Federal trademark registration provides a number of advantages (mostly presumptive evidentiary advantages in Court) to the trademark owner, and, because of those advantages, registration is unquestionably recommended. However, the fact that a trademark is registered does not mean that the registrant is in the clear and immune from litigation. Nor does the fact that a potential trademark is unregistered mean it is available for the taking.
As an example, take Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387 (Fed. Cir. 2010). Crash Dummy Movie, LLC (“CDM”) sought to register the mark CRASH DUMMIES for games and toys. Mattel had previously registered the mark CRASH DUMMIES for action figures and playlets, but that registration was cancelled, because Mattel failed to file a Section 8 declaration of use and/or excusable nonuse for the mark.
Mattel opposed CDM’s registration. CDM’s argument that Mattel has abandoned the trademark was unconvincing to the Trademark Trial and Appeal Board, who sustained Mattel’s opposition to CDM’s application. On appeal, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB’s decision stating:
Although Mattel later allowed its trademark registrations to lapse, cancellation of a trademark registration does not necessarily translate into abandonment of common law trademark rights. Nor does it establish its owner’s lack of intent to use the mark. Therefore, Mattel’s failure to file a timely Section 8 declaration of use and/or excusable nonuse for the marks does not negate Mattel’s intent to resume use of the mark.
Id. at 1391.
This point is crucial. The mere fact that a company’s trademark registration was cancelled does not mean that its common law rights to the trademark were abandoned. While the company, through cancellation, may have lost some of the benefits of registration discussed above, unless it has completely abandoned the use of the trademark, the company still may enjoy common law trademark rights, including its ability to enjoin the use of the trademark by a subsequent user or, in this case, oppose the registration by an applicant in the TTAB. Thus, the mere fact that a trademark registration is cancelled may merely mean the company forgot to renew it–not that it decided to abandon it altogether.
Contact attorney Drey Cooley today, to speak to an experienced trademark litigation lawyer in St. Louis, Missouri. You may also view more information concerning Drey’s legal services here. The content on this post does not constitute legal advice and is for informational purposes only. You should not act upon the information presented on this website without seeking the advice of legal counsel.