The Board has decided to take a second look at the issue of
opposer's entitlement to bring a statutory cause of action in
the RAPUNZEL trademark opposition. Opposer Rebecca
Curtin, a professor at Suffolk University Law School in Boston,
alleges that the proposed mark fails to function as a trademark
under Sections 1, 2, and 45 of the Trademark Act on the grounds
that it is purely informational and highly descriptive, if not
generic, for the goods. Applicant United previously moved to
dismiss on that ground that Professor Curtin lacked standing
because she is not a competitor and "has not used the mark in
connection with the manufacture or sale of dolls."
[TTABlogged
here]. The Board disagreed, observing that "[c]onsumers,
like competitors, may have a real interest in keeping merely
descriptive or generic words in the public domain."
Rebecca Curtin v. United Trademark Holdings, Inc.,
Opposition No. 91241083 (December 28, 2018) [not
precedential].
In April 2021, Professor Curtin moved for partial summary judgment on the "entitlement" claim, but the Board has denied the motion because "genuine disputes of material fact remain for trials" regarding that issue. [pdf here].
The Professor maintained that she has a real interest in the
proceeding: she is "a mother of a young girl who has purchased
and continues to purchase dolls, including fairy tale dolls,"
and therefore she and other consumers will be damaged if the mark
is registered because they "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."
The Board observed that Lexmark provides the applicable standard for determining whether a party is entitled to bring a statutory cause of action.
The Board concluded that, in light of recent case law, it is "appropriate to revisit this issue." It therefore bifurcated the proceeding into two phases: the first dealing with the issue of Professor Curtin's entitlement to bring a statutory cause of action, and the second phase (if necessary) dealing with the merits.
Read comments and post your comment here.
TTABlogger comment: Suppose the Board rules in favor of Professor Curtin on all the issues. If the applicant appeals that decision, will it have Article III standing? See the CAFC's recent Brooklyn Brew Shop decision [TTABlogged here] in which the CAFC made clear that Article III standing requires a different (and higher) standard than entitlement to a statutory cause of action before an administrative tribunal.
Text Copyright John L. Welch 2021.
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