As we highlighted on Monday, three cases being argued next month at the Federal Circuit attracted amicus briefs. One of these cases is Curtin v. United Trademark Holdings, Inc. In it, Rebecca Curtin appeals a judgment of the Trademark Trial and Appeal Board, which concluded that she is not entitled to oppose UTH’s application to register the mark RAPUNZEL under a test known as the zone of interests framework. This is our argument preview.
In her opening brief, Curtin argued that the Federal Circuit’s precedent articulates “the standards necessary for someone to oppose the registration of a trademark.” Under this precedent, Curtin argued, “the starting point for determining whether a person may oppose registration is the language of Section 13 of the Lanham Act.” Curtin contended that she satisfies the statutory requirement because she is “a person ‘who believes that [s]he would be damaged by the registration of a mark.'” Curtin explained that the other two requirements to oppose a trademark are that the “opposer must have a real interest in the proceeding and have a reasonable basis for the opposer’s belief.” She maintained she “easily satisfies” these requirements.
Curtin argued that the Trademark Trial and Appeal Board erred in adopting a different precedential framework, “requiring an opposer to show its interests fall within the zone of interests protected by the statute and that her injury is proximately caused by a violation of the statute.” According to Curtin, “[a]s an administrative proceeding, a trademark opposition is not subject to . . . prudential standing requirements,” which includes the zone-of-interests test. Furthermore, she argued, even if the zone of interest framework did apply to oppositions, “the Board further erred in concluding that Curtin does not satisfy” the requirement. According to Curtin, “a consumer’s interest in preventing the registration of a generic trademark falls well within the zone of interests.”
In its response brief, United Trademark Holdings argued that “Curtin has not met the burden of demonstrating that she is entitled to a statutory cause of action to oppose UTH’s trademark application” under the zone of interests framework. According to UTH, “contrary to Curtin’s assertions, the Federal Circuit and Board have both established that . . . the proper standard to evaluate whether a petitioner has established entitlement to oppose a trademark application” is the zone of interests test.
UTH critiqued Curtin’s argument to adopt a different standard as “misguided.” According to UTH, the “Supreme Court and Federal Circuit have effectively overruled the standard” she presents. Additionally, UTH continued, the claim in the prior case was based on a section of the statute that “has since been deemed unconstitutional.” Under the proper precedential test, UTH argued, “Curtin has not demonstrated that she has a real interest in this proceeding.” UTH said this is so because “she is merely a consumer of dolls and lacks any commercial interest.” Moreover, UTH claimed, “Curtin has also failed to show that her belief of damage is reasonable.” According to UTH, the harms Curtin “asserts are future harms that are purely speculative and unsupported by evidence.”
In her reply brief, Curtin argued UTH “largely ignore[s] significant points in Curtin’s opening brief.” According to Curtin, UTH, moreover, primarily asserts that the zone of interests test “applies to opposition proceedings.” But, Curtin argued, the case that UTH cites deals with “lawsuits in federal court” and “specifically false-advertising lawsuits in federal court.” Furthermore, Curtin said, neither a case addressing the zone of interests framework nor the Federal Circuit’s “cases have altered the standards for assessing whether a person may oppose the registration of a trademark.” But, even if UTH’s suggested framework does apply, Curtin argued, her “challenge to UTH’s registration falls within the zone of interests protected by opposition proceedings under the Lanham Act, and her injuries would be proximately caused by a violation of the Act.” According to UTH’s framework, she also argued, an “‘intervening step’ of harm to another ‘is not fatal to the showing of proximate causation required by the statute.’”
Two amicus briefs were filed. One supports reversal; one supports affirmance.
The George Washington University Law School Intellectual Property & Technology Law Clinic filed an amicus brief in support of reversal. The brief argued that “a consumer should have statutory standing to oppose the registration of a generic term since this interest is uniquely within the ‘zone of interests’ protected by” the statute. Furthermore, the brief argued, precedent “recognizes non-commercial interests as a means of establishing an entitlement to a statutory cause of action.”
The Director of the Patent and Trademark Office filed an amicus brief in support of affirmance. The PTO argued the “Board correctly decided that Curtin is not among the class of people authorized by statute to oppose the registration of UTH’s mark as generic or merely descriptive.” Additionally, the PTO indicated, since the case is not being heard on the merits, “the Board’s decision to dismiss Curtin’s opposition proceeding should be affirmed regardless of the merits of her opposition.”
Oral argument is scheduled to be heard on Wednesday, March 5. We will keep track of this case and report on any developments.