Standing in Trademark Trial and Appeal Board Cases
By Suzanna M. M. Morales
In order to successfully challenge a trademark registration before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, a party must first meet a threshold requirement that it has standing to oppose or petition to cancel the registration. Although the standing requirement is a relatively low hurdle, a recent decision shows that the requirement does have limits.
What is standing?
The Trademark Trial and Appeal Board (TTAB) decides oppositions to pending applications as well as petitions to cancel existing registrations. Before the TTAB reaches the substantive merits of the matter, an opposer or petitioner to cancel must demonstrate standing, which is defined as a “real interest” in the proceeding and a “reasonable basis for its belief of damage.” The “real interest” requires a “direct and personal stake” in the outcome of the proceeding. The plaintiff must have a “legitimate personal interest in the opposition,” though, importantly, the interest does not need to be greater than the interest of the general public.
Which brings us to goats…
Standing is generally not a difficult requirement to meet. But the U.S. Court of Appeals for the Federal Circuit denied standing to a would-be petitioner to cancel in Bank v. Al Johnson’s Swedish Restaurant & Butik, Inc., Case No. 2019-1880 (Fed. Cir. Dec. 9, 2019).
The registration at issue covered trade dress that the owner described in the records of the USPTO as “goats on a roof of grass” used in connection with restaurant services:
On October 12, 2018, Todd C. Bank, an individual, filed a petition to cancel the registration on the basis that the mark did not function as a trademark. In support, Bank claimed that the goat roof trade dress served the useful purpose of removing or reducing the restaurant owner’s need to mow the grass roof. Bank’s petition to cancel further claimed that the mark “is demeaning to” goats, which in turn was “offensive” to him and “denigrates” the value he places “on the respect, dignity, and worth of animals.”
However, a 2017 Supreme Court decision found unconstitutional the clause of the U.S. trademark law barring the registration of marks on the basis that they are disparaging to any person. Matal v. Tam, 137 S.Ct. 1744 (2017). The Federal Circuit in the Bank matter held that the disparagement clause was the only basis for Bank’s standing, and was no longer valid following the Tam decision. (Presumably, the disparagement clause as applied to goats was a novel issue, but the Federal Circuit did not address this question.)
Moreover, the Trademark Trial and Appeal Board held that the only viable claim in Bank’s opposition was that the goat roof trade dress was functional and the claim of standing based upon the disparaging nature of the goat roof trade dress did not apply to the functionality claim.
Finally, it should also be noted that Bank appeared as an attorney on behalf of another individual who challenged the same registration in 2011. Standing in that case was based upon the petitioner’s desire to take photographs of goats upon roofs, and the petition was later amended to allege, among other claims, that the petitioner “enjoys the look and smell of grass roofs.” The TTAB found that the petitioner did not have standing for either the original petition or the amended petition.
…and fairy tales
In contrast, a 2018 TTAB decision held that standing did exist for an opposer whose basis for standing was merely as a consumer. Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (TTAB Dec. 28, 2018). In the RAPUNZEL case, the opposer alleged that she was a consumer in the marketplace for dolls and toy figures of fairy tales, as well as the mother of a young girl who purchases dolls, including fairy tale dolls. She claimed that registration of the mark RAPUNZEL for dolls would decrease the competition and increase the cost of goods associated with the character Rapunzel. (The opposer also happened to be a professor of trademark law, and was represented by a student legal clinic.)
The Board and the Federal Circuit have found that even challengers who were merely consumers may have an interest in preventing the owner of a mark from inhibiting competition and “maintain[ing] freedom of the public to use the language involved.”
Conclusion
Most oppositions and petitions to cancel are filed by competitors in the marketplace, and allege that the marks at issue cause a likelihood of confusion with the opposer’s or petitioner’s trademarks. However, the aforementioned cases are a reminder that, under certain circumstances, others may have legitimate interests in challenging registrations.