CAFC Affirms TTAB's "CRASH DUMMIES" No Abandonment Decision

In a precedential decision, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's ruling in Mattel, Inc. v. The Crash Dummy Movie, LLC, Opposition No. 91159002 (November 25, 2008) [not precedential]. The Board held that Mattel has rebutted the statutory presumption of abandonment of its CRASH DUMMIES mark by showing "reasonable grounds for the suspension and plans to resume use in the reasonably foreseeable future when the conditions requiring suspension abate." [TTABlogged here]. The CAFC agreed. The Crash Dummy Movie, LLC v. Mattel, Inc., 94 USPQ2d 1315 (Fed. Cir. 2010) [precedential]. [The oral argument may be heard here].


The TTAB found a prima facie case of abandonment of the CRASH DUMMIES marks based on three years of nonuse, beginning at the earliest on December 31, 1995 (when various licenses of the prior owner, Tyco, expired), and ending at Mattel’s actual shipment of CRASH DUMMIES toys in December 2003. [Mattel purchased Tyco in 1997]. However, the burden of persuasion on the issue of abandonment remained on Crash Dummies, LLC.

The CAFC found that "[s]ubstantial evidence supports the Board’s finding that Mattel intended to resume use of the CRASH DUMMIES marks during the contested time period." First, in 1998, it entered into negotiations with KB Toys concerning the latter's becoming the exclusive seller of CRASH DUMMIES toys. Second, "common sense supports the conclusion that Mattel would not have recorded Tyco’s trademark assignment with the USPTO in 1998 unless it intended to use the CRASH DUMMIES mark within the foreseeable future." [Really? - ed.]. Mattel's subsequent failure to file a Section 8 declaration "does not negate Mattel’s intent to resume use of the mark." Third, "Mattel’s research and development efforts from 2000 to 2003 indicate its intent to resume use of the marks." Mattel’s shipment of CRASH DUMMIES toys in December 2003 supported its testimony regarding research and development efforts in the early 2000’s.

Mattel needed sufficient time to research, develop, and market its retooled CRASH DUMMIES toys after acquiring Tyco’s CRASH DUMMIES marks in 1997. Despite Mattel’s delay in utilizing the marks for its toys, substantial evidence supports the Board’s finding that Mattel rebutted the statutory presumption of abandonment of the marks. Accordingly, the Board correctly held that CDM may not register its proposed mark CRASH DUMMIES for a line of games and playthings.

Text Copyright John L. Welch 2010.