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.

BLACK MAIL refused for Lack of Proof of Bone Fide Intent to Use the Mark

Research in Motion Limited ("RIM"), well known owner of the BLACKBERRY mark, opposed the registration of the mark BLACK MAIL by the NBOR Corporation ("NBOR"). Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 to application Serial No. 77090059 filed on January 24, 2007.

Applicant filed the mark BLACK MAIL for: "computer software for facilitating interactive communication, namely, chat, electronic mail, voice, instant messages, text transfer, multi-media transfer, live collaboration, motion pictures, and sound over a global computer information network and other networks"

RIM opposed the registration of BLACK MAIL on two grounds,

• likelihood of confusion with its mark BLACKBERRY under 15 USC § 1052(d); and
  
• lack of a bone fide intent to use the mark in commerce.
  

The Trademark Trial and Appeal Board ("TTAB") did not reach the issue of likelihood of confusion because it found that NBOR could not establish by a preponderance of the evidence that it had a bone fide intent to use BLACK MAIL in commerce.

The TTAB listed the following as what NBOR did not provide to prove a bone fide intent to use the mark:

• it has not offered any goods or services for sale under the involved mark;
  
• the mark has not been used and no plans have been made as to how the mark may be used;
  
• there is no projected date of first use in commerce;
  
• no channels of trade have been formulated or planned for the future;
  
• the classes of consumers and geographic areas of sales have not yet been determined;
  
• applicant has not undertaken any market studies, surveys, or focus groups; and
  
• no documents exist regarding plans for expansion and growth of the product and service lines under the mark.
  

NBOR had previously filed two trademark applications for the same mark and both applications were abandoned because no Statements of Use were filed. NBOR's argued that its previously filed applications and twenty-three letters or emails to its attorney relating to the present and applications a bone fide intent to use the mark. The TTAB rejected its argument:

Evidence bearing on bona fide intent is "objective" in the sense that it is evidence in the form of real life facts and by the actions of the applicant, not by the applicant's testimony as to its subjective state of mind. That is, Congress did not intend the issue to be resolved simply by an officer of applicant later testifying, "Yes, indeed, at the time we filed that application, I did truly intend to use the mark at some time in the future."

J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §19:14 (4th ed. 2009).

This case provides a reminder that a trademark application under Section 1(b) of the Lanham requires objective documentation of a bone fide intent to use the mark no later than the beginning of the opposition period and objective steps should be taken to use the mark at the time the application is filed.