In an interesting case pending before the TTAB, law students from the Suffolk University IP and Entrepreneurship Clinic have opposed an application filed by United Trademark Holdings, Inc. to register RAPUNZEL as a trademark for dolls and toy figures. The students, led by clinic director Loletta “Lolita” Darden, represent Professor Rebecca Curtin, a trademark law professor and mother of a young girl who has purchased dolls. The Salt Lake City firm of Workman Nydegger is co-counsel in the case.
According to the Notice of Opposition, the Grimm Brothers are widely credited with the modern adaptation of the Rapunzel fairy tale in 1812, and the roots of the story extend much further back than that. For example, the Persian epic poem Shanahmeh, which was written between 977 and 1010 C.E., features a character named Rudaba who allows her lover to climb her hair up to a tower. There is evidence of adaptations of the Rapunzel theme going back to the Neolithic era, potentially 6,000 years old.
After detailing the history of the Rapunzel story, the Notice of Opposition lays out the gravamen of the trademark dispute:
The public knows Rapunzel as the character name of a fictional fairy tale character, not as a source indicator. Trademark protection may be precluded in those instances where the proposed mark does not function as a source indicator. In the case of Rapunzel, consumers are accustomed to encountering the name in an associational or information manner unconnected with any goods/services. Here, Applicant is attempting to snatch the name Rapunzel out of the public domain, which would prevent others from referring to their Rapunzel dolls, characters and toy figures by their true name — Rapunzel. As a result, the Board should deny registration of the opposed mark….
The law students created an online petition, titled “Free Rapunzel From the Trademark Tower,” to solicit comments and support, and attached a copy of it to their opposition papers. As of today, the petition lists over 400 supporters. It is unclear what, if any, evidentiary value the petition will have, but interestingly the TTAB considered it in ascertaining the plausibility of Professor Curtin’s allegations in connection with standing.
Can the real party in interest please stand up?
The law students have won an important initial skirmish, as to whether Professor Curtin has standing to oppose the application even though she is not a manufacturer or seller of dolls herself.
The TTAB found that Curtin “has sufficiently alleged that she has a direct and personal stake in the outcome of the proceeding and that her belief of damage has a reasonable basis in fact” in light of her allegations that, as a purchaser of dolls, she would be forced to pay higher prices for Rapunzel dolls and toy figures and would be deprived of the opportunity to purchase them from manufacturers other than the trademark applicant.
Clearing the standing hurdle is a significant victory since, somewhat surprisingly, no doll maker (or any other party for that matter) has opposed the application.
Are Curtin’s claims viable?
United Trademark Holdings also moved to dismiss the opposition on substantive grounds. The TTAB ruled as follows:
- Curtin’s claim of functionality under Section 2(e)(5) was dismissed with prejudice, as a word mark cannot be functional.
- Curtin’s claim of fraud was dismissed, with leave to replead; a proposed amended claim was filed on January 22, 2019.
- Curtin’s claim of genericness was dismissed, with leave to replead; a proposed amended claim was filed on January 22, 2019.
- Curtin’s claim that RAPUNZEL fails to function as a trademark may go forward.
- Curtin’s claim that RAPUNZEL is merely descriptive may go forward.
These holdings illustrate that, in a nontraditional case such as this one, the usual theories are sometimes an uncomfortable fit. It will be interesting to see what happens next, and whether United Trademark Holdings will move to dismiss the Second Amended Notice of Opposition.
The bigger picture
United Trademark Holdings already owns a trademark registration for ZOMBIE RAPUNZEL in connection with dolls, and I found ZOMBIE RAPUNZEL branded dolls on Amazon as part of the “Once Upon a Zombie” series. Curtin and her team apparently do not consider this a problem, and in the Second Amended Notice of Opposition characterize the ZOMBIE component as a “distinguishing element” that is absent from the present application for RAPUNZEL.
United Trademark Holdings owns trademark registrations and applications for several other marks resembling character names, some including “distinguishing elements” and some not, including:
- ZOMBIE TINKERBELL
- ZOMBIE SNOW QUEEN
- ZOMBIE PETER PAN
- TEEN CINDERELLA
- TEEN SNOW WHITE
- TEEN PETER PAN
- TEEN SLEEPING BEAUTY
- THE SNOW QUEEN
- SNOW MAIDEN
- 1001 ARABIAN NIGHTS
You get the idea. The present case is not the first opposition filed against United Trademark Holdings, and it is unlikely to be the last.
Closing thoughts on opportunities for law students
I spoke to Lolita Darden about the case, and why the Intellectual Property & Entrepreneurship Clinic (IPEC) at Suffolk Law School decided to get involved. Darden explained that RAPUNZEL has been in the public domain for centuries, if not millennia, and that it would be unfair for one company to own the rights in that name. She sees IPEC’s role as standing up for trademark rights as important, and points out that no one else is looking out for the public interest in this case.
While IPEC allows students in their last year of law school to take primary responsibility for live client matters, under the close supervision of experienced practitioners, the TTAB may be a difficult forum for students to get a taste of what it is really like to litigate a trademark case given the amount of time it typically takes to resolve a TTAB case on the merits.
That said, working on cases like this one is a great opportunity for law students. In what other law school class do you get to cite the Brothers Grimm, Ferdowski, and Saint Barbara and start an online petition? The parties are well-represented on both sides, and it will be an interesting case to watch.
Even if RAPUNZEL were registered, the defense under Section 33 (b)(4) of the Lanham Act would seem to apply: “That the use of the . . .term . . . charged to be an infringement is a use, otherwise than as a mark, . . . of a term . . . which is descriptive of and used fairly and in good faith only to describe the goods. . . of such party . . . . “
yeah IPEC should look into this in details , it said above character came several changes across years