US: No fairytale ending for consumers in Rapunzel trademark opposition

In addition to the broad language in the statute, case law has imposed requirements regarding the standing of an opposer, which in practice makes initiating an opposition proceeding not as easy as it reads in the statute.

The case under analysis below concerns an individual who initiated an opposition proceeding against a trademark application, alleging that the mark was descriptive and generic, which would damage her consumer interests.   

Rebecca Curtin vs. United States Trademark Holdings, Inc., 2025

The well-known fairytale Rapunzel, about a young girl who was taken by a witch, locked in a tower, but found love with a prince and ultimately escaped to freedom after enduring hardship and separation, is in the public domain.

United Trademark Holdings, Inc. (UTH) filed an application to register the word “RAPUNZEL” as a standard character trademark, asserting use of the mark in commerce in connection with dolls and toy figures in International Class 28. UTH’s application was approved by the USPTO and published for opposition.

Rebecca Curtin filed an opposition under Lanham Act § 1063, claiming that the mark was, among others, descriptive and generic and failed to function as a trademark.

Regarding her interest in bringing the opposition, Ms. Curtin alleged that she, as a consumer who participated in the marketplace for dolls and toy figures of fairytale characters, including Rapunzel, would be hurt by UTH’s registration of the RAPUNZEL mark because the marketplace competition for products that represent Rapunzel would be reduced, and the price of such products would go up, etc. She included a petition with 432 signatures of people 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 moved to dismiss Ms. Curtin’s opposition, claiming Ms. Curtin did not have statutory standing to oppose UTH’s application. The Trademark Trial and Appeal Board (the Board) dismissed the opposition, finding Ms. Curtin failed to prove she was entitled to oppose registration of the trademark. Ms. Curtin appealed to the Federal Circuit (the court).

1. Applicable legal framework

The first dispute in the appeal proceeding was about the correct legal framework to be used to evaluate Ms. Curtin's standing to initiate an opposition proceeding.

The Board relied upon the Lexmark framework as set forth by the Supreme Court in Lexmark International, Inc. v. Static Control Components, Inc.; it found Ms. Curtin did not fall within the “zone of interest” of Lanham Act § 1063 in instituting the opposition, and she had failed to establish a reasonable belief of proximate causation of injury.

Ms. Curtin, on the other hand, argued that she had standing under the Ritchie framework as established by the Federal Circuit in Ritchie v. Simpson because she has a “real interest” in the opposition proceeding and a reasonable basis for her belief of damage.

The court first found that the two frameworks were actually similar in respect of purpose and application, and Ms. Curtin failed to explain why using the “real interest” test would change the Board’s ultimate determination regarding her entitlement to oppose.

Then, the court distinguished Ritchie from the present case because they dealt with different interests, finding that Ritchie was about disparagement and reputational harm to the opposer, whereas this case was about commercial interest.

Therefore, the court agreed with the Board that the Lexmark framework should be applicable to this case since they both pertained to commercial interests of the opposers.

2. Did Ms. Curtin’s alleged consumer interests fall within the zone of interests under Lexmark?

The court set out to explain that application of the zone of interest test in the context of challenging a trademark should be tailored based on the specific bases cited for the challenge, whether it is opposing registration or seeking cancellation of the registration for a mark.

The court then noted that prohibitions against descriptive and generic marks, the alleged basis of Ms. Curtin’s opposition, protected commercial interests, rather than consumer interests represented by Ms. Curtin. Accordingly, the court considered that only commercial actors affected by the registration of the Rapunzel mark had the standing to oppose the registration as generic, descriptive or functional under § 1063. 

Even though the court agreed that Lanham Act § 1063 may also have a goal of protecting consumers, this goal could be served by conferring rights that only commercial actors had statutory standing to exercise.

3. Is proximate causation established?

The Supreme Court in Lexmark further noted that a statutory cause of action is limited to plaintiffs whose injuries are proximately caused by violations of the statute. The court held that Ms. Curtin’s case did not satisfy the proximate causation requirement under the Lexmark case.

First, the court noted that only injury to those interests that fall within the zone of interests was relevant to the proximate causation analysis. Since Ms. Curtin’s alleged consumer interests were not within the zone of interests as discussed above, her damage claim based on consumer interest did not fulfil the proximate causation requirement.

Second, the court considered that Ms. Curtin’s alleged harm was too remote to create a proximate causation because it was purely derivative of injuries directly suffered by a commercial actor due to the defendant’s trademark registration.

Third, the court found that Ms. Curtin’s alleged harms were entirely speculative as she failed to provide any evidence to support the general economic theories she relied on. Such allegations of harm were at best downstream effects of harms to commercial actors and were too remote to support a reasonable belief in injury. 

3. Remarks

It could be argued that, by this case, consumers have been carved out of the broad class of people who have standing to oppose trademark applications under § 1063 of the Lanham Act since consumers' interests are considered beyond the zone of interests that an eligible opponent needs to possess under the Lexmark framework.

Second, by this case, the court has extended the Lexmark framework to opposition proceedings under § 1063 of the Lanham Act.

It is worth noting though that the Lexmark case was not actually about an opposition proceeding, rather about a false advertising-related civil action under § 1125 of the Lanham Act.

In bridging the gap between two cases, the court cited Corcamore in its line of reasoning, where the court applied the Lexmark framework to assess standing in a trademark cancellation proceeding under § 1064 of the Lanham Act.

Further, because of the substantial equivalence between the cancellation proceeding under § 1064 and the opposition proceeding under § 1063, which has been established in the case law, the court ultimately determined that the Lexmark framework should be applicable to an opposition proceeding as well.