Mattel, Inc.v.The Crash Dummy Movie, LLC

Trademark Trial and Appeal Board

Nov 25, 2008

No. 91159002 (T.T.A.B. Nov. 25, 2008)

Oral Hearing: Mailed:
June 19, 2008 November 25, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Mattel, Inc.
v.
The Crash Dummy Movie, LLC
_____

Opposition No. 91159002
to application Serial No. 76504400
filed on March 31, 2003
_____

Jill M. Pietrini of Mannatt, Phelps & Phillips, LLP for
Mattel, Inc.

Ted F. Gerdes of Gerdes & Associates and David J. Kera of
Oblon, Spivak, McClelland, Maier & Neustadt, PC for The
Crash Dummy Movie, LLC.
______

Before Walters, Kuhlke and Cataldo, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, The Crash Dummy Movie, LLC, seeks
registration of the mark CRASH DUMMIES (in typed form) for
goods ultimately identified in the application as “games and
playthings, namely, action figures, toy cars, crib toys,
puppets, marionette puppets, toy vehicles, radio controlled
toy vehicles, model vehicles play sets for toy vehicles,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91159002
2
play sets for toy vehicles, play set buildings, houses,
stand alone video game machines, board games, toy pedal
cars, skateboards, toy banks, toy rockets and accessories
therefore sold as sets, plush toys, amusement park rides,
beach toys, inflatable toys, toy racing sets, in line
skates, protective padding for skateboarding and in line
skating, toy foam weapons, toy candy dispensers, toy gloves,
costume masks, hula dolls, toy goggles, water squirting toys
and toy catapults” in International Class 28. The
application, filed on March 31, 2003, is based on an
allegation of a bona fide intention to use the mark in
commerce under Trademark Act Section 1(b), 15 U.S.C.
§1051(b).
Opposer, Mattel, Inc., opposed registration of
applicant’s mark on the grounds that, as applied to
applicant’s goods, the mark so resembles opposer’s
previously used marks CRASH DUMMIES and THE INCREDIBLE CRASH
DUMMIES (“CRASH DUMMIES Marks”) for “action figures and
playsets, including accessories” as to be likely to cause
confusion, to cause mistake, or to deceive under Trademark
Act Section 2(d), 15 U.S.C. §1052(d). In addition, opposer
alleges that applicant entered into an “option agreement”
with opposer’s predecessor-in-interest for “motion picture
and television rights to the CRASH DUMMIES Property” in
which applicant “recognized Mattel’s predecessor’s rights in
Opposition No. 91159002
3
the CRASH DUMMIES Marks and toy merchandising rights, inter
alia, were expressly excluded from the Option.”1 Notice of
Opposition ¶¶ 13, 14 and 15.
Applicant filed an answer by which it denied the
salient allegations and asserted the affirmative defense
that opposer did not acquire rights in the marks inasmuch as
the predecessor-in-interest had already abandoned the marks
and to the extent opposer acquired such rights they have
abandoned them through non use of the marks.
The evidence of record consists of the pleadings
herein; the file of the opposed application; the testimony
depositions (with exhibits) taken by opposer of Peter L.
Frank, a Marketing Manager employed by opposer, Robert D.
Walsh, a paralegal employed by opposer, and Adelle Jones, a
paralegal with Manatt, Phelps & Phillips, LLP (opposer’s
outside counsel) and former executive secretary with
opposer. In addition, opposer submitted notices of reliance
upon applicant’s discovery responses and printed
publications. Applicant submitted a notice of reliance on
opposer’s cancelled registrations and the assignment
abstract of title for each registration.
EVIDENTIARY OBJECTIONS

1 During oral argument opposer asserted that applicant is
estopped from challenging opposer’s trademark rights based on the
prior option agreement. However, the pleadings do not
sufficiently raise the issue of estoppel nor was this issue tried
by implied consent; therefore, we have given it no consideration.
Opposition No. 91159002
4
Within its main brief applicant objected to a large
portion of opposer’s evidence. The various grounds of
objection include hearsay, lack of personal knowledge
(incompetency of the witnesses), and evidence not admissible
by notice of reliance.
Applicant objects to exhibits 8-140 on the basis that
they are “inadmissible as evidence” because each of these
printed publications is “hearsay for the truth of the matter
for which it was introduced.” Br. p. 3. Further, as to
exhibits 10, 31 and 32 applicant asserts that they are
irrelevant inasmuch as they “purport to report events or
facts in a foreign country.” Br. p. 4. These objections
are overruled to the extent that the matter is admissible
and has been made properly of record by way of notice of
reliance. This issue goes to the probative value of the
individual exhibits and we have not considered them for the
truth of the matter asserted. However, they may be used to
show, for example, that opposer advertised the goods under
the mark in the publications on those dates. See Gravel
Cologne, Inc. v. Lawrence Palmer, Inc., 469 F.2d 1397, 176
USPQ 123 (CCPA 1972); Wagner Electric Corp. v. Raygo Wagner,
Inc., 192 USPQ 33, 36 n. 10 (TTAB 1976). In addition, they
may be used to show the manner in which the words CRASH
DUMMIES are used in an article and of the fact that the
public has been exposed to the articles and may be aware of
Opposition No. 91159002
5
the information contained therein. Harjo v. Pro-Football
Inc., 50 USPQ2d 1705, 1721 n. 50 (TTAB 1999).
The objection to exhibit nos. 141 through 143, is
sustained to the extent that they are of little probative
value, however, they are admissible. In re Bayer
Aktiengesellschaft, 82 USPQ2d 1828 (Fed. Cir. 2007)
(evidence of registration of ASPIRINA in another country is
of little value to our analysis of its entitlement to
protection in the United States); Aktieselskabet af 21.
November 2001 v. Fame Jeans Inc., 77 USPQ2d 1861 (TTAB
2006). In arguing against the objection, opposer cites to
several cases that speak to the possible probative value of
evidence of foreign origin (registrations, printed
publications or websites). In general, these cases involve
consumer perception in the context of a descriptiveness or
genericness claim or refusal. Here, applicant is relying on
them in the context of rebutting an abandonment claim to
show residual goodwill and intent to resume use in the
United States. In such a context this type of evidence has
limited probative value.
Applicant’s objection to exhibit nos. 144 through 153
and 155 through 161 is sustained. Documents received in
response to requests for production are not proper matter
for a notice of reliance absent an admission as to their
authenticity or admissibility. Further, the interrogatory
Opposition No. 91159002
6
responses to which opposer refers in response to applicant’s
objection do not serve to save these documents. Under the
exception cited by applicant the interrogatory response
itself must consist of the documents. See Trademark Rule
2.120(j)(3)(i) (“...a copy of the interrogatory and an
answer thereto with any exhibit made part of the answer...”)
In addition, the responses do not reference the specific
documents.
The option agreement identified in exhibit no. 34 has
been authenticated by applicant in its response to admission
request nos. 68 and 69. The denial of admission request no.
74 does not undo the identification and authentication of
that document but rather is applicant’s opinion as to its
relevancy. In addition, Mr. Walsh’s testimony further
serves to identify and authenticate that agreement.
Applicant asserts that matter appearing in a letter
submitted under notice of reliance in exhibit 161 serves as
an admission against interest. The letter is not proper
matter for a notice of reliance, as noted above, and the
quote from the letter is hearsay and may not be considered
for the truth of the matter asserted. Thus, it cannot be
considered an admission against interest. Moreover, even if
we were to consider it as an admission it only admits that a
Mr. Davis is “informed” that “The Incredible Crash Dummies”
action figures had not been marketed since the early 1990’s.
Opposition No. 91159002
7
Applicant’s objections to the testimony of Mr. Frank
and Mr. Walsh on the basis that they lack personal knowledge
are overruled. We find both witnesses sufficiently
competent to testify on the matters covered in the
depositions. Moreover, applicant’s objections that various
documents presented in the exhibits do not satisfy the
business records exception were waived during testimony.
Frank Test. pp. 22-23; Walsh Test. p. 34.
To the extent an objection has not been specifically
addressed above, we have considered the evidence, keeping in
mind the objections, and have accorded whatever probative
value the testimony and evidence merits.
STANDING
As discussed below, opposer has shown that it intended
to resume use and in fact did resume use of the CRASH
DUMMIES Marks in connection with a variety of toys,
including action figures and has demonstrated a real
interest in preventing registration of the proposed mark.
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed.
Cir. 1999); Jewelers Vigilance Committee, Inc. v. Ullenberg
Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Thus, opposer has established its
standing.
Opposition No. 91159002
8
LIKELIHOOD OF CONFUSION/PRIORITY
The goods in issue are, at least in part, identical
(action figures) and the marks are identical (CRASH DUMMIES)
or highly similar (THE INCREDIBLE CRASH DUMMIES). Thus,
there can be no dispute that a likelihood of confusion
exists and, indeed, the parties do not dispute this. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) (two key
considerations are the similarities between the marks and
the similarities between the goods).
We turn then to the question of priority. Because
opposer has not pleaded any registrations, opposer must
prove common law rights prior to applicant’s priority date.
Hydro-Dynamics Inc. v. George Putnum and Company Inc., 811
F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987). In defense
of its position, applicant has asserted that opposer or
opposer’s predecessor-in-interest abandoned any rights it
had in the CRASH DUMMIES Marks.
Certain testimony and exhibits were designated as
confidential and we will refer only to the evidence that
opposer discusses in its brief.
Findings of Fact
Opposer’s predecessor-in-interest, TYCO, first used
the CRASH DUMMIES Marks at least as early as December 27,
Opposition No. 91159002
9
1991. Frank Test. pp. 145-153 Exh. 48. The use included a
broad advertising campaign that included several television
commercials and mini cartoons. Frank Test. pp. 140-144
Exhs. 45-46. In 1993, Fox aired an animated television
special in association with based upon the CRASH DUMMIES
characters. Frank Test. pp. 132-134 Exh. 44. From January
through July 1992, TYCO had $15 million in sales
domestically of the CRASH DUMMIES products and TYCO expanded
the line to include 37 products in 1993. Frank Test. pp.
149-150 Exh. 48. Because 55% of sales occurred in November
and December the total year sales likely amounted to $50
million. Frank Test. pp. 137-139, 149-150 Exhs. 45, 48.
TYCO sold toys under the CRASH DUMMIES Marks at least
through 1994. Frank Test. p. 18. In 1995, applicant
entered into an option agreement with TYCO regarding the
production of a motion picture based on TYCO’s CRASH DUMMIES
which expired on July 14, 1996. Walsh Test. pp. 26-28 Exh.
34. TYCO entered into licenses with 49 different entities
for use of the CRASH DUMMIES Marks in connection with a
variety of consumer items. Walsh Test. pp. 19-25. Exh. 32.
Some of the licenses lasted until December 31, 1995 and had
a sell off period of 4-6 months. Id. TYCO assigned its
trademarks to opposer on February 12, 1997. Opposer fully
acquired TYCO on December 31, 1997. Walsh Test. pp. 28-30.
The list of over 300 trademarks acquired by opposer from
Opposition No. 91159002
10
TYCO included the CRASH DUMMIES Marks and Registration Nos.
1809338 and 1773754. Frank Test. pp. 23-24 Exh. 38.
Opposer did not file the Section 8 declaration of continuing
use for Reg. Nos. 1809338 and 1773754 and these
registrations were cancelled. Applicant’s Notice of
Reliance. Due to the size of the acquisition, the
integration of the two businesses was accomplished over a
long period of time. Frank Test. p. 35. In 1998, opposer
was approached by a toy retailer to sell products under the
CRASH DUMMIES Marks but opposer could not do so at that time
due to retooling requirements. Frank Test. p. 37.
Beginning in 2000, opposer began product research to produce
toys under the CRASH DUMMIES marks culminating in the first
shipment and sales in December 2003 and continuing through
2004. Frank Test. pp. 55-56. In 2003-2004, opposer ran
short CRASH DUMMIES animations on television following
Saturday morning cartoons. Frank Test. pp. 60-62.
Previously produced TYCO toys under the CRASH DUMMIES Marks
are currently available for sale on the Internet. Jones
Test. pp. 54-57 Exhs. 25-26. Applicant filed its
application for the mark CRASH DUMMIES based on an intention
to use the mark in commerce on March 31, 2003. Applicant
has not used CRASH DUMMIES in connection with the goods
identified in the application. Opposer’s Notice of Reliance
Exh. 2 Response to Request for Admission No. 12.
Opposition No. 91159002
11
Analysis
“Under the rule of Otto Roth, a party opposing
registration of a trademark due to a likelihood of confusion
with his own unregistered term cannot prevail unless he
shows that his term is distinctive of his goods, whether
inherently or through the acquisition of secondary meaning
or through ‘whatever other type of use may have developed a
trade identity.’” Towers v. Advent Software Inc., 913 F.2d
942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990), citing, Otto
Roth & Co. v. Universal Food Corp., 640 F.2d 1317, 209 USPQ
40, 43 (CCPA 1981). Thus, in order to prevail, opposer must
establish that its CRASH DUMMIES Marks are distinctive,
either inherently or through acquired distinctiveness, and
that its use predates applicant’s filing date of March 31,
2003. As discussed below, based on this record we find that
opposer has proven by a preponderance of the evidence that
it continues to own the CRASH DUMMIES Marks and it has not
abandoned these marks.
Neither party addressed the question of the marks’
distinctiveness, however, based on the extent of use by
opposer’s predecessor, which included broad television
advertising and an extensive licensing regime, we find that
the CRASH DUMMIES Marks CRASH DUMMIES and INCREDIBLE CRASH
DUMMIES did, at a minimum, acquire distinctiveness in
connection with toys by 1995, prior to opposer’s acquisition
Opposition No. 91159002
12
of TYCO. While the use was predominantly in the form of a
logo mark, the phrase CRASH DUMMIES had a separate
commercial impression due to its prominent placement on
product packaging. In addition, the additional wording THE
INCREDIBLE, appearing in the marks with the remaining phrase
CRASH DUMMIES, presents a separate commercial impression
from the design. Finally, there is nothing in the record to
rebut the evidence that supports this finding.2
The Trademark Act provides that “[n]on use for 3
consecutive years shall be prima facie evidence of
abandonment.” 15 U.S.C. §1127. Introduction of evidence of
nonuse of the mark for three consecutive years constitutes a
prima facie showing of abandonment and shifts the burden to
the party contesting the abandonment to show either evidence
to disprove the underlying facts triggering the presumption
of three years nonuse, or evidence of an intent to resume
use to disprove the presumed fact of no intent to resume
use. Imperial Tobacco Ltd. v. Philip Morris Inc., 889 F.2d
1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990).
While toys may not have been sold by TYCO to its
retailers after 1994 the toys would have remained on retail

2 The only evidence of record that touches on the distinctiveness
of the phrase CRASH DUMMIES consists of the two prior cancelled
registrations wherein the wording CRASH DUMMIES is registered
based on acquired distinctiveness under section 2(f) in Reg. No.
1809338 and disclaimed in Reg. No. 1773754. While this could
bring into question the inherent distinctiveness of the phrase it
does not undermine a finding of acquired distinctiveness.
Opposition No. 91159002
13
shelves through the spring of 1995. Moreover, licenses for
other related or accessory goods for sale under the CRASH
DUMMIES Marks continued until December 31, 1995, with a four
month sell-off period. Therefore, for purposes of
calculating a prima facie abandonment we begin with December
31, 1995, at the earliest. Cf. American Motors Corp. v.
Action–Age, Inc., 178 USPQ2d 377, 378 (Sales of accessory
items, among other activities, supported finding that record
fell short of establishing abandonment). Opposer was
assigned the marks on February 12, 1997 and fully acquired
TYCO on December 31, 1997, thus, at most, two years had
passed between the end-term date of the licensing agreements
and opposer’s acquisition of TYCO. In view thereof, the
record does not support prima facie abandonment by opposer’s
predecessor.3
Turning then to opposer’s actions after having acquired
these marks (both the registrations and its predecessor’s
common law rights), the next actual shipment and sale of
goods under the CRASH DUMMIES Marks does not occur until
mid-December 2003. This period of nonuse presents prima
facie abandonment based on three years of nonuse. However,

3 Even if we used December 1994 as the date of TYCO’s last use,
the licensing that extended to December 1995 with the sell-off
period through the spring of 1996 along with the motion picture
negotiations during 1995 and 1996 would evidence TYCO’s intent to
resume use. See General Motors Corp. v. Aristide & Co.,
Antiquaire de Marques, 87 USPQ2d 1179, 1183 (TTAB 2008), citing
Opposition No. 91159002
14
opposer has shown through its continuing efforts an intent
to resume use and eventual resumption of use of the marks.
Compare Parfums Nautee Ltd. v. American International
Industries, 22 USPQ2d 1306, (TTAB 1992) (defendant’s witness
not aware of any activity regarding plans to use mark and no
demonstration of “constancy of effort” to market it thus no
evidence of intent to resume meaningful commercial use). We
do not find the period of nonuse under the circumstances of
this case to have worked an abandonment of common law
trademark rights.
In 1997, opposer acquired over 300 trademarks from
TYCO, a very large toy company at that time. At the time of
acquisition, it appears from the record that TYCO was not
manufacturing or selling toys under the CRASH DUMMIES Marks.
However, it is common practice in this industry to “recycle”
the more popular toys based around key play patterns. Frank
Test. p. 43; Walsh Test. p. 32.
A year later in 1998 opposer considered manufacturing
and selling CRASH DUMMIES toys again to supply an interested
party, but could not at that time due to the expense of
retooling. The tooling it acquired from the predecessor-in-
interest did not meet opposer’s standards. Frank Test. p.
37. Applicant characterizes Mr. Frank’s testimony about the
licensing inquiry and opposer’s inability to answer that

Sands, Taylor & Wood Co. v. The Quaker Oats CO., 978 F.2d 947, 24
Opposition No. 91159002
15
inquiry based on the required retooling investment as proof
of opposer’s intent not to resume use. App. Br. p. 13.
Taking into account the totality of the evidence we cannot
agree with that characterization. As noted above, in 1998,
opposer had only recently acquired over 300 brands and was
in the middle of merging two large companies. The fact that
it “declined” to retool at that particular moment does not
evince an intent not to resume. At most the testimony
supports a finding that opposer was not ready or able to
retool for that particular product line at that time. In
2000, opposer was able to start the process that precedes
retooling, which consisted of research and development.
Within three years, opposer began manufacturing toys under
the CRASH DUMMIES Marks and shipped them in December 2003.
In addition, during the period 1997-2004 opposer was faced
with the task of integrating these two large companies. In
fact, it was not until 2004 that the prior company’s offices
were moved from New Jersey to California. Moreover, while
residual goodwill alone cannot defend or maintain a
registration, Parfums Nautee, supra, 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.4 While

USPQ2d 1001, 1009 (7th Cir. 1992).
4 Opposer relies on Mattel, Inc. v. Funline Merchandise Co., 18
USPQ2d 1372 (TTAB 2006) for the proposition that sales in the
Opposition No. 91159002
16
we recognize that an industry’s practice of recycling brands
“does not exempt the industry in toto from the normal
statutory presumption that trademarks can become abandoned
and that trademark owners must have an intent to resume use
and an explanation for any nonuse,” opposer has provided
evidence of intent to resume use and explanations for the
nonuse. General Motors at 1183.
During oral argument applicant relied on the recently
issued opinion General Motors Corp. v. Aristide & Co.,
Antiquaire de Marques, supra. In that case, the Board found
that the plaintiff had abandoned use of its mark LASALLE and
dismissed the opposition against registration of defendant’s
mark LA SALLE for motor vehicles. That case is
distinguishable on its facts. In General Motors, the
applicant’s priority date was December 15, 2003 and the
opposer had not sold automobiles under its mark since 1940.
The record presented prima facie evidence of nonuse for more
than three years (60 years) and was devoid of any evidence
“that [plaintiff] had used the LaSalle mark on any goods
during this period [or] any explanation for its plans to

secondary market supported plaintiff’s assertion of trademark
rights. However, in that case opposer was relying on a pleaded
registration and there was no abandonment claim. As stated in
General Motors, “residual good will is not sufficient to avoid a
finding of abandonment where the goodwill is generated through
subsequent sales of a product by distributors or retailers.”
General Motors, at 1183 citing Societe des Produits Marnier
Lappostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241, 1244 n.
5 (TTAB 1989).

Opposition No. 91159002
17
resume use of this particular mark on vehicles.” Id. at
1182.
In this case, as discussed above, 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).
Inasmuch as applicant’s mark CRASH DUMMIES is identical
to opposer’s mark CRASH DUMMIES and highly similar to
opposer’s mark THE INCREDIBLE CRASH DUMMIES, the goods are
identical and otherwise related, there is a likelihood of
confusion. Further, opposer has established priority of
use. In view thereof, opposer has proven its claim under
Section 2(d) of the Trademark Act.

Decision: The opposition is sustained on the claim
under Section 2(d).