A recent TTAB decision, Curtin v. United Trademark Holdings, Inc. (TTAB 2018), allowed a consumer of the products at issue to assert standing to oppose the registration of the mark RAPUNZEL for dolls, based on the consumer’s allegations of consumer harm. The TTAB held that there is no requirement that one has a commercial interest or be a competitor of the applicant for standing.
Companies who seek to register marks that arguably are descriptive or generic now may face expanded chances for opposition to their registration of such marks.
The Trademark Trial and Appeal Board hears opposition and cancellation proceedings regarding trademark applications and registrations.
Parties who believe they will be damaged by a registration can file an opposition to an application or file a petition to cancel an existing registration. 15 U.S.C. §§ 1063, 1064. But to oppose or cancel an opposer or petitioner must show standing – that he or she has a concrete interest in the proceeding and a reasonable basis to believe they will be damaged. Generally, that means competitors in the same or related field.
Rebecca Curtin is both a professor of law and a mother who purchases dolls and toy figures for her daughter, including those which feature fairy tale characters. United Trademarks Holdings applied to register the mark RAPUNZEL for dolls and toy figures.
Curtin filed an opposition, alleging that Rapunzel is a well-known fairy tale character (going back at least as the Brothers Grimm publication in 1812). She alleged that allowing registration of the name would deny her and other consumers access to merchandise, including already existing merchandise, that depicts this character. The restriction on competition would then lead to increased cost of such toys.
That was sufficient for her, the TTAB said, to have standing to oppose. The TTAB noted that under Federal Circuit precedent, all that is required is that the party has a “real interest in the proceeding as well as a reasonable basis for its belief of damage.” The fact that many other consumers might also have the same interest was not relevant – what is important is that the Opposer herself have such an interest, even if shared by many others.
The TTAB also noted a 1978 case that identified two interests that consumers have in preventing registration of descriptive or generic terms:
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.” (citing to In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978))
While the first part of the citation supports Curtin’s claim of standing, the second part suggests a possible even broader basis for consumer standing to file opposition or cancellation proceedings.
It remains to be seen whether the Curtin decision will be upheld on appeal or will generate more opposition proceedings than previously.
Opposition and cancellation proceedings can be lengthy and expensive, and generally consumers would not be willing to engage in them. Still, trademark applicants who seek to file on marks that are arguably generic or descriptive should be aware that the chances of being opposed may have increased.