From products like Rapunzel, a hair product calling itself the future of hair to the name of teen rapper Rap-Unzel who is starring in Lifetime’s The Rap Game, the name Rapunzel is used far more than often than the familiar stories of Grimm and Disney. Now United Trademark Holdings Inc. is attempting to trademark Rapunzel (and likely has plans for other fairy tale princess names) for its line of dolls.
Don’t panic. A host of Prince Charmings and Fairy Godmothers have taken an interest in United Trademark Holding Inc.’s activities. Law Professors Rebecca Curtin and Loletta Darden of Suffolk University Law School, along with help from Suffolk’s Intellectual Property and Entrepreneurship Clinic, filed an opposition at the TTAB to United’s trademark registration on May 9, 2018.
In their Notice of Opposition, they argue that the name Rapunzel belongs to the public. “No company should ever be able to be the only company that can call their doll Rapunzel, because Rapunzel is already in the public domain,” said Curtin, who specializes in intellectual property law. “Rapunzel already belongs to everyone.”
Last year Curtin discovered United’s Rapunzel trademark application while researching for an article about trademarks and the public domain. She asked Darden and the student Clinic to represent her in an opposition.
Counsel for United Trademark Holdings told the Boston Globe that the company is aware of the opposition and plans to ask the TTAB to dismiss the complaint, based on the fact that Curtin is not a toy maker that could claim to be injured by the trademark. It is United Trademark Holding’s position that Curtin lacks standing to oppose their registration.
Disney has filed for an extension with the Patent and Trademark Office for time to submit an opposition to United’s application. Curtin began keeping track of trademark applications for storybook characters after she heard of United Trademark’s 2014 efforts to register Zombie Cinderella.
Curtin told the Globe that, in this instance, she is more than a law professor engaging in an academic exercise. She represents the public’s interest and wants other toy makers to have the chance to interpret the character in their own products without worrying about a lawsuit.
“Start-ups and smaller businesses are the entities that tend to suffer when trademark registrations cover descriptive, if not generic, terms,” says Loletta Darden. There is increasing evidence that intellectual property laws are used to circumscribe the creative efforts of future endeavors which is counter to public policy.
Per the Globe story, Curtin said “granting these exclusive trademarks to companies is going to result in fewer toys that express this character.” She also noted that it could lead to other companies seeking exclusive rights to use iconic characters on greeting cards, party favors, or board games.
Professor Jennifer Rothman, a law professor at Loyola Law School in California who teaches trademark law told the Globe that the PTO doesn’t have a lot of time to review trademark registration filings and that “[s] ometimes questionable marks do get approved, especially when unopposed.” This leads to situations some might call trademark trolling.
Eric Pelton, counsel for United, said that it is not his client’s goal to sue anybody for infringing on names like Rapunzel.
Pelton said United would use the trademark only for dolls and figures, which means the name would be free to other businesses to use on such products as party decorations, greeting cards, and clothes. But the Suffolk professors think exclusive rights for dolls and toys are especially concerning because these are products that interpret the character. Why should one company be the only on in the market to tell us what Rapunzel looks like or how to play with that old fairy tale?
According to Pelton, United Trademark Holdings is trying to do what other companies have been allowed to do for years under the law: Name products for famous characters and protect those names as registered trademarks.
“The company is basically putting a new, more modern or more youthful or more cutting-edge spin on these characters when it uses these names,” Pelton said. The Zombie dolls that United has marketed attract children and adults and many different types of fans. Certainly, in the past decade all things Zombie had taken off including the Center for Disease Control’s mock Zombie Preparedness page; the film Pride and Prejudice and Zombies, The Walking Dead, now into its 8th season and Zombie mode finding its way into the game Call of Duty. But United’s move is to ask for a mark for just the word “Rapunzel” not modified with the “Zombie” combination – this would give them a much wider scope of trademark protection, potentially giving them a corner of the market for toys that engage with the Rapunzel tale.
The Professors feel it is important for the name to remain open for lots of adaptations. Just like making Rapunzel a Zombie, Disney redeveloped Rapunzel in its recent movie Tangled. In Disney’s Tangled, the Rapunzel character is developed to be a talented artist, able to self-entertain (in a gadget infested world this is refreshing!), brave and kind. This re-imagining of an old school character is exciting, creative and inspiring. The ability of story-tellers to re-imagine and update princess heroines is curbed when princess names that have been “out in the market for years” obtain a trademark, explained Darden.
It might help to think of it this way: using the word “Apple” as a trademark for computers doesn’t cause any problems like this, because other computer makers can still compete using other names for their computers, but if an apple orchard farmer had the exclusive right to use just the word “Apple” to market apples, the actual fruit from the tree, it would make it hard for other farmers to tell consumers that they also were selling apples. It’s the relationship between the trademark and the product (here, the “Rapunzel” name and dolls or toys featuring the character) that gives United an unfair advantage and that’s not what trademark rights are supposed to do. At least that is how Professor Curtin views these circumstances.
At this point, Curtin is waiting to review the response from United. As part her process, she will be preparing a petition that will be available for others to sign, if they agree with her position. “We think it will be important as part of the process to show that we are not alone in feeling this way about the problem,” says Curtin. There will be a link to the petition and other materials on the Suffolk Law website.
If the professors prevail, it’s a Cinderella story. If not, the future might require us to shop or dolls labeled “Ash Sweeper Makes it Big.”