Posted on by Julia Huston
In an interesting case pending before the TTAB, law students from the Suffolk University IP and Entrepreneurship Clinic have opposed an application filed by United Trademark Holdings, Inc. to register RAPUNZEL as a trademark for dolls and toy figures. The students, led by clinic director Loletta “Lolita” Darden, represent Professor Rebecca Curtin, a trademark law professor and mother of a young girl who has purchased dolls. The Salt Lake City firm of Workman Nydegger is co-counsel in the case.
According to the Notice of Opposition, the Grimm Brothers are widely credited with the modern adaptation of the Rapunzel fairy tale in 1812, and the roots of the story extend much further back than that. For example, the Persian epic poem Shanahmeh, which was written between 977 and 1010 C.E., features a character named Rudaba who allows her lover to climb her hair up to a tower. There is evidence of adaptations of the Rapunzel theme going back to the Neolithic era, potentially 6,000 years old.
After detailing the history of the Rapunzel story, the Notice of Opposition lays out the gravamen of the trademark dispute:
The public knows Rapunzel as the character name of a fictional fairy tale character, not as a source indicator. Trademark protection may be precluded in those instances where the proposed mark does not function as a source indicator. In the case of Rapunzel, consumers are accustomed to encountering the name in an associational or information manner unconnected with any goods/services. Here, Applicant is attempting to snatch the name Rapunzel out of the public domain, which would prevent others from referring to their Rapunzel dolls, characters and toy figures by their true name — Rapunzel. As a result, the Board should deny registration of the opposed mark….
The law students created an online petition, titled “Free Rapunzel From the Trademark Tower,” to solicit comments and support, and attached a copy of it to their opposition papers. As of today, the petition lists over 400 supporters. It is unclear what, if any, evidentiary value the petition will have, but interestingly the TTAB considered it in ascertaining the plausibility of Professor Curtin’s allegations in connection with standing.
Can the real party in interest please stand up?
The law students have won an important initial skirmish, as to whether Professor Curtin has standing to oppose the application even though she is not a manufacturer or seller of dolls herself.
The TTAB found that Curtin “has sufficiently alleged that she has a direct and personal stake in the outcome of the proceeding and that her belief of damage has a reasonable basis in fact” in light of her allegations that, as a purchaser of dolls, she would be forced to pay higher prices for Rapunzel dolls and toy figures and would be deprived of the opportunity to purchase them from manufacturers other than the trademark applicant.
Clearing the standing hurdle is a significant victory since, somewhat surprisingly, no doll maker (or any other party for that matter) has opposed the application.
Are Curtin’s claims viable?
United Trademark Holdings also moved to dismiss the opposition on substantive grounds. The TTAB ruled as follows:
These holdings illustrate that, in a nontraditional case such as this one, the usual theories are sometimes an uncomfortable fit. It will be interesting to see what happens next, and whether United Trademark Holdings will move to dismiss the Second Amended Notice of Opposition.
The bigger picture
United Trademark Holdings already owns a trademark registration for ZOMBIE RAPUNZEL in connection with dolls, and I found ZOMBIE RAPUNZEL branded dolls on Amazon as part of the “Once Upon a Zombie” series. Curtin and her team apparently do not consider this a problem, and in the Second Amended Notice of Opposition characterize the ZOMBIE component as a “distinguishing element” that is absent from the present application for RAPUNZEL.
United Trademark Holdings owns trademark registrations and applications for several other marks resembling character names, some including “distinguishing elements” and some not, including:
You get the idea. The present case is not the first opposition filed against United Trademark Holdings, and it is unlikely to be the last.
Closing thoughts on opportunities for law students
I spoke to Lolita Darden about the case, and why the Intellectual Property & Entrepreneurship Clinic (IPEC) at Suffolk Law School decided to get involved. Darden explained that RAPUNZEL has been in the public domain for centuries, if not millennia, and that it would be unfair for one company to own the rights in that name. She sees IPEC’s role as standing up for trademark rights as important, and points out that no one else is looking out for the public interest in this case.
While IPEC allows students in their last year of law school to take primary responsibility for live client matters, under the close supervision of experienced practitioners, the TTAB may be a difficult forum for students to get a taste of what it is really like to litigate a trademark case given the amount of time it typically takes to resolve a TTAB case on the merits.
That said, working on cases like this one is a great opportunity for law students. In what other law school class do you get to cite the Brothers Grimm, Ferdowski, and Saint Barbara and start an online petition? The parties are well-represented on both sides, and it will be an interesting case to watch.
UPDATED STORY, click HERE
Wilhelm Grimm was the principal editor of the Children's and Household Tales following their inititial publication. The most significant changes were made already in the second edition (1819), although Wilhelm continued to revise the stories until their final edition (1857).
The first substantive alteration in the text of "Rapunzel" is transformation of the fairy into a more sinister sorceress. Further, Wilhelm made the tale more dramatic and gave it a more literary style by adding colorful adjectives and adverbs and supplementary supporting details. Indirect discourse was replaced by direct quotations.
More significant than Wilhelm's additions are his deletions. The sexual nature of the prince's and Rapunzel's trysts was disguised. Alterations range from the subtle to the obvious. For example:
Although Rapunzel criticism habitually concerns literary fairytales, this thesis contributes to the field a sustained examination of the feminist and patriarchal uses to which Rapunzel has been put, with close attention to the range of media, forms, and styles into which ‗Rapunzel‘ has been adapted, from 1970 onwards. It argues that each adaptation appropriates ‗Rapunzel‘ to repeat or disturb gender ideologies, and also extends or contracts the scope of the fairytale and its feminism. Underpinned by memetics, selective adaptation and fairytale theories, and Adrienne Rich‘s concept of ‗re-vision‘, individual chapters focus upon redrawing the boundaries of what makes a (feminist) Rapunzel adaptation a (feminist) Rapunzel adaptation. The thesis also examines the difficult question of why Rapunzel motifs or ‗memes‘ have persisted and whether this is due to the power of cultural ideologies or to certain universal human urges to which ‗Rapunzel‘ ostensibly appeals. As what is meant by feminism changes from the 1970s through to the present day, the selected works are considered in terms of terms of second- and third-wave feminism and postfeminism. Chapter 1 (the Introduction) establishes the approach and rationale. Chapter 2 examines the Grimm ‗Rapunzel‘ variants of 1812 and 1857 as a prelude to examining the ideological uses to which Rapunzel is put post-1970. Chapter 3 focuses on how four feminist poets subject the memes and morals of ‗Rapunzel‘ to different feminist revisions, and thereby challenge the patriarchal meanings invested by the Grimms. Chapter 4 extends this work by examining a feminist moral fable, two complex short stories, a psychological novella, and a graphic novel, in order to draw contrasts between celebratory and darker, more disturbing ‗post-fairytale‘ feminist Rapunzels. Demonstrating the many genres and media into which feminist Rapunzels have been translated, several adapters use the tale on behalf of various kinds of individualism and subjectivisation, and suggest a movement toward greater psychological complexity and interiority in their treatment of Rapunzel memes. Chapter 5 focuses on how Rapunzel memes translate to screen in the feminist reworking Rapunzel Let Down Your Hair (1978) and the postfeminist adaptations Barbie as Rapunzel (2002), Shrek the Third (2007), and Disney‘s Tangled (2010) and Into the Woods (2014). Chapter 6, the final chapter, further extends the analysis by examining Rapunzel‘s general prevalence in the cultural imagination, namely in adverts and on television. By assembling and giving fresh analyses of rare and well-known Rapunzel tales, the chapters critique the gender essentialism in fairytales and reinstate Rapunzel as key to fairytale debate. This research has led to the conclusion that post-1970s Rapunzels exemplify how fairytales appropriate or discard memes in accordance with the possibilities of genre and medium, as well as with the changing face of feminism over the last four decades.