Releasing Rapunzel(s) from the Trademark Tower: A Consumer’s Real Interest in Trademark Registration

by Rebecca Curtin

The TTAB recently reaffirmed that a consumer can establish standing to oppose a trademark registration because “consumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain, ‘(1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products’” (citation omitted; emphasis is the Board’s). 

In the interest of full disclosure: I am the petitioner in that case, opposing the registration of a word mark, RAPUNZEL for dolls and toy figures that, according to the specimen of use, depict the famous fairy tale character.  I am being represented by the Suffolk Law IP and Entrepreneurship Clinic with pro bono assistance from Workman Nydegger.

At this point, the TTAB has only denied the applicant’s motion to dismiss and allowed the opposition to continue based on adequately plead claims that the word mark RAPUNZEL: 1) fails to function as a trademark and 2) is merely descriptive for dolls and toys. 

Nonetheless, the TTAB’s opinion thus far is heartening. It recognizes that an entity using its trademark power to gain exclusive rights to a descriptive or generic word mark can harm consumers and contribute to market overreach.  This is because, when an entity establishes trademark rights in a word, the word’s use is restricted in the marketplace in relation to the goods that it describes. If the registered mark is descriptive or generic, then consumers of those goods will experience deleterious effects and hindered competition. 

A trademark registration is a powerful tool in the hands of a registrant.  Take a look at these benefits, as articulated by scholar Rebecca Tushnet:

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).

Trademark holders can also use their trademark registration to more effectively police and enforce their exclusive rights. Even if trademark holders never ultimately pursue an action in court to enforce their mark, registrants may make persuasive reference to a trademark registration in their cease-and-desist letters, which they send when they wish to warn a potential competitor off using a mark that they think will confuse consumers as to the source of the products or services being offered.

In the ordinary course, where the purported mark really is functioning to indicate a product’s source, the benefits of registration can ultimately flow to consumers. Marks can protect consumers from confusion as to which entity is producing, sponsoring, or endorsing the products they buy.  This has been recognized by the Supreme Court as the “general concern” of unfair competition law, with the Court elaborating that “while that concern may result in the creation of ‘quasi property rights’ in communicative symbols, the focus is on protection of consumers, not the protection of producers as an incentive to product innovation.”

In that light, consider the harms that may result from granting trademark registration to a descriptive or generic word.  In other words, if the registration is for a word that describes the qualities or function of the product, or is the generic name for the product, then the trademark registration will make it harder for competing producers to communicate with consumers. In this sense, registration of generic and descriptive marks can cause a different kind of consumer confusion.  The Rapunzel name is a helpful one for thinking about what the stakes in such communication really are.

Rapunzel is the name of a fairy tale character, perhaps best known in the versions first published by the Brothers Grimm in 1812, but with roots in tales much older than that, all sharing an archetype identified by folklorists Aarne and Thompson as the “maiden in the tower.”  For centuries, the character has remained a powerful and poignant touchstone for artists with strikingly different takes on the character, from Anne Sexton’s poetic lesbian re-telling of the tale to Dina Goldstein’s photographic series of Fallen Princesses to Carl Payne’s bronze Rapunzel

Naturally, this proliferation of different versions of the character has been accompanied by a broad range of dolls and toy figures, from producers large and small, which are, to my experience as a mother of a young girl, cultural artifacts just as important as the higher art.  Accordingly, when consumers hear the word, “Rapunzel,” they think of the well-known fairy tale character, not any one producer of dolls or toys.  These dolls tell us what “Rapunzel” looks like; they tell us (and our children) what “Rapunzel” means.  Having the ability to choose from various interpretations of “Rapunzel” dolls, and being able to find such a doll from more than one producer is important to consumers—it is important to me as a frequent buyer of fairy-tale-based dolls and toys. 

Unlike other marks, the word mark RAPUNZEL for dolls and toys has no substitute. In this way, trademark rights in “Rapunzel” for dolls and toy figures are importantly different from a trademark like, say, “Cinderella Eyebrows Spa” for various health spa services.  There, we can see that the reference to Cinderella playfully suggests all kinds of things about the services—that the technicians will work as cheerfully as Cinderella at her chores, perhaps, or that the results will be so striking that no one will recognize the beautiful new you at the ball—but none of these suggestions will prevent other health spas from getting into the market and telling consumers the same things about their excellent services using other marks.  By contrast, if the maker of a doll that depicts Rapunzel can’t market the doll using that name, consumers will be deprived of important information that can’t be communicated with other words.  Rapunzel dolls are Rapunzels.

Exclusive trademark rights to market dolls and toy figures under the Rapunzel name could chill new entrants to the market through fear of infringement liability.  Even factoring in defenses like the descriptive fair use doctrine, trademark rights in the Rapunzel name for dolls would raise barriers, both to dollmakers offering “Rapunzels” in the marketplace and to consumers finding “Rapunzels,” where only the trademark holder feels free to use that name in big letters across the front of the box.

As the TTAB acknowledged in its opinion allowing the opposition to go forward, it has already “noted that ‘other doll makers interested in marketing a doll that would depict the character [LITTLE MERMAID] have a competitive need to use that name to describe their products.’”

Thus we are fighting for the consumer interest in Rapunzels that look like this, and this, and this, and this, and this, and this, and this.  We want a marketplace that welcomes a diverse array of producers who engage with the cultural legacy of this ancient fairy tale, from the latest interpretation by a giant corporate content provider to antique dealers who need the name Rapunzel to describe rare French bisque toys like this one, from more than a hundred years ago.   We are fighting for access to artisans like this one, who customize their Rapunzel’s skin tone, hair, and dress color to whatever their customer asks.  We are fighting for creative cos-play dads and crafty-do-it-yourselfers, who have long been inspired by the rich market for dolls and toys that express the Rapunzel character in different ways.  No one needs a trademark on the Rapunzel name to join in this market for dolls and toys that depict the character. Giving one to a single company will only chill the use of that name by others to tell us about the unique dolls and toys they make.

*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.

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.

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.