage to escape the tower and live happily ever after.
Due to the fairy tale’s notoriety, many companies have created reproductions of the “Rapunzel” story and its characters—ranging from children’s books and movies to toys and dolls. One such company, a toy maker by the name of United Trademark Holdings, Inc. (UTH), has produced a series of princess children’s toys, including a Rapunzel doll. This article examines a recent trademark opposition, Curtin v. United Trademark Holdings, Inc.,1 wherein the Trademark Trial and Appeal Board (TTAB or the Board) has ruled that a mere consumer of dolls and toys is not entitled to a statutory cause of action (formerly called “standing”) to oppose a trademark application for RAPUNZEL for “dolls; toy figures.”
The RAPUNZEL Trademark Application and Professor Curtin’s Opposition
On November 20, 2017, UTH filed a trademark application at the U.S. Patent and Trademark Office (USPTO) to register RAPUNZEL in standard character form for “dolls; toy figures.”2 While U.S. trademark rights arise out of use of the mark in interstate commerce, not registration, there are many benefits to obtaining a federal trademark registration. These benefits include the right to use the registration symbol ® with the mark, recordation of the registration at the U.S. Customs and Border Protection to stop the importation of goods bearing an infringing mark, the right to bring a lawsuit in federal court, and a legal presumption that the registrant owns the trademark and has the exclusive right to use it in connection with the goods and services recited in the registration.3
When UTH’s RAPUNZEL application was published for opposition, Rebecca Curtin, a law professor at Suffolk University Law School in Boston, filed a notice of opposition at the TTAB. The notice of opposition (as amended) alleged that RAPUNZEL for “dolls; toy figures” should be refused trademark registration for (1) failure to function as a trademark,4 (2) mere descriptiveness,5 (3) genericness, (4) fraud, and (5) functionality.6 At the crux of her notice of opposition is the issue of whether one company may have the exclusive rights to call a toy doll RAPUNZEL, particularly when the doll represents the well-known fairy-tale character.
UTH’s Motion to Dismiss
Instead of formally answering the notice of opposition, UTH timely filed a motion to dismiss on the ground that Professor Curtin lacked standing to bring the opposition. In particular, UTH asserted that Professor Curtin is merely a consumer and is not a toy manufacturer and not a competitor.7 In fact, UTH accused Professor Curtin of using the opposition proceeding as an academic exercise for the law school’s IP clinic program.
In response to the motion to dismiss, Professor Curtin argued that, even though she is not a manufacturer of children’s toys, she has standing to bring the opposition because—as a consumer of fairy-tale-themed products—she would be irreparably harmed by registration of the subject mark. She cited two cases in which opposers were deemed to have standing despite the fact that they were not competitors in the relevant industries. In Ritchie v. Simpson, the plaintiff had standing to oppose a scandalous mark because opposer Ritchie’s view regarding O.J. Simpson was that of the affected public.8 Similarly, in the nonprecedential decision of Flanders v. Dimarzio, Inc., a musician/consumer had standing to petition for cancellation of a trademark registration for cream-colored guitar picks because he was a purchaser of the product.9
Here, Professor Curtin contended:
Instead of being able to identify goods by their name, registration of the subject mark will force consumers to sift through less known, and most likely wordy, descriptions of dolls and toy figures to find those associated with the Rapunzel fairytale character. This will in effect force consumers to stop relying on the doll’s generic name and resort to vague and ambiguous descriptors such as “Maiden in the Tower” or the “Long-haired Maiden” to identify Rapunzel goods. This directly contravenes an express purpose of the Trademark Act.10
As evidence that the purchasing interests of consumers would be negatively affected by registration of the RAPUNZEL mark—and thus proof of her reasonable basis for belief in harm—Professor Curtin submitted an online petition, signed by over 175 individuals, attesting that they would be harmed by the mark’s registration. In addition, she submitted affidavits from a well-known folklorist and a nonprofit organization supporting literary creativity, voicing their concerns over registration of RAPUNZEL as a trademark.
In reply, UTH argued that the cases cited by Professor Curtin are distinguishable from the case at bar. For instance, in the Flanders opposition, the opposer “obtained distinct declarations from more than 60 separate individuals within [the relevant community] to show that [these individuals] shared his belief of damage.”11 UTH maintained that, in contrast, the petition signed by over 175 individuals in this case “lack[ed] the same nexus to the goods at issue” since the signatories had the option of signing anonymously and there was “no attestation that [the] signatories are in fact consumers of dolls and toy figures.”12
On December 28, 2018, the TTAB ruled on UTH’s motion to dismiss and found that Professor Curtin sufficiently alleged standing to pursue her claims in the opposition: “Consumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain . . . .”13
TTAB Considers Standard for Entitlement to a Statutory Cause of Action
Professor Curtin then moved for partial summary judgment on her entitlement to a statutory cause of action (as well as her claims that the applied-for mark fails to function as a source indicator, is merely descriptive, and is generic). She maintained that, as “a mother of a young girl who has purchased and continues to purchase dolls, including fairy tale dolls,” she (and other consumers) “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.”14 In support of her motion, Professor Curtin averred that she purchases children’s toys and dolls for her daughter, and she provided as evidence some of the history of the “Rapunzel” story and third-party use of RAPUNZEL for movies and toys.
In response, UTH reiterated that Professor Curtin is not a competitor with regard to the goods at issue, and asserted that she is using the opposition proceeding as an academic exercise for students in Suffolk Law’s IP clinic.15
The Board denied the summary judgment motion, finding that (in light of recent case law) there were genuine issues of material fact remaining for trial with respect to Professor Curtin’s entitlement to bring a statutory cause of action.16 Specifically:
[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.17
The TTAB declined to consider the merits of her motion pertaining to the failure to function, descriptiveness, and genericness claims. Instead, the Board bifurcated the issues in the case. Accordingly, the first phase of the opposition focused solely on Professor Curtin’s entitlement to a statutory cause of action. If Professor Curtin could successfully establish her entitlement to a statutory cause of action, the TTAB would then reset the trial schedule to hear the substantive claims in the opposition.
Discovery and Briefing
As the opposer, Professor Curtin bore the burden of proof regarding entitlement to a statutory cause of action. UTH submitted no evidence or testimony during this first phase of the opposition.18 Professor Curtin provided a declaration that included dozens of printouts evidencing her purchases of fairy-tale toys, as well as a photograph of her daughter dressed as Princess Rapunzel for Halloween.19 She also made of record declarations of two third-party toy manufacturers attesting that they would not be able to “fairly compete in the market for princess dolls” if the Rapunzel application were approved for registration.20
Professor Curtin argued that, as a consumer of toys and dolls, she is entitled to a statutory cause of action because she would be damaged: (1) “by the loss of the benefits of competition in the market providing her and other consumers with the Rapunzel-themed products that they want to buy” and (2) “from increased search costs and time spent seeking Rapunzel-themed products.”21 UTH responded that merely being a consumer of the relevant products is not enough to establish a “real interest” in the proceeding or demonstrate a belief of damage that has a “reasonable basis in fact.”22 At the request of UTH, an oral hearing was held on November 15, 2022.
On May 4, 2023, the Board issued a precedential decision dismissing the notice of opposition and ruling that Professor Curtin failed to establish her entitlement to a statutory cause of action.23 Pointedly, the Board observed that mere consumers “are generally not statutorily entitled to oppose registration under 115 U.S.C. § 1063.”24 Relying on the U.S. Supreme Court’s decision in Lexmark, the TTAB first considered whether the claims of a mere consumer fall within the “zone of interests” protected by the relevant provisions of the Trademark Act. According to Lexmark, “[i]dentifying the interests protected by the [Trademark] Act requires no guesswork.”25 Indeed, section 45 sets forth a statement of the intent of the Trademark Act:
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 entered into between the United States and foreign nations.26
Lexmark held that “a plaintiff must allege an injury to a commercial interest in reputation or sales” to fall within the “zone of interests” in a suit under section 43(a)(1) of the Trademark Act.27 It saw no reason why this same requirement would not apply to an opposition proceeding under section 13.
The Board distinguished the Ritchie case from the one at issue because Ritchie pertained to a section of the Trademark Act barring registration of “immoral” or “scandalous” marks, a provision that was held to be unconstitutional by the Supreme Court in Iancu v. Brunetti.28 The Board distinguished Flanders by pointing out that that decision was nonprecedential, and “to the extent any non-precedential interlocutory decisions . . . conflict with current Supreme Court or Federal Circuit caselaw, [it] decline[s] to follow them.”29
Here, Professor Curtin’s alleged damage was too remote and speculative for purposes of establishing entitlement to oppose UTH’s registration of the RAPUNZEL mark. The Supreme Court in Lexmark stated that “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.”30 The Board reasoned that Professor Curtin’s alleged damage was even more remote.
Moreover, the Board believed that Professor Curtin assumed, with no evidence, that UTH would 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.’”31 The Board noted that while registration of the RAPUNZEL mark would preclude third parties from using RAPUNZEL as a source identifier for toys and dolls, sellers of these products still had other defenses and protections available under 15 U.S.C. § 1115(b)(4)32 and under the doctrine of fair use.
Finding that Professor Curtin is not a competitor in the toy manufacturing industry, and therefore had no commercial interest in reputation or sales, the Board dismissed the case without considering the merits of the notice of opposition. On July 5, 2023, Professor Curtin filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit.33 The appeal is currently pending.
A party who plans to bring a claim before the TTAB should think twice as to whether entitlement to a statutory cause of action can be established. The Board effectively “overruled” the Federal Circuit’s decision in Ritchie v. Simpson, dubiously concluding that because the Supreme Court in Brunetti deemed the “immoral” or “scandalous” provision of the Trademark Act unconstitutional, Ritchie is no longer good law. Accordingly, parties appearing before the TTAB should be aware that entitlement to a statutory cause of action will likely extend only to plaintiffs that will be impacted commercially in reputation or sales by the outcome of the decision before the Board. Those that cannot meet this standard might consider another avenue of attack on pending trademark applications, for instance, a letter of protest.
- Opposition No. 91241083 (T.T.A.B. filed May 9, 2018),
- U.S. Trademark Application Serial No. 87/690,863 (filed Nov. 20, 2017).
- Why Register Your Trademark?, U.S. Pat. & Trademark Off.,
https://www.uspto.gov/trademarks/basics/why-register-your-trademark last modified May 11, 2023).
- 15 U.S.C. §§ 1051, 1052, 1127.
- Id. § 1052(e)(1).
- Id. § 1052(e)(5).
- Motion to Dismiss Notice of Opposition Pursuant to Fed. R. Civ. P. 12(b)(6) for Lack of Standing, Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083, 4 TTABVUE (T.T.A.B. June 18, 2018).
- 170 F.3d 1092, 1095 (Fed. Cir. 1999) (an opposer “must have a ‘real interest’ in the proceedings and must have a ‘reasonable’ basis for his belief of damage” to bring an opposition).
- Cancellation No. 92064181, 2017 WL 3718339 (T.T.A.B. July 25, 2017) (not precedential).
- Brief in Response to Applicant’s Renewed 12(b)(6) Motion to Dismiss for Lack of Standing, Curtin, Opposition No. 91241083, 10 TTABVUE 6 (T.T.A.B. Aug. 14, 2018) (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163–64 (1995)).
- Applicant’s Reply Brief in Support of Motion to Dismiss Amended Complaint, Curtin, Opposition No. 91241083, 11 TTABVUE 4 (T.T.A.B. Aug. 31, 2018).
- Curtin, Opposition No. 91241083, 12 TTABVUE 9 (T.T.A.B. Dec. 28, 2018).
- Opposer’s Renewed Motion for Summary Judgment, Curtin, Opposition No. 91241083, 43 TTABVUE 7–8 (T.T.A.B. Apr. 6, 2021).
- Applicant’s Response to Amended Renewed Motion for Summary Judgment, Curtin, Opposition No. 91241083, 46 TTABVUE 4 (T.T.A.B. May 25, 2021).
- Curtin, Opposition No. 91241083, 49 TTABVUE 6 (T.T.A.B. Oct. 19, 2021).
- Id. (citing Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303–04 (Fed. Cir. 2020); and Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 1274 (Fed. Cir. 2014)).
- Applicant’s Testimony Phase One Notice of Reliance, Curtin, Opposition No. 91241083, 54 TTABVUE 2 (T.T.A.B. Feb. 21, 2022).
- Testimony Declaration of Rebecca Curtin, Curtin, Opposition No. 91241083, TTABVUE 11–59 (T.T.A.B. Dec. 23, 2021).
- Opposer’s Renewed Motion for Summary Judgment, supra note 14, at 399–403.
- Opposer’s Trial Brief, Curtin, Opposition No. 91241083, 55 TTABVUE 11–12 (T.T.A.B. June 6, 2022).
- Applicant’s Trial Brief, Curtin, Opposition No. 91241083, 58 TTABVUE (T.T.A.B. Aug. 5, 2022).
- Curtin, Opposition No. 91241083, 69 TTABVUE (T.T.A.B. May 4, 2023).
- Id. at 6.
- Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 131
- 15 U.S.C. § 1127 (emphasis added).
- Lexmark, 572 U.S. at 119 (emphasis added).
- 139 S. Ct. 2294 (2019).
- Curtin, Opposition No. 91241083, 69 TTABVUE 11 n.9 (T.T.A.B. May 4, 2023).
- Id. at 12 (quoting Lexmark, 572 U.S. at 134).
- 15 U.S.C. § 1115(b)(4) (“[C]onclusive evidence of the right to use the registered mark . . . shall be subject to the following defenses or defects: . . .[U]se of the name, term, or device . . . is descriptive of and used fairly and in good faith only to describe the goods . . . of such party . . . .”).
- Opposer’s Notice of Appeal, Curtin, Opposition No. 91241083, 70 TTABVUE
(T.T.A.B. July 5, 2023).
©2023. Published in Landslide, Vol. 16, No. 1, September/October 2023, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.