Publication

Client Alert: #FreeRapunzel: Trademark Trial and Appeal Board Loosens Standing Requirements

In denying a doll maker’s motion to dismiss a mom’s opposition to the registration of the trademark RAPUNZEL, the Trademark Trial and Appeal Board (TTAB) has relaxed the already liberal standard for what constitutes a “real interest” required for standing.

After a trademark application is approved by the U.S. Patent & Trademark Office examiners, it is published so that third parties who object to the mark’s registration have an opportunity to oppose. After a mark registers, third parties may petition to cancel the registration. A majority of these oppositions and petitions to cancel are based on the opposer’s allegations that they own rights in a trademark that is confusingly similar to the applied-for mark.

A smaller but still significant number of trademark oppositions and cancellations, however, allege that the applied-for mark is merely descriptive or generic, i.e., that it does not function to identify the source of the applicant’s goods or services.  The U.S. Court of Appeals for the Federal Circuit, which primarily hears appeals of TTAB decisions, has set out a liberal threshold for trademark oppositions, where the opposer has “a real interest in the proceeding” and “a reasonable basis for its belief of damage.”  Historically, with respect to descriptiveness or genericness claims, the TTAB has interpreted this standard to mean that the opposer must be a competitor in the applicant’s industry, which might have a direct stake in using the applicant’s mark to describe its own goods or services. 

On December 28, 2018, however, the TTAB denied a motion to dismiss in Curtin v. United Trademark Holdings, Inc., Opp. No. 91241083.  United Trademark Holdings, Inc. applied to register the mark RAPUNZEL for dolls.  Curtin is a professor of trademark law at Suffolk University who started an online petition called #FreeRapunzel alleging that the RAPUNZEL mark is merely descriptive and generic. Critically, however, Curtin is also mother to a young daughter who is a consumer of dolls and other fairytale toys. Her opposition alleged that allowing United Trademark Holdings to register the mark would deny her access to other Rapunzel dolls, and increase her costs for other Rapunzel merchandise. The TTAB agreed, holding that Curtin sufficiently alleged a real interest in the proceeding and reasonable belief of damage, and that “[c]onsumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain…”

This represents a significant step toward allowing nearly anyone to plead the “real interest” necessary for standing. Applicants seeking to register terms that might be considered arguably descriptive or generic should be aware that the potential field of opposers has now exploded.  It remains to be seen whether a significant number of consumers (i.e., beyond those consumers who also happen to be trademark law professors) will actually oppose trademarks, given the somewhat technical nature of the proceedings.  However, it may present another avenue for consumers with grievances to create headaches for businesses, particularly given that a petition to cancel a trademark registration alleging genericness can be filed at any time.

If you have any questions concerning this or any other issue concerning your business’s trademark portfolio, do not hesitate to contact Kate Dennis Nye or another member of Neal Gerber Eisenberg’s Intellectual Property practice group.