{"id":868,"date":"2019-03-06T22:57:52","date_gmt":"2019-03-06T22:57:52","guid":{"rendered":"https:\/\/ctlj-dev.cu.law\/?p=868"},"modified":"2019-03-07T06:22:30","modified_gmt":"2019-03-07T06:22:30","slug":"releasing-rapunzels-from-the-trademark-tower-a-consumers-real-interest-in-trademark-registration","status":"publish","type":"post","link":"https:\/\/ctlj-dev.cu.law\/?p=868","title":{"rendered":"Releasing Rapunzel(s) from the Trademark Tower: A Consumer\u2019s Real Interest in Trademark Registration"},"content":{"rendered":"\n

by Rebecca Curtin<\/em><\/p>\n\n\n\n

The TTAB\nrecently reaffirmed<\/a> that a consumer can establish standing to oppose\na trademark registration because \u201cconsumers, like competitors, may have a real\ninterest in keeping merely descriptive or generic words in the public domain, \u2018(1)\nto prevent the owner of a mark from inhibiting competition in the sale of\nparticular goods; and (2) to maintain\nfreedom of the public to use the language involved<\/strong>, thus avoiding the\npossibility of harassing infringement suits by the registrant against others\nwho use the mark when advertising or describing their own products\u2019\u201d (citation\nomitted; emphasis is the Board\u2019s).  <\/p>\n\n\n\n

In the interest of full disclosure: I am the petitioner\nin that case, opposing the registration of a word mark, RAPUNZEL\nfor dolls and toy figures<\/a> that, according to the specimen\nof use<\/a>, depict the famous fairy tale character.  I am being represented by the Suffolk\nLaw IP and Entrepreneurship Clinic<\/a> with pro bono assistance from Workman Nydegger<\/a>.<\/p>\n\n\n\n

At this point, the TTAB has only denied the\napplicant\u2019s motion to dismiss and allowed the opposition to continue based on adequately\nplead claims that the word mark RAPUNZEL: 1) fails to function as a trademark\nand 2) is merely descriptive for dolls and toys.  <\/p>\n\n\n\n

Nonetheless, the TTAB\u2019s opinion thus far is heartening.\nIt recognizes that an entity using its trademark power to gain exclusive rights\nto a descriptive or generic word mark can harm consumers and contribute to\nmarket overreach.  This is because, when\nan entity establishes trademark rights in a word, the word’s use is restricted\nin the marketplace in relation to the goods that it describes. If the\nregistered mark is descriptive or generic, then consumers of those goods will\nexperience deleterious effects and hindered competition.  <\/p>\n\n\n\n

A trademark registration is a powerful tool in the\nhands of a registrant.  Take a look at\nthese benefits, as articulated by scholar Rebecca\nTushnet<\/a>:<\/p>\n\n\n\n

Rather than having to establish in each individual legal proceeding that its mark is in fact valid, a registrant is accorded a presumption of validity, and under certain circumstances that presumption is irrebuttable.  Other benefits to the trademark owner are nationwide priority over other users even without nationwide use, eligibility for assistance from the Customs Service in avoiding infringing imports, the ability to use the U.S. registration as the basis for extending protection in other countries, and preemption of certain state laws (876).<\/p><\/blockquote>\n\n\n\n

Trademark holders can also use their trademark\nregistration to more effectively police and enforce their exclusive rights. Even\nif trademark holders never ultimately pursue an action in court to enforce\ntheir mark, registrants may make persuasive reference to a trademark\nregistration in their cease-and-desist\nletters<\/a>, which they send when they wish to warn a potential\ncompetitor off using a mark that they think will confuse consumers as to the\nsource of the products or services being offered.<\/p>\n\n\n\n

In the ordinary course, where the purported mark really\nis functioning to indicate a product’s source, the benefits of registration can\nultimately flow to consumers. Marks can protect consumers from confusion as to\nwhich entity is producing, sponsoring, or endorsing the products they buy.  This has been recognized by the Supreme\nCourt<\/a> as the \u201cgeneral concern\u201d of unfair competition law, with the Court\nelaborating that \u201cwhile that concern may result in the creation of \u2018quasi\nproperty rights\u2019 in communicative symbols, the focus is on protection of\nconsumers, not the protection of producers as an incentive to product\ninnovation.\u201d<\/p>\n\n\n\n

In that light, consider the harms that may result from\ngranting trademark registration to a descriptive or generic word.  In other words, if the registration is for a\nword that describes the qualities or function of the product, or is the generic\nname for the product, then the trademark registration will make it harder for competing\nproducers to communicate with consumers. In this sense, registration of generic\nand descriptive marks can cause a different kind of consumer confusion.  The Rapunzel name is a helpful one for\nthinking about what the stakes in such communication really are.<\/p>\n\n\n\n

Rapunzel is the name of a fairy tale character,\nperhaps best known in the versions first published by the Brothers\nGrimm<\/a> in 1812, but with roots in tales much older than that, all\nsharing an archetype\nidentified by folklorists Aarne and Thompson as the \u201cmaiden in the tower.\u201d <\/a> For centuries, the character has remained a\npowerful and poignant touchstone for artists with strikingly different takes on\nthe character, from Anne Sexton\u2019s poetic lesbian re-telling of the tale<\/a>\nto Dina Goldstein\u2019s photographic series of Fallen Princesses<\/a>\nto Carl Payne\u2019s bronze Rapunzel<\/a>.  <\/p>\n\n\n\n

Naturally, this proliferation of different versions of\nthe character has been accompanied by a broad range of dolls\nand toy figures<\/a>, from producers large<\/a>\nand small<\/a>,\nwhich are, to my experience as a mother of a young girl, cultural artifacts just\nas important as the higher art. \nAccordingly, when consumers hear the word, \u201cRapunzel,\u201d they think of the\nwell-known fairy tale character, not any one producer of dolls or toys.  These dolls tell us what \u201cRapunzel\u201d looks\nlike; they tell us (and our children) what \u201cRapunzel\u201d means.  Having the ability to choose from various interpretations\nof “Rapunzel” dolls, and being able to find such a doll from more\nthan one producer is important to consumers\u2014it is important to me as a frequent\nbuyer of fairy-tale-based dolls and toys. \n<\/p>\n\n\n\n

Unlike other marks, the word mark RAPUNZEL for dolls\nand toys has no substitute. In this way, trademark rights in \u201cRapunzel\u201d for\ndolls and toy figures are importantly different from a trademark like, say, \u201cCinderella\nEyebrows Spa\u201d<\/a> for various health spa services.  There, we can see that the reference to\nCinderella playfully suggests all kinds of things about the services\u2014that the\ntechnicians will work as cheerfully as Cinderella at her chores, perhaps, or\nthat the results will be so striking that no one will recognize the beautiful new\nyou at the ball\u2014but none of these suggestions will prevent other health spas\nfrom getting into the market and telling consumers the same things about their\nexcellent services using other marks.  By\ncontrast, if the maker of a doll that depicts Rapunzel can\u2019t market the doll\nusing that name, consumers will be deprived of important information that can\u2019t\nbe communicated with other words.  Rapunzel\ndolls are Rapunzels. <\/p>\n\n\n\n

Exclusive trademark rights to market dolls and toy\nfigures under the Rapunzel name could chill new entrants to the market through\nfear of infringement liability.  Even\nfactoring in defenses like the descriptive\nfair use doctrine<\/a>, trademark rights in the Rapunzel name for dolls\nwould raise barriers, both to dollmakers offering \u201cRapunzels\u201d in the\nmarketplace and to consumers finding \u201cRapunzels,\u201d where only the trademark\nholder feels free to use that name in big letters across the front of the box. <\/p>\n\n\n\n

As the\nTTAB acknowledged in its opinion allowing the opposition to go forward, it has\nalready \u201cnoted that \u2018other doll makers interested in marketing a doll that\nwould depict the character [LITTLE\nMERMAID]<\/a> have a competitive need to use that name to describe their\nproducts.\u2019\u201d <\/p>\n\n\n\n

Thus we are fighting for the consumer interest in Rapunzels\nthat look like this<\/a>,\nand this<\/a>,\nand this<\/a>,\nand this<\/a>,\nand this<\/a>,\nand this<\/a>,\nand this<\/a>.  We want a marketplace that welcomes a diverse\narray of producers who engage with the cultural legacy of this ancient fairy\ntale, from the latest interpretation by a giant\ncorporate content provider<\/a> to antique dealers who need the name\nRapunzel to describe rare French bisque toys like this<\/a>\none, from more than a hundred years ago.   We are fighting for access to artisans like this<\/a>\none, who customize their Rapunzel\u2019s skin tone, hair, and dress color to\nwhatever their customer asks.  We are\nfighting for creative cos-play\ndads<\/a> and crafty-do-it-yourselfers<\/a>,\nwho have long been inspired by the rich market for dolls and toys that express\nthe Rapunzel character in different ways. \nNo one needs a trademark on the Rapunzel name to join in this market for\ndolls and toys that depict the character. Giving one to a single company will\nonly chill the use of that name by others to tell us about the unique dolls and\ntoys they make.<\/p>\n\n\n\n

\n\n*Disclaimer: The Colorado Technology Law Journal Blog contains the personal opinions of its authors and hosts, and do not necessarily reflect the official position of CTLJ.<\/em><\/p>\n\n\n\n

Professor Curtin is a graduate of Princeton University, where she received her A.B. in English, summa cum laude, and of the University of Virginia School of Law, where she served on the editorial board of the Virginia Law Review. Prior to attending law school, she completed her Ph.D. in English and American Literature and Language at Harvard University, and held teaching positions at Harvard University and Brandeis University.<\/em>

Before joining the faculty at Suffolk Law, Professor Curtin worked as an associate in the IP Transactional practice group at Ropes & Gray LLP, where her practice focused on licensing, collaboration and other commercial agreements involving intellectual property. Professor Curtin teaches courses in Property and Copyright. Her research interests currently include the evolution of intellectual property regimes under the influence of new technologies and licensing transactions.<\/em>
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by Rebecca Curtin The TTAB recently reaffirmed that a consumer can establish standing to oppose a trademark registration because \u201cconsumers, like competitors, may have a real interest in keeping merely descriptive […]<\/p>\n","protected":false},"author":6,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-868","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"_links":{"self":[{"href":"https:\/\/ctlj-dev.cu.law\/index.php?rest_route=\/wp\/v2\/posts\/868","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/ctlj-dev.cu.law\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/ctlj-dev.cu.law\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/ctlj-dev.cu.law\/index.php?rest_route=\/wp\/v2\/users\/6"}],"replies":[{"embeddable":true,"href":"https:\/\/ctlj-dev.cu.law\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=868"}],"version-history":[{"count":4,"href":"https:\/\/ctlj-dev.cu.law\/index.php?rest_route=\/wp\/v2\/posts\/868\/revisions"}],"predecessor-version":[{"id":875,"href":"https:\/\/ctlj-dev.cu.law\/index.php?rest_route=\/wp\/v2\/posts\/868\/revisions\/875"}],"wp:attachment":[{"href":"https:\/\/ctlj-dev.cu.law\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=868"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/ctlj-dev.cu.law\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=868"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/ctlj-dev.cu.law\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=868"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}