In late May, the Federal Circuit issued its opinion in Curtin v. United Trademark Holdings, Inc., a trademark case we’ve been tracking because it attracted two amicus briefs. In this case, Curtin appealed a decision of the Trademark Trial and Appeal Board to dismiss her opposition after concluding she was not statutorily entitled to oppose a registration. In an opinion authored by Judge Hughes and joined by Judges Taranto and Barnett, the Federal Circuit affirmed the underlying decision. This is our opinion summary.
Because this appeal concerned whether Curtin was entitled under the Lanham Act to oppose a trademark registration, Judge Hughes began by giving an overview of the structure of the Lanham Act. Judge Hughes then provided the procedural and factual background of the case:
UTH sells dolls, including dolls with long blonde hair under the name Rapunzel. On November 20, 2017, UTH filed an application to register the RAPUNZEL trademark (Ser. No. 87/690,863), asserting use of the mark in commerce in connection with dolls and toy figures in International Class 28. J.A. 38–40. UTH’s application was approved by the USPTO examiner and published in the Official Gazette for opposition on April 10, 2018.
On May 9, 2018, Ms. Curtin filed an opposition under 15 U.S.C. § 1063 to UTH’s registration of the mark RAPUNZEL. Ms. Curtin first amended her opposition in July 2018. UTH moved to dismiss both oppositions, claiming Ms. Curtin did not have statutory standing to oppose UTH’s mark. This appeal arises from Ms. Curtin’s Second Amended Notice of Opposition filed on January 22, 2019, in which she opposed the RAPUNZEL mark as descriptive, generic, failing to function as a trademark, and for fraud in the application. Regarding her interest in bringing this opposition, Ms. Curtin alleged that, as a doll collector and mother to a young daughter, she is “a consumer who participates amongst other consumers in the marketplace for dolls and toy figures of fairytale characters, including Rapunzel.” Regarding the injury that justified her opposition, she claimed that “[she] and other consumers will be denied access to healthy marketplace competition for products that represent” Rapunzel if private companies are allowed “to trademark the name of a famous fairy tale character in the public domain.” She further alleged that “[she] and other consumers will also likely face an increased cost of goods associated with Rapunzel merchandise, given the lack of competition.” She stated her belief that registration of UTH’s mark “could chill the creation of new dolls and toys by fans of the fairytale, crowding out the substantial social benefit of having diverse interpreters of the fairy tale’s legacy,” and deny her and other consumers “access to classic, already existing, Rapunzel merchandise.” She included a petition with 432 signatures of those who shared her belief that registration of the RAPUNZEL mark would impact consumers’ ability to find Rapunzel dolls and adversely affect marketplace competition for Rapunzel dolls. UTH denied her allegations in its answer.
Ms. Curtin twice moved for partial summary judgment on the grounds that the RAPUNZEL mark is generic, descriptive, and fails to function as a trademark; the Board denied both motions. The Board bifurcated the opposition proceeding into two separate trial phases, with the first phase to focus solely on the issue of Ms. Curtin’s entitlement to a statutory cause of action, and, if necessary, a second phase to focus on the specific grounds pleaded. Following briefing for Phase One by the parties, the Board dismissed the opposition, finding Ms. Curtin “failed to prove she is entitled to the statutory cause of action she invoked—opposing registration of Applicant’s mark.” The Board relied on this court’s opinion in Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), which invokes the zone-of-interests test set forth by the Supreme Court in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), to evaluate whether Ms. Curtin was entitled to bring her opposition. Specifically, the Board read Corcamore to instruct that “[a] plaintiff may oppose registration of a mark when doing so is within the zone of interests protected by the statute and she has a reasonable belief in damage that would be proximately caused by registration of the mark.” The Board explained that while “[e]ntitlement to the statutory cause of action . . . is a requirement in every inter partes case,” and “mere consumers such as [Ms. Curtin] are generally not statutorily entitled to oppose registration under 15 U.S.C. § 1063.” The Board explained this deviation from its prior denial of UTH’s motion to dismiss the prior versions of Ms. Curtin’s Notices of Opposition for lack of statutory entitlement was based mostly on Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999), “a case that addressed a section of the Trademark Act barring registration of ‘immoral’ or ‘scandalous’ matter,” but “the Supreme Court [had since] found the bar on registration of ‘immoral’ or ‘scandalous’ matter unconstitutional” in Iancu v. Brunetti, 588 U.S. 388 (2019).
Ms. Curtin timely appealed the Board’s dismissal of her opposition. 15 U.S.C. § 1071(a)(2). We have jurisdiction over this appeal under 28 U.S.C. § 1295(a)(4)(B) and 15 U.S.C. § 1071(a).
Judge Hughes began his analysis by stating that “the question presented is a narrow one: whether Ms. Curtin, in her capacity as a consumer, is entitled to oppose UTH’s registration of the RAPUNZEL trademark under 15 U.S.C. § 1063 as generic, descriptive, and fraudulent.” After briefly explaining the Federal Circuit’s standard of review, Judge Hughes addressed each of Curtin’s arguments in turn.
First, Judge Hughes addressed Curtin’s contention that a particular case “is controlling authority on entitlement to oppose a trademark registration, and that the Board erred in applying” a different framework instead. After briefly explaining the Federal Circuit’s reasoning in the competing cases, Judge Hughes noted that “Ms. Curtin does not explain why applying the real-interest test articulated” in one of the cases “instead of the . . . analytical framework” articulated in another case “would change the Board’s ultimate determination that she is not entitled to oppose UTH’s mark under § 1063.” Judge Hughes then distinguished the case Curtin sought to use because “the bases for Ms. Curtin’s opposition to UTH’s mark (that the mark fails to function as a trademark and is generic and descriptive) are rooted in commercial interests.” Judge Hughes explained that other cases, which “provide a framework for evaluating whether a party falls within the zone-of-interests of statutory provisions of the Lanham Act,” provided “the better line of cases by which to evaluate Ms. Curtin’s ability to bring her opposition in this case.”
Second, Judge Hughes addressed Curtin’s argument that, “even if the Board was correct to apply” a particular framework “in determining in determining whether she was entitled to oppose registration under § 1063, the Board erred in its application of the framework.” Judge Hughes explained that, in this case, “the Board’s holding that only commercial actors affected by the mark’s registration fall within the zone of interests to oppose the registration as generic, descriptive, or functional under § 1063 is not inconsistent with the Lanham Act’s purpose of protecting consumers.” Moreover, he said, the Board correctly found that Curtin “did not fall within the zone of interests to bring an opposition under § 1063.” Judge Hughes explained that the damage Curtin “sought to avoid is too remote to be proximately caused by violations of the statute.” Judge Hughes pointed out that Curtin’s “alleged harms” were all “speculative tertiary effects of registration,” which were “insufficient to establish proximate causation” because “they are downstream harms first suffered by a commercial actor.”
As a result of Judge Hughes’s analysis, the Federal Circuit found that the Trademark Trial and Appeal Board “correctly applied” the law “to find that Ms. Curtin did not have statutory standing to oppose UTH’s registration of the RAPUNZEL mark under § 1063.” As a result, the panel affirmed the Board’s decision.