Failure to File Section 8 Declaration of Use Does Not Negate Evidence of Intent Not to Abandon Mark

In THE CRASH DUMMY MOVIE, LLC v. MATTEL, INC. (CAFC 2009-1239, April 16, 2010), the Federal Circuit found that Mattel's failure to file a timely Section 8 declaration of use did not negate Mattel's intent to resume its use of the mark.


Mattel, via its predecessor in interest Tyco, had registered the mark CRASH DUMMIES for games and playthings in 1991.  Mattel failed to file a declaration under Section 8 and as a result, the USPTO canceled its mark on December 29, 2000.  On March 31, 2003 Crash Dummy Movie, LLC ("CDM") filed an intent-to-use trademark application for the mark CRASH DUMMIES for games and playthings.  Mattel opposed CDM's application, claiming priority, based on common law rights and an intent not to abandon its CRASH DUMMIES mark.

The Trademark Trial and Appeal Board ("TTAB") found a prima facia abandonment of the CRASH DUMMIES mark, based on three years of nonuse, beginning at the earliest on December 31, 1995, and ending at Mattel’s actual shipment of CRASH DUMMIES toys in December 2003.

However, the Board concluded that Mattel rebutted the presumption of abandonment of its common law trademark rights by showing “reasonable grounds for the suspension and plans to resume use in the reasonably foreseeable future when the conditions requiring suspension abate.”

The CAFC agreed with the TTAB and affirmed its holding based on the following factors:

First, in 1998, Mattel entered into discussions with KB Toys about becoming the exclusive retailer of CRASH DUMMIES toys. Mattel considered the relative merits of exclusive sales through KB Toys and the high cost of retooling Tyco’s product line to meet Mattel’s stringent safety standards.

Second, common sense supported 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.

Third, substantial evidence supported the Board’s finding that Mattel’s research and development efforts from 2000 to 2003 indicate its intent to resume use of the marks.

Although this case does not give reasons not to file the necessary maintenance and renewal documents, it does provide support for establishing an intent not to abandon a mark under common law.