By: John M. Nading, Ashley H. Joyce, and Devika Persaud 

In a sign of a potentially liberalizing trend for standing at the U.S. Trademark Trial and Appeal Board, the Board recently ruled that a consumer had standing to oppose a company’s application for the trademark RAPUNZEL for dolls and toy figures.  Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (TTAB Dec. 28, 2018).

Applicant United Trademark Holdings, Inc. had argued that Opposer Rebecca Curtin, a law professor and “mother of a young girl,” lacked standing because she failed to allege she was a competitor in the doll and toy figure industry or had any other direct stake in using Applicant’s RAPUNZEL mark in a descriptive or generic manner.  The Board found, however, that Opposer’s allegations were sufficient to establish a direct and personal stake in the outcome of the proceeding and that her belief of damage had a reasonable basis in fact such that she was not a “mere intermeddler.”  Summarizing her allegations, the Board observed that Opposer: “is a consumer of dolls and toy figures of fairytale characters, including ‘Rapunzel,’ that she has purchased and continues to purchase said goods, and that registration of the applied-for mark by Applicant would constrain the marketplace of such goods sold under the name ‘Rapunzel,’ raise prices of ‘Rapunzel’ dolls and toys figure, and deny consumers, such as herself, the ability to purchase ‘Rapunzel’ dolls offered by other manufacturers.”  Id. at 7.

The Board remarked that “[c]onsumers, 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.’”  Id. at 9 (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978)).  Indeed, while it is well-established that standing exists where a competitor needs to use a particular designation to describe its own goods, more cases are emerging to support claims by consumers who are not industry competitors.

In the widely-cited decision on standing, Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999), the opposer had alleged he would be damaged by the registration of marks for O.J. SIMPSON and THE JUICE because the marks disparaged his family values.  The Board found that opposer had standing based on his real interest in the issue and his belief being reasonable, stating that an opposer need not have a specific commercial interest, not shared by the general public, in order to have standing.  Id. at 1096.  The Ritchie decision has been criticized as putting an opposer’s moral views at issue before the Board—and possibly throwing open the door for other claims based on the morality of an applicant.

And a few years later, in McDermott v. San Francisco Women’s Motorcycle Contingent, 81 USPQ2d 1212, 2006 WL 2682345 (TTAB 2006), aff’d, 240 Fed. Appx. 865 (Fed. Cir. 2007)), the Board seemed to reign back in the standard.  There, opposer had claimed that registration of applicant’s mark DYKES ON BIKES would be a violation of his civil rights, asserting standing under Ritchie’s broad definition of a “real interest” in the proceedings.  But the Board found (and the Federal Circuit later affirmed) that the opposer did not satisfy the second prong required for standing because he failed to show he had a “reasonable” basis for his belief of damage, merely pleading his subjective belief that he was personally offended without offering objective evidence that this belief was shared by others.

Yet the trend appears to be toward a relaxation of standing requirements and allowing proceedings by consumers to move forward before the Board.  So is this a sign of a liberalizing trend for standing at the Board?  And will there be more consumer-initiated proceedings before the Board?