Wednesday, December 24, 2008

"CRASH DUMMIES" Mark Survives Abandonment Claim, TTAB Sustains 2(d) Opposition to Same Mark for Same Goods

In this Section 2(d) opposition, the goods were in part identical (action figures) and the marks either identical (CRASH DUMMIES) or highly similar (THE INCREDIBLE CRASH DUMMIES). Confusion was likely, but did Opposer have priority based on use of its mark, or had Opposer's mark been abandoned, as Applicant contended? Answer: Opposer won. Mattel, Inc. v. The Crash Dummy Movie, LLC, Opposition No. 91159002 (November 25, 2008) [not precedential].

Opposer Mattel's predecessor-in-interest, Tyco, first used the CRASH DUMMIES marks in 1991, sold toys under the marks at least through 1994, and licensed the mark to 49 different entities, some of the licenses lasting until 1995 with a sell-off period of 4-6 months.

Tyco assigned the marks to Mattel in 1997, and Mattel acquired Tyco fully at the end of that year. Two registrations for the CRASH DUMMIES marks were allowed to expire. Due to the size of the acquisition, the integration of Tyco and Mattel "was accomplished over a long period of time." In 1998, Mattel was approached by a toy retailer about products under the CRASH DUMMIES marks, but Mattel could not sell them "due to retooling requirements."

In 2000, Mattel "began product research to produce toys under the CRASH DUMMIES mark culminating in the first shipment and sales in December 2003 and continuing through 2004."

Applicant filed its I-T-U application on March 31, 2003 and has not yet used the mark for the identified goods.

The Board observed that an opposer who relies on an unregistered mark in a 2(d) opposition must show that its term is distinctive of the goods. It found that the CRASH DUMMIES marks had acquired distinctiveness by 1995, based on the extent of use and licensing by Tyco.

As to the abandonment issue, Mattel was assigned the marks on February 12, 1997 and fully acquired Tyco on December 31, 2007. "[T]hus, at most, two years had passed between the end-term date of the licensing agreements and opposer's acquisition of Tyco." The record therefore "does not support prima facie abandonment" by Tyco.

Turning to Mattel's actions, because the first shipment of CRASH DUMMIES goods did not occur until December 2003, the period of use constitutes prima facie abandonment based on three years of nonuse. However, "Opposer has shown through its continuing efforts an intent to resume use and eventual resumption of use of the marks."

Mattel acquired more than 300 trademarks from Tyco in 1997. Although Tyco was not manufacturing CRASH DUMMIES products at the time, "it is common practice in the industry to 'recycle' the more popular toys based upon key play patterns." In 1998, Mattel considered supplying those toys, but could not due to the expense of re-tooling to meet its standards. In 2000, Mattel was "able to start the process that precedes retooling, and it began shipping the toys in December 2003. The Board ruled that "the residual goodwill combined with opposer's 'constancy of effort' and the industry practice to recycle brands clearly support a finding that opposer has not abandoned these marks."

In this case ... opposer has rebutted the presumption of abandonment by showing "reasonable grounds for the suspension and plans to resume use in the reasonably foreseeable future when the conditions requiring suspension abate." Silverman v. CBS, Inc., 870 F.2d 40, 9 USPQ2d 1778, 1773 (2d Cir. 1989) (citations omitted).

The Board therefore found that Mattel has priority of use, and that confusion is likely between the marks.

TTABlog comment: Just goes to show, the bigger they are, the harder it is to get them to fall.

Text Copyright John L. Welch 2008.


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