Rebecca Curtinv.United Trademark Holdings, Inc.

Trademark Trial and Appeal Board

Oct 19, 2021

91241083 (T.T.A.B. Oct. 19, 2021)

Webster October 19, 2021 Opposition No. 91241083 Rebecca Curtin v. United Trademark Holdings, Inc. Before Lykos, Kuczma, and Heasley, Administrative Trademark Judges. By the Board: This case now comes up on the renewed motion (filed April 6, 2021) of Rebecca Curtin (“Opposer”) for partial summary judgment on her entitlement to a statutory cause of action and her claims that the applied-for mark is merely descriptive, generic, and fails to function as a trademark. The motion is fully briefed.1 I. Background United Trademark Holdings, Inc. (“Applicant”) seeks registration on the Principal Register of the standard character mark RAPUNZEL for “dolls; toy figures,” in 1 The Board, in an order issued March 9, 2021, denied Opposer’s first motion for summary judgment, without prejudice, in view of Opposer’s failure to establish the absence of a genuine dispute of material fact regarding her entitlement to bring a statutory cause of action. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 General Contact Number: 571-272-8500 General Email: TTABInfo@uspto.gov THIS ORDER IS NOT A PRECEDENT OF THE TTAB Opposition No. 91241083 2 International Class 28.2 Opposer, in her second amended notice of opposition, alleges that Applicant’s claimed mark is the name of a well-known fairy tale character, and opposes its registration on the grounds that: (1) the term is merely descriptive; (2) the term is generic; (3) the term fails to function as a trademark; (4) Applicant committed fraud in the application; and (5) the term is functional.3 Applicant, in its answer to the second amended notice of opposition, admits that RAPUNZEL is the name of a fairy tale character,4 but otherwise denies the salient allegations regarding the asserted claims.5 II. Summary Judgment Standard Summary judgment is an appropriate method of disposing of cases in which there are no genuine disputes as to any material facts and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). In reviewing a motion for summary judgment, the evidentiary record must be viewed in the light most favorable to the non-moving party and all justifiable inferences to be drawn from the undisputed facts must be drawn in favor of the non-moving party. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029-30 (Fed. Cir. 1993); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1546 (Fed. Cir. 1992). We may not 2 Application Serial No. 87690863 was filed on November 20, 2017, based on Applicant’s claim of use in commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a). 3 13 TTABVUE. In an order issued December 28, 2018, the Board dismissed Opposer’s claim that the mark is functional under Trademark Act Section 2(e)(5), 15 U.S.C. § 1052(e)(5), with prejudice. 12 TTABVUE 10. However, Opposer repleaded the claim in her second amended pleading “to preserve the right to appeal at a later date the dismissal of the 2(e)(5) issue….” 13 TTABVUE 10 n.1. 4 Answer at ¶ 2, 15 TTABVUE 2. 5 Id. at ¶¶ 8-24, 15 TTABVUE 3-5. Opposition No. 91241083 3 resolve disputes of material fact; we may only ascertain whether a genuine dispute regarding a material fact exists. See Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544. The party moving for summary judgment has the burden of demonstrating that a particular fact cannot be disputed by citing to particular parts of materials in the record, including affidavits or declarations, admissions or interrogatory answers; or showing that the cited materials do not establish the presence of a genuine dispute, or that the adverse party cannot produce admissible evidence to support the fact. Fed. R. Civ. P. 56(c)(1). See generally Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). III. Entitlement to a Statutory Cause of Action In every inter partes proceeding before the Board, the plaintiff must establish its entitlement to bring a statutory cause of action (formerly “standing”).6 Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-26 (2014)) reh’g en banc denied (Dec. 4, 2020), cert. denied 2021 WL 4507693 (Oct. 4, 2021); Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). Opposer, in her second amended notice of opposition, alleges that she is “a consumer who participates … in the marketplace for dolls and toy figures of fairytale characters, including Rapunzel,” and 6 In its March 9, 2021 order, the Board discussed the reason for the change in nomenclature from “standing.” 37 TTABVUE 4. As noted in the order, the Board’s prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, remain applicable. Opposition No. 91241083 4 “is a mother of a young girl who has purchased and continues to purchase dolls, including fairy tale dolls.” 14 TTABVUE 6 (¶ 16).7 Opposer argues that she is entitled to bring a statutory cause of action because as an active consumer in the marketplace for dolls and toy figures she has a real interest in this proceeding. 43 TTABVUE 7. Opposer contends that she believes that she and other members of the relevant purchasing class will be damaged if the subject mark is registered because they “will have to expend increased time and costs in locating and identifying Rapunzel character dolls and toys” and “will be denied access to healthy marketplace competition for the identified goods.” Id. In support of her allegations of entitlement, Opposer has submitted, among other items, her signed declaration attesting to her purchase of dolls featuring fairy tale characters8 and to the authenticity of the exhibits identified therein. The exhibits include printouts from online retailers demonstrating her purchases of fairytale dolls and toys, including dolls identified as the character Rapunzel.9 Opposer has also submitted the declarations of two third-party “Seller[s] of Rapunzel Dolls” who state that they will not be able to identify their Rapunzel dolls or “fairly compete in the market for princess dolls” if the name Rapunzel is registered as a trademark.10 7 Citations to the briefs refer to TTABVUE, the Board’s online docketing system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). 8 Declaration of Rebecca Curtin, ¶ 3, 43 TTABVUE 29. 9 Curtin Decl. at ¶¶ 3-4, 43 TTABVUE 26 and 415-453 (Exhibits 48-50), 44 TTABVUE 2-199 (Confidential). 10 43 TTABVUE 399-403 (Exhibit 46). Opposition No. 91241083 5 Applicant, in its response, disputes Opposer’s entitlement to bring a cause of action against its mark and argues that Opposer brought this proceeding as an academic exercise in her position as a law professor and not as a competitor to Applicant or a consumer of the goods at issue. Id. at 4.11 Applicant also states that it “incorporates its prior arguments regarding standing and note[s] that the Board’s finding of [entitlement to a cause of action] (12 TTABVUE) could be raised by Applicant as an issue on [a]ppeal of any dispositive ruling.” 46 TTABVUE 3-4. We find that genuine disputes of material fact remain for trial regarding Opposer’s entitlement to bring a statutory cause of action. Accordingly, Opposer’s motion for partial summary judgement is denied on that basis. Consequently, the Board, in its discretion, declines to consider the motion with respect to the merits of Opposer’s claims.12 IV. Bifurcation of Issues In a decision issued October 27, 2020, the U.S. Court of Appeals for the Federal Circuit directed that the analytical framework established by the Supreme Court in Lexmark Int’l, Inc. v. Static Control Components, Inc., supra, is the applicable 11 In support its argument, Applicant cites to a law review article authored by Opposer in the TENNESSEE LAW REVIEW titled “Zombie Cinderella and the Undead Public Domain.” 85 TENN. L. REV. 961 (2018). Applicant also submitted, as an exhibit to its response, a “Draft Schedule” of the “Second Annual Intellectual Property & Innovation Conference” at Suffolk University Law School. 46 TTABVUE 16-20 (Exhibit A). 12 The fact that we have identified only certain genuine disputes as to material facts should not be construed as a finding that these are necessarily the only disputes which remain for trial. In addition, we note that the evidence submitted in connection with a motion for summary judgment or opposition thereto is of record only for consideration of that motion. Any such evidence to be considered at final hearing must be properly introduced in evidence during the appropriate trial period unless the parties stipulate otherwise under ACR. See Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993). Opposition No. 91241083 6 standard for determining whether a party is eligible to bring a statutory cause of action in an opposition or cancellation proceeding at the Trademark Trial and Appeal Board (TTAB). Corcamore, LLC, v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6 (Fed. Cir. 2020).13 In Lexmark, the Supreme Court held that the zone-of- interests test and the proximate-cause requirement provide the relevant limitations on who may bring a statutory cause of action under the Trademark Act. 572 U.S. at 129-134. Thus, to establish entitlement to a statutory cause of action under Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063 and 1064, on summary judgment, a plaintiff must demonstrate that there is no genuine dispute of material fact that its interest in opposing or cancelling the registration is within the zone of interests protected by the statute and that plaintiff has a reasonable belief of damage proximately caused by registration of the mark. Corcamore, 2020 USPQ2d 11277, at *6-7; cf. Empresa Cubana Del Tabaco, 111 USPQ2d at 1062. In light of this recent case law and subsequent progeny concerning a plaintiff’s entitlement to bring a statutory cause of action before the Board, we believe, at this juncture, that it is appropriate to revisit this issue. In view thereof, the Board sua sponte bifurcates this proceeding into two separate trial phases. See Fed. R. Civ. P. 13 Although the Court held that the Lexmark analytical framework applies to a cancellation proceedings under Section 1064 of the Trademark Act, 15 U.S.C. 1064, “[t]he statutory requirements to cancel registration of a mark under § 1064 are substantively equal to the statutory requirements to oppose the registration of a mark under § 1063.” Australian Therapeutic Supplies, 2020 USPQ2d 10837, at *3. Opposition No. 91241083 7 42(b) (allowing court to order a separate trial of one or more separate issues);14 see also, AT&T Mobility LLC v. Mark Thomann and Dormitus Brands LLC, 2020 USPQ2d 53785, *3 (TTAB 2020) (Board approved parties’ stipulation to bifurcate proceeding). Phase One: The first phase will focus solely on the issue of Opposer’s entitlement to a statutory cause of action. Opposer is reminded that entitlement to a statutory cause of action must be maintained throughout the proceeding. Discovery is closed and the trial schedule is reset for Phase One as follows: Plaintiff's Pretrial Disclosures Due 11/8/2021 Plaintiff's 30-day Trial Period Ends 12/23/2021 Defendant's Pretrial Disclosures Due 1/7/2022 Defendant's 30-day Trial Period Ends 2/21/2022 Plaintiff's Rebuttal Disclosures Due 3/8/2022 Plaintiff's 15-day Rebuttal Period Ends 4/7/2022 Plaintiff's Opening Brief Due 6/6/2022 Defendant's Brief Due 7/6/2022 Plaintiff's Reply Brief Due 7/21/2022 Request for Oral Hearing (optional) Due 7/31/2022 Trial briefs on the issue of entitlement to a statutory cause of action shall be submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at 14 See Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a) (“Except as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.”). Opposition No. 91241083 8 final hearing of Phase One will be scheduled only upon the timely submission of a separate notice as allowed by Trademark Rule 2.129(a).15 Phase Two: If Opposer establishes its entitlement to bring a statutory cause of action after Phase 1 trial is complete, the Board will then reset the disclosure and trial dates for the remaining claims and issues. Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is taken and introduced out of the presence of the Board during the assigned testimony periods. The parties may stipulate to a wide variety of matters, and many requirements relevant to the trial phase of Board proceedings are set forth in Trademark Rules 2.121 through 2.125. These include pretrial disclosures, matters in evidence, the manner and timing of taking testimony, and the procedures for submitting and serving testimony and other evidence, including affidavits, declarations, deposition transcripts and stipulated evidence. The Board may, as necessary, or the parties may request, as necessary, that the Board convene a teleconference with the parties to discuss any outstanding issues, progress of the proceeding, and/or any other topics concerning this proceeding. Accelerated Case Resolution The parties may wish to consider using the Board’s Accelerated Case Resolution (ACR) procedure. This procedure is similar to the use of cross-motions for summary 15 An oral hearing under Trademark Rule 2.129(a), 37 C.F.R. § 2.129(a), may be separately requested for each phase of the bifurcated proceeding. Opposition No. 91241083 9 judgment, but the parties must stipulate that, in lieu of trial, the Board may resolve any genuine disputes of material fact. Should the parties agree to use of ACR, they may stipulate to facts, the form of evidence, and/or a shortening of the trial periods. For example, the parties may agree that documents and things produced in response to requests for production may be submitted as exhibits without the need for accompanying testimony. The stipulations regarding the submission of evidence remove any question about the admissibility of the evidence, but the parties may reserve the right to object to the evidence on substantive grounds such as competency, relevancy or materiality, or the weight to be accorded particular items of evidence. The Board’s ACR procedure is detailed under the heading “Alternate resolution options” at: https://www.uspto.gov/trademarks/ttab and the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) Section 702.04 (2021).16 16 We note that oral hearings are available in ACR cases in accordance with Trademark Rule 2.129(a), 37 C.F.R. § 2.129(a). See TBMP § 528.05(A)(2). If the parties agree to use the ACR procedure, the parties are advised to telephone the assigned interlocutory attorney at 571- 572-9266 to discuss the ACR schedule and any other stipulations. The Board will not entertain any further motions for summary judgment in this proceeding in the absence of an agreement to use ACR.