Earlier this month, the Federal Circuit heard oral agreement in Curtin v. United Trademark Holdings, Inc. We have been following this case because it attracted an amicus brief. In it, the Federal Circuit is reviewing a judgment of the Trademark Trial and Appeal Board, which concluded that Rebecca Curtin is not entitled to challenge United Trademark Holding’s application to register the mark RAPUNZEL under a test known as the “zone of interests” framework. Federal Circuit Judges Taranto and Hughes and the Chief Judge of the Court of International Trade, Mark Barnett, who sat by designation, heard the oral argument. This is our argument recap.
Ryan Morris appeared on behalf of Rebecca Curtin. He argued the Board initially and correctly applied Federal Circuit law to determine that Professor Curtin is “entitled to oppose” the trademark. He explained “the Board found a real interest in the proceeding.” But, he continued, “after bifurcating the case for trial, the court then changed [its] position” and applied a different test to conclude that she “is not entitled to oppose registration of the trademark.”
A judge asked Morris to explain why “language that authorizes certain people to make certain challenges” to trademark applications may “be subject to a different kind of analysis,” in particular that “you have to be within the zone of interests of the statute.” Morris responded by arguing that “there are particular interests that motivate . . . the limits on who can participate in a variety of different actions.” And, he said, “there are limits” on “who can participate” in a proceeding before an administrative agency. He continued by arguing “what we’re talking about are the interests unique to those different bodies.”
According to Morris, however, “the language itself is ‘any person who would be harmed or believes they would be harmed may file a notice of opposition,'” which he argued is “very broad.”
Erik Pelton appeared on behalf of UTH. He began by arguing the “appellant here is a mere intermediary and does not have an entitlement to a cause of action to oppose the trademark application.” In particular, he suggested, “there is no authority for a purchaser or consumer to challenge a trademark.” According to Pelton, the relevant precedent “makes it clear” that the appellant, “a consumer of dolls, is not entitled to bring a cause of action.”
A judge suggested the “phrase ‘commercial interest'” is an “unhappy phrase” because “consumers have a commercial interest.” This judge suggested what may be more relevant is a seller’s commercial interest. In response, Pelton suggested that, under “the tenuous chain of events that appellant theorizes could happen if the registration were to issue, competitors would inherently be impacted as well.” He suggested that, in that situation, other manufacturers and sellers would have causes of action.
Sarah Craven appeared on behalf of the U.S. Patent and Trademark Office. Craven argued the “Board correctly applied” the zone of interest test “to a trademark opposition” proceeding “under the Federal Circuit’s case law.” She argued the relevant precedent “applies in cancellation proceedings and that the similarities, linguistic and functional, between cancellation proceedings and opposition proceedings mandate the same requirements.” Furthermore, she argued, “there’s no reason to distinguish cancellation and opposition” proceedings. According to Craven, moreover, “there are ways that consumers can participate in the examination process.” She explained there are “letters of protest” that “Curtin could have filed, both before and after publication” of the application.
A judge asked what “would have happened if there had been a letter of protest?” In particular, the judge asked, “is the examiner free to ignore it?” Craven responded by arguing that, “if there had been a letter of protest” that showed “a prima facie case” of mere descriptiveness, then the letter “would have gone to the examiner.” According to Craven, “the examiner would have had jurisdiction then to consider the letter of protest.” After some back and forth, Craven explained that the agency also has “inherent authority . . . to reconsider decisions in cases where” the agency thinks that the mark does not meet the requirements of the statute.
In his rebuttal, Morris argued there is no disagreement “that a lot of this [case] comes down to the language of the statute.” He suggested that the question is “about limiting” that language “to the context of the agency–what matters to that particular body.” He argued “that’s the distinction” in the Federal Circuit’s case law. According to Morris, moreover, a “big part of the purpose” of the statute “is to protect the interest of consumers,” which includes “getting the products they want and seeking out the information that they want about competing products.” He argued that, “if you had a generic mark, essentially, you’re impacting consumers by taking away their ability to find out which products they want and how to get at those particular products.”
We will continue monitoring this case and report on developments.