Hasbro, Inc.v.Mitchell W. Goldman

Trademark Trial and Appeal Board

Aug 29, 2005

No. 91152638 (T.T.A.B. Aug. 29, 2005)

Mailed:
August 29, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

HASBRO, INC.

v.

MITCHELL W. GOLDMAN
_____

Opposition No. 91152638
to Application Serial No. 76206220
filed on 02/07/2001
_____

Kim J. Landsman & Nicole G. Tell of Patterson, Belknap, Webb
& Tyler for Hasbro, Inc.

Marsha G. Gentner of Jacobson Holman PLLC for Mitchell W.
Goldman.
______

Before Hairston, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Hasbro, Inc. (Hasbro), opposer and counterclaim
respondent, has opposed the intent-to-use application of
Mitchell W. Goldman (Goldman), applicant and counterclaim
petitioner, filed on February 7, 2001. Goldman has applied
to register COTTON CANDY CLOUD CASTLE on the Principal
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91152638
2
Register for “toys, namely, dolls, dollhouses, doll cases,
doll furniture, action figures and cases and accessories
therefor, plush toys, bath toys, puppets, children[‘s] (sic)
multiple activity toys, ride-on toys, musical toys, toy
building and construction blocks, children's wire
construction and art activity toys, construction toys, game
tables, children's activity tables containing manipulative
toys which convert to easels, cube-type, jigsaw, and
manipulative puzzles, doll costumes, costume masks, battery-
powered computer game with lcd screen which features
animation and sound effects, board games, electronic
educational game machines for children, and manipulative
games, in International Class 28.1 The Goldman application
was published for opposition on March 26, 2002, and Hasbro
filed its opposition on July 24, 2002.
Hasbro alleges likelihood of confusion under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d) as the ground
for opposition.2 In asserting this ground Hasbro relies on

1 When published the application also included services in
International Class 41, specifically, “entertainment, namely,
production of interactive, animated stories and programs.”
Hasbro did not oppose the application in Class 41, and a
registration subsequently issued for the Class 41 services as
Registration No. 2,828,465.
2 In the Notice of Opposition, Hasbro also referred to Section
2(a) of the Trademark Act, 15 U.S.C. § 1052(a), in an apparent
attempt to assert “false association” between the Goldman mark
and Hasbro as an additional ground for opposition. However,
Hasbro did not present any evidence or argument in support of
such a ground. Therefore, we conclude that Hasbro has abandoned
any ground under Section 2(a).

Opposition No. 91152638
3
its ownership of U.S. Registration No. 1,296,526, issued
September 18, 1984, for COTTON CANDY for goods in
International Class 28 identified as “toy pony” as well as
common law rights based on use of the registered COTTON
CANDY mark.3 The Hasbro COTTON CANDY registration, which
issued on September 18, 1984, specifies a date of first use
of October 4, 1982; the registration has been maintained to
the present.
Goldman has denied the essential allegations in
Hasbro’s notice of opposition and counterclaimed for
cancellation of the Hasbro COTTON CANDY registration on the
grounds that: (1) Hasbro has abandoned the COTTON CANDY
mark; (2) Hasbro committed fraud in Hasbro’s filings of its
“Combined Declarations under Sections 8 and 15” with respect
to the Hasbro registration on September 26, 1989; and (3)
Hasbro failed to file a specimen showing “current” use of
the COTTON CANDY mark as of the date the declarations were
filed. Hasbro has denied the essential allegations in the
Goldman counterclaim.
The record consists of: the pleadings; the PTO files
for the opposed Goldman application and the Hasbro

3 In its testimony and briefs Hasbro makes several references to
its use of certain “Castle” marks, including MY LITTLE PONY DREAM
CASTLE and CELEBRATION CASTLE. In its pleadings Hasbro has not
alleged a likelihood of confusion with respect to or otherwise
even mentioned any “Castle” mark. Accordingly, we have not
considered any Hasbro claims with respect to likelihood of
confusion with any “Castle” mark in this decision.
Opposition No. 91152638
4
registration which is the subject of the counterclaim for
cancellation; and the transcript of the testimonial
deposition of Hasbro witness, Valerie Jurries, Hasbro’s Vice
President of Girls’ Toys Marketing, including Hasbro’s
Exhibits 1-38 and Goldman’s Exhibits 1-7 offered during the
examination and cross examination of Ms. Jurries.
As a preliminary matter, Goldman objected to Hasbro’s
reliance on Hasbro’s COTTON CANDY registration in the
opposition based on Hasbro’s alleged failure to make a title
and status copy of the registration properly of record in
the proceeding. Although Hasbro did, in fact, fail to do
so, the registration is of record by operation of the
Trademark Rules as a result of Goldman’s assertion of a
counterclaim for cancellation of the Hasbro registration in
the proceeding. Specifically, Trademark Rule 2.122(b)(1),
37 C.F.R. § 1.122(b)(1), provides as follows:
(b) Application files. (1) The file of each application
and registration specified in a notice of interference,
of each application or registration specified in the
notice of a concurrent use registration proceeding, of
the application against which a notice of opposition is
filed, or of each registration against which a petition
or counterclaim for cancellation is filed form part of
the record of the proceeding without any action by the
parties and reference may be made to the file for any
relevant and competent purpose. (emphasis provided)

Under the rule, the file related to the Hasbro registration
becomes part of the record of the proceeding because it is
the subject of a counterclaim for cancellation in the
proceeding. It is not “of record” merely for the purpose of
Opposition No. 91152638
5
the cancellation counterclaim, as Goldman asserts, but for
the purpose of the proceeding as a whole, including the
opposition.
History of the Hasbro COTTON CANDY Mark
Hasbro presented the history of its use of the
registered COTTON CANDY mark through Ms. Jurries’ testimony.
Hasbro publicized the introduction of its COTTON CANDY mark
in late 1982 in its catalog and first shipped products under
the COTTON CANDY mark in 1983 in conjunction with Hasbro’s
broader introduction of the My Little Pony line of products.
Ms. Jurries began working with the My Little Pony line in
1988. The line was initially directed to girls in the 3 to
10 age range and later to the 3 to 6 range. Hasbro applied
the COTTON CANDY mark to a specific toy pony which was one
of the first group of six toy ponies in the My Little Pony
line. Over time Hasbro expanded its stable of toy ponies to
include over one hundred distinct toy ponies. Hasbro gave
each toy pony a different name which it used as the
trademark for each of the toy ponies in the My Little Pony
line.
According to Ms. Jurries, the toy ponies “came in many
different varieties, many different sizes, many different
scales.” The initial product was a “roto-molded” pony
figure formed from two pieces in a pink pastel color with
combable hair made from nylon. The initial product was
Opposition No. 91152638
6
available as part of an “assortment” which included six toy
ponies, each with its own name, and each packaged in a
separate blister pack. Each of the six, including the
COTTON CANDY toy pony, was also sold individually in the
blister packs. The initial My Little Pony line also
included playsets based on the same theme, including the MY
LITTLE PONY DREAM CASTLE playset which was introduced in
1984; the playsets were sold separately, but intended for
use with the toy ponies. The line also included “softies,”
that is, plush versions of the toy ponies, including a
COTTON CANDY product introduced in 1984, and “baby pony”
versions, smaller roto-molded toy ponies, again including a
COTTON CANDY product introduced in 1985.
Hasbro offered products in the My Little Pony line
continuously from 1983 through 1992, but the sales of the
products under the COTTON CANDY mark continued only through
Hasbro’s 1987 distribution.4 The sales of toy ponies under
the COTTON CANDY mark for each of the years from 1983

4 Goldman objected to certain evidence with regard to Hasbro’s
use of the COTTON CANDY mark. Specifically, Goldman objected to
the use of Hasbro catalogs because only certain pages showing the
COTTON CANDY products were produced, but not the entire catalogs.
Viewing the evidence of “use” as a whole, that is, Ms. Jurries
testimony, excerpts from catalogs, examples of packaging, sales
and advertising figures, we conclude that Hasbro has shown use of
COTTON CANDY on “toy ponies” from 1983 through 1987, a point
which Goldman does not seriously dispute. The relevant pages of
the catalogs which Hasbro provided were adequate for the purpose
of confirming this use. We do not need the entire catalogs for
this purpose, and therefore, we overrule Goldman’s objections to
the catalog evidence.

Opposition No. 91152638
7
through 1987 under the COTTON CANDY mark were commercially
significant, consistent with Hasbro’s status as a major
player in the industry.5 Hasbro sold the products through
numerous major toy and general merchandise retail outlets.
As one would expect with such products, the sales rose and
ebbed over this period. Throughout the period, Hasbro added
new toy ponies under new names and marks to the line. Ms.
Jurries indicates that the new ponies were intended to be
“additives” and not substitutes for the existing toy ponies.
Ms. Jurries’ testimony likewise indicates that Hasbro
engaged in significant advertising for the My Little Pony
line in general during the 1983 through 1992 period. Ms.
Jurries testified that COTTON CANDY appeared in 1983
commercials but otherwise Hasbro provided no specific
evidence for the remainder of the 1983 through 1987 period
as to the extent to which COTTON CANDY toy ponies were
present or featured in the advertising or the extent to
which, if at all, the COTTON CANDY mark was either seen or
heard through this advertising.
As noted, Hasbro continued its sales of products in the
My Little Pony Line through 1992. Hasbro “relaunched” and
sold certain of the products in the My Little Pony line from
1996 through 1999. However, the testimony indicates that

5 Hasbro has provided detailed unit sales and revenue figures
under a claim of confidentiality. It is not necessary to discuss
the specific figures for the purposes of this opinion.
Opposition No. 91152638
8
Hasbro discontinued all sales of toy ponies under the COTTON
CANDY mark after 1987 and did not sell products under the
COTTON CANDY mark during the “relaunch” from 1996 through
1999.
Ms. Jurries testified that Hasbro also produced a movie
and two television specials and television programs based on
the My Little Pony line. The movie appeared in 1984, and
one television special aired in 1986 and another in 1987.
Ms. Jurries also states, “. . . and from those television
specials we worked to create episodes of My Little Pony and
Friends that were aired in the 80s.” Hasbro later produced
a video based on these programs and the video sold at retail
in significant commercial quantities in 1991. As noted, Ms.
Jurries, Hasbro’s only witness, did not become involved with
the My Little Pony line until 1988. As a result, Ms.
Jurries had no involvement with the production of the movie
or television specials and programs. Hasbro was unable to
locate any copies of the movie, television specials or
television programs as aired in the 1980s. Hasbro produced
only one synopsis of one television program.
Ms. Jurries was involved with the preparation of and
viewed the My Little Pony video which was sold in 1991 and
testified that COTTON CANDY “was featured” in the video.
Ms. Jurries does not explain what she meant by “featured.”
Once again, Hasbro was unable to locate and did not produce
Opposition No. 91152638
9
a copy of the video. Ms. Jurries also testified that she
viewed the television specials in the process of preparing
the video. Even as to the video, the record is unclear as
to whether Hasbro is alleging that the COTTON CANDY
character was merely pictured or whether any verbal
references were made to COTTON CANDY.
Goldman has objected to all testimony with regard to
the movie, television specials, television programs and the
video due to Hasbro’s failure to produce copies of any of
these materials. The only “evidence” we have of these
activities is one synopsis of a program from which the video
was allegedly derived and the testimony of a witness who had
limited involvement with the totality of the activities and
materials, involvement which took place more than ten years
before the testimony was taken. Most importantly, we note
that Hasbro has neither alleged nor attempted to show any
trademark use of COTTON CANDY in conjunction with the movie,
television specials, television programs or videos. The
limited evidence available suggests that any use which did
occur was merely and at most use of COTTON CANDY as a
character or character name, and not as mark for any
product, and certainly not as a mark for “toy ponies” in
International Class 28. While we will not exclude this
evidence as Goldman suggests, we attach very little weight
Opposition No. 91152638
10
to the evidence in view of the many limitations on its
probative value.
According to Ms. Jurries, Hasbro decided to “rest” the
My Little Pony line of products in its entirety in 1992.
Ms. Jurries testified that she was involved with that
decision and explained the decision as follows, “. . . we
always felt that the attributes that were associated with My
Little Pony could be brought back into the marketplace at
the proper time, so we always looked at My Little Pony as a
core brand for us. We were just recommending that we
allocate our resources differently for those years.” In
this and other discussions of the interruptions in sales and
future plans for the My Little Pony line, Ms Jurries makes
no mention of the COTTON CANDY mark or of any plans with
regard to any intended future uses of the COTTON CANDY mark.
As noted, Hasbro reintroduced the Little Pony line in
1996 and continued to sell products in the line through 1999
when it once again ceased sales. Hasbro has not alleged any
use of the COTTON CANDY mark on toy ponies or any other
product during this period.
Hasbro again began to sell products in the My Little
Pony line in 2003. The 2003 products included a “toy pony”
under the COTTON CANDY mark and a playset under the COTTON
CANDY CAFE mark. While Hasbro alleges that it showed the
products to certain retailers, including Target, in 2002,
Opposition No. 91152638
11
there is no evidence that Hasbro either promoted the COTTON
CANDY mark to potential customers or sold products under the
COTTON CANDY mark until 2003.
Ms. Jurries also provided testimony regarding the
collectors’ market for the My Little Pony and COTTON CANDY
products. She indicated that such a market existed and that
collectors and fans contacted her and other Hasbro employees
“over the years.” The witness also introduced materials
obtained from various Internet sites on May 5, 2003,
indicating that parties other than Hasbro offered items from
the My Little Pony line for sale to collectors.
The hallelnet.com site appears to offer seven COTTON
CANDY toy ponies for sale, six of which are identified as
originating outside the United States. The site includes a
pricing guide which indicates the price of COTTON CANDY toy
ponies at $2 to $10. The site refers to dozens of other
ponies in the My Little Pony line indicating no particular
emphasis on COTTON CANDY. The recycledtoys.com site shows
three COTTON CANDY toy ponies for sale for prices from $7 to
$9 among many other ponies in the line once again. The
tripod.com site indicates one COTTON CANDY toy pony for sale
along with dozens of other ponies in the line. The
fortunecity.com site shows one COTTON CANDY toy pony for
sale for $4. The record does not indicate whether other
ponies were available at this site.
Opposition No. 91152638
12
Hasbro also provided pages from eBay showing offers to
sell twelve COTTON CANDY toy ponies at prices under $5 with
the exception of two prices at $8.50 and $65. There is no
indication as to whether other toy ponies were available for
sale.
Hasbro has not alleged nor shown that it is in any way
involved with the sale of toy ponies in the collector
market. By definition, the “collector” and eBay sales are
resales of used or recycled products. Furthermore, the
evidence of record is from 2003, and the offers for sale are
very small in number.
Goldman’s Evidence
Goldman’s key evidence is his application.6 As noted,
the application was filed on February 7, 2001. In addition
to denying that there is a likelihood of confusion, Goldman
asserts priority as of that date under Trademark Act Section
7(c), 15 U.S.C. § 1057(c).
The Counterclaim for Cancellation
As noted, Goldman has counterclaimed for cancellation
of the Hasbro COTTON CANDY registration based on
abandonment, fraud and failure to provide current specimens
in a Hasbro post-registration filing. If we decide to
cancel the Hasbro registration based on Hasbro’s abandonment

6 Goldman correctly notes in his brief that he is also entitled
potentially to rely 7 exhibits introduced during the cross
examination of Ms. Jurries.
Opposition No. 91152638
13
of the COTTON CANDY mark on the basis Goldman alleges, such
a decision would be dispositive of the Hasbro opposition as
well. That determination would negate the priority Hasbro
must demonstrate to succeed with its likelihood of confusion
claim in the opposition. AmBRIT Inc. v. Kraft Inc., 812
F.2d 1531, 1 USPQ2d 1161, 1178 (11th Cir. 1986). Therefore,
we will address the Goldman counterclaim for cancellation
first.
Standing

In its answer to the Goldman counterclaim (paragraph
15) Hasbro asserts that Goldman lacks standing to assert the
counterclaim. In its reply brief Hasbro states: “As a
preliminary matter, if the TTAB finds that there is no
likelihood of confusion between Hasbro’s and Applicant’s
marks, then applicant will not be damaged by Hasbro’s
registration and has no standing to allege cancellation of
Hasbro’s registration.” Hasbro Reply Brief at 7. Goldman
argues that he has the right to present separate,
alternative claims, such as denying that there is a
likelihood of confusion and challenging Hasbro’s rights
through a counterclaim for cancellation, under Rule 8(d) of
the Federal Rules of Civil Procedure. Goldman Reply Brief
at 3.
The contradiction lies in Hasbro’s position. Hasbro
cannot have it both ways, that is, it cannot attack the
Opposition No. 91152638
14
Goldman application relying on its COTTON CANDY
registration, and at the same time, bar Goldman from
challenging the registration. Goldman has standing to
challenge the Hasbro registration for the simple reason that
Hasbro is relying on that registration in asserting
likelihood of confusion in its opposition to the Goldman
application. Thus Goldman has a real interest in seeking to
cancel the registration. TBMP § 309.03(b)(2nd ed. rev.
2004); Tonka Corporation v. Tonka Tools, Inc., 229 USPQ 857,
859 (TTAB 1986)(“Petitioner has a real interest in seeking
to cancel a registration that has been asserted, even
defensively, against it in U.S. District Court.”).
Accordingly, we conclude that Goldman has standing to bring
the counterclaim.
Determining Priority
In its main brief Hasbro states the following with
regard to the potential cancellation of its COTTON CANDY
registration: “Even if Hasbro were to lose its original
registration for the COTTON CANDY mark, because Hasbro
reintroduced the mark in 2002, and has used the mark in
commerce since at least 2002, Hasbro’s use of the mark in
connection with toys precedes any proposed use of COTTON
CANDY CLOUD CASTLE by applicant which has not yet used the
mark for use with (sic) toys. Accordingly, regardless of
registration status, Hasbro is the senior user of the COTTON
Opposition No. 91152638
15
CANDY trademark and therefore has priority over that mark.”
Hasbro Brief at 6. Hasbro appears to continue to make this
argument in its reply brief: “Finally, even if the TTAB
cancels Hasbro’s registration, Applicant’s trademark
registration should still not issue. Hasbro has shown
sufficient evidence that it is the senior user of its COTTON
CANDY mark.” Hasbro Reply Brief at 8.
In Goldman’s reply to Hasbro’s main brief he points
out, “The opposed application, however, is an intent-to-use
application under § 1(b) of the Trademark Act. An intent-
to-use applicant may can (sic) rely on the filing date of
that application for purposes of establishing priority in an
opposition to that application.” Goldman Reply Brief at 9.
Goldman is entirely correct on this critical point.
The Board addressed this fundamental issue in Zirco Corp. v.
American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544
(TTAB 1991) shortly after the intent-to-use system took
effect. After discussing the purposes of the intent-to-use
legislation and the importance of the constructive use date
within that scheme, the Board stated:
With these being the aims of the constructive use
provision, there can be no doubt but that the right to
rely upon the constructive use date comes into
existence with the filing of the intent-to-use
application and that an intent-to-use applicant can
rely upon this date in an opposition brought by a third
party asserting common law rights.

Opposition No. 91152638
16
Id. See also Larami Corp. v. Talk to Me Programs Inc., 36
USPQ2d 1840, 1845 (TTAB 1995)(distinguishes application of
Section 7(c) in Board registration proceedings from district
court infringement actions). Therefore, for the purposes of
our decision here, Goldman is entitled to rely on its filing
date of February 7, 2001 in the determination of priority.
Abandonment
Section 45 of the Trademark Act, 15 U.S.C. § 1057,
provides, in pertinent part:
Abandonment. A mark shall be deemed to be
“abandoned” when either of the following occurs:

(1) When its use has been discontinued with intent
not to resume such use. Intent not to resume may be
inferred from circumstances. Nonuse for three
consecutive years shall be prima facie evidence of
abandonment. “Use” of a mark means the bona fide use
of that mark in the ordinary course of trade, and not
made merely to reserve a right in a mark.

The party asserting abandonment bears the burden of
establishing the case by a preponderance of the evidence.
Evidence of nonuse for three consecutive years establishes a
prima facie case and shifts the burden to the party
contesting the abandonment either to disprove the showing of
nonuse or to show intent to resume use. Auburn Farms Inc.
v. McKee Foods Corp., 51 USPQ2d 1439, 1442 (TTAB 1999).
While the burden to produce evidence shifts, the burden of
persuasion by a preponderance of the evidence remains with
the party asserting abandonment. Rivard v. Linville, 133
Opposition No. 91152638
17
F.3rd 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998). See
Cerveceria Centroamericana S.A. v. Cerveceria India Inc.,
892 F.2d 1021, 13 USPQ2d 1307, 1312 (Fed. Cir. 1989).
Goldman asserts the following in his counterclaim;
2. Prior to the filing date of the present
opposition, Opposer ceased use of the COTTON CANDY mark
in commerce in connection with the goods set forth in
the ‘526 Registration - i.e. “toy pony” - for a period
of at least three consecutive years.”

3. Prior to February 7, 2001, Opposer ceased use of
the COTTON CANDY mark in commerce in connection with
the goods set forth in the ‘526 Registration - i.e.
“toy pony” - for a period of at least three consecutive
years.”

4. As of the time Opposer had ceased use of the
COTTON CANDY mark in commerce in connection with a toy
pony, Opposer did not have a then present intent to
resume such use of the COTTON CANDY mark.

In his main brief Goldman states, “It is undisputed
that Hasbro ceased marketing, distribution and sale of toy
ponies under the COTTON CANDY mark for some sixteen
consecutive years through and including the March 16, 2002,
date of publication of the opposed application.” Goldman
Brief at 16.
In its brief Hasbro effectively concedes that it ceased
use of the COTTON CANDY mark for a period well in excess of
three consecutive years. It states, “Applicant’s only
evidence of abandonment of the COTTON CANDY trademark by
Hasbro is the lack of sales by Hasbro of the COTTON CANDY
toy pony for several years after 1987 (citation omitted).
Opposition No. 91152638
18
However a mark is deemed abandoned, for purposes of the
Trademark Act, only when the owner of the mark discontinues
use of the mark in commerce ‘with an intent not to resume
use.’ 15 U.S.C. § 1127 (emphasis added). Here Hasbro has
established evidence that it always intended to resume—and
consistent with that intent, did resume—use of the COTTON
CANDY trademark.”7 Hasbro Brief at 4. Hasbro argues
further, “True to its intent to resume use of the COTTON
CANDY mark, Hasbro relaunched the MY LITTLE PONY line in
fall 2002 and a COTTON CANDY toy pony and two new playsets
(COTTON CANDY CAFE and CELEBRATION CASTLE) were among the
offerings.” Id. at 5.
In the absence of any real dispute as to whether Hasbro
discontinued use for three consecutive years prior to
February 7, 2001, we must look to the evidence of record to
determine whether Hasbro has shown an intent to resume use
of the COTTON CANDY mark on toy ponies during the break in
use from 1987 through 2002. A mere statement from the
registrant that it intended to resume use during the period
of nonuse is generally entitled to little weight. Imperial

7 Ms. Jurries confirmed in cross examination (page 122) that
Hasbro discontinued use from 1987 until 2002:

Q, From 1987 through 2002 Hasbro did not distribute or
sell a toy pony under the name Cotton Candy; that’s correct,
isn’t it?
A. Through 1987?
Q. 1987 through 2002.
A. No, we didn’t.
Opposition No. 91152638
19
Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d
1390, 1394 (Fed. Cir. 1990)(“In every contested abandonment
case, the respondent denies an intention to abandon its
mark; otherwise there would be no contest.”).
In arguing that it had an intent to resume use Hasbro
emphasizes: (1) that it “recycled” the various My Little
Pony characters; (2) that Hasbro considered the My Little
Pony line, including its original characters, such as COTTON
CANDY, a “core brand” for the company; (3) that Hasbro “re-
released” the 1991 video “featuring” the original toy
ponies, including COTTON CANDY; and (4) that an avid
collector’s market existed for the sale of the original toy
ponies including COTTON CANDY in the years following 1987.
Id.
Goldman, on the other hand, argues that Hasbro has
offered no evidence of its intent to resume use. Goldman
notes, in particular, that Ms. Jurries’ testimony regarding
Hasbro’s decision to rest the My Little Pony line addresses
its intent in 1992, five years after it had discontinued use
of COTTON CANDY and its intent only with regard to the My
Little Pony line, in general, and not the COTTON CANDY mark,
in particular. Goldman also notes that the video was sold
in 1991 followed by more than ten years of nonuse, and that
the “evidence” regarding the video is of questionable value.
Opposition No. 91152638
20
First, we address Hasbro’s claim that its practice of
recycling the My Little Pony line was evidence of its intent
to resume use. Hasbro cites four pages of Ms. Jurries’
testimony in connection with this argument, pages 18, 35,
144 and 178. Nowhere in this testimony does the witness
talk about “recycling” character names, and nowhere in this
testimony does the witness refer to Hasbro’s intentions with
regard to COTTON CANDY, in particular. The testimony at
most indicates an intent expressed in 1992 to bring back the
My Little Pony line at some unspecified point in the future.
There is no mention of the original six ponies or of any of
the over 100 ponies in the My Little Pony line in this
testimony. We conclude that this testimony does not show an
intent to resume use of the COTTON CANDY mark on toy ponies.
Secondly, with regard to Hasbro’s “core brand”
argument, again Hasbro points to pages 35 and 144 of Ms.
Jurries testimony as indicating its intention to resume use
of the COTTON CANDY mark. And again, the testimony merely
indicates at most a general intention to bring back the My
Little Pony line at an unspecified time in the future with
no specific mention of COTTON CANDY or any of the other six
original toy ponies or any of the other 100 or more toy
ponies. We conclude that this testimony does not show an
intent to resume use of the COTTON CANDY mark on toy ponies.
Opposition No. 91152638
21
Thirdly, with respect to Hasbro’s claim that the
release of the My Little Pony video in 1991 evidenced its
intent to resume use of the COTTON CANDY mark on toy ponies,
here too we find the evidence lacking. As noted, the
evidence consists of one synopsis of a television program
which was a precursor to the video and the testimony of a
witness more than ten years after the fact that COTTON CANDY
was “featured” in the video. The evidence, by its nature,
is of limited probative value. At most, this evidence
indicates possible use of COTTON CANDY as either a character
or character name in a video, not as a trademark for a video
or any other product. Hasbro does not even argue that there
is trademark use of any kind here, and there is no
indication of any use or of any intentions with regard to
future use of COTTON CANDY as a mark for toy ponies in this
evidence.
Lastly, with regard to the collector market, the
evidence is limited to a brief statement that a market
existed and the materials on web sites described above. The
evidence from the web sites, in fact, is from a period in
2003 after Hasbro had begun its current use of the COTTON
CANDY mark. This limited evidence of the behavior of third
parties is in no way probative of what Hasbro’s intentions
were with regard to any future use of COTTON CANDY on toy
ponies from 1987 to 2002.
Opposition No. 91152638
22
Based on our review of the record as a whole, we
conclude that Goldman established by a preponderance of the
evidence that Hasbro discontinued use of the COTTON CANDY
mark on toy ponies for at least three consecutive years
prior to the February 7, 2001 filing date of Goldman’s
application and that Hasbro did not have an intention to
resume use of the COTTON CANDY mark on toy ponies at the
time it discontinued use in 1987 and until a time well after
the filing of the Goldman application on February 7, 2001.
In reaching this conclusion, in addition to the factors
discussed, we have taken into account the length of nonuse,
approximately 15 years. This is a lengthy period of nonuse.
Also, we have considered Hasbro’s eventual “resumption” of
use after the filing of and publication of the Goldman
application, and we conclude that this recent use is not
significant for purposes of our conclusion regarding
abandonment. The mark was already abandoned when Hasbro
undertook this use. Therefore, the recent use is a new
beginning, rather than a true resumption of use.
Accordingly, we conclude that Hasbro had abandoned the
COTTON CANDY mark as used on toy ponies as of the filing
date of the Goldman application, February 7, 2001.
Fraud

Goldman also claims that Hasbro committed fraud in the
filing of the “Combined Declarations under Sections 8 & 9”
Opposition No. 91152638
23
with regard to the Hasbro COTTON CANDY registration in
September of 1989. Specifically, Goldman alleges that the
Hasbro statements in the Combined Declarations that the mark
had been “in continuous use in interstate commerce among the
several states of the United States for five consecutive
years from September 18, 1984 to the present [September 18,
1989] on or in connection with a toy pony,” as well as the
Hasbro statement that the COTTON CANDY mark “was still in
use in such interstate commerce, as evidenced by the
accompanying current specimen” were false.
For purposes of the Trademark Act, an applicant or
registrant commits fraud by knowingly making a false
statement as to a material fact in conjunction with a
trademark application or registration. Mister Leonard Inc.
v. Jacques Leonard Couture Inc., 23 USPQ2d 1064, 1065 (TTAB
1992). Thus the statement in question: (1) must be false;
(2) must be made with knowledge that it is false; and (3) it
must be material. There is no doubt that the statements in
question here are material. In particular, the statement
that the mark is currently in use is fundamental to the
requirement for the filing of declarations under Section 8 &
9 of the Trademark Act. Also, Goldman correctly points out
that, under the cases, the requirement that the statement be
made with knowledge that it is false has been construed to
include circumstances where the applicant or registrant knew
Opposition No. 91152638
24
or “should have known” that it was false. Torres v. Cantine
Torresella S.r.L., 808 F.2d 46, 1 USPQ2d 1483, 1484-85 (Fed.
Cir. 1986); Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205,
1209 (TTAB 2003).
Mr. Donald Robbins signed the Combined Declarations on
behalf of Hasbro. There is no testimony from Mr. Robbins in
this proceeding. Accordingly, we have nothing in the record
through which we can determine Mr. Robbins’ basis for
signing the declarations which included the statements at
issue here. Goldman bases his claim that the statements
were false on the testimony of Ms. Jurries. Ms. Jurries did
testify that Hasbro did not sell or distribute toy ponies
under the COTTON CANDY mark after 1987.8 Ms. Jurries also
testified that she was not contacted concerning the
preparation of the Combined Declarations9 and that she was a
“product manager” in 1989 and that there were more senior
people in the marketing department responsible for the My
Little Pony line at that time.10
Also, on cross examination Ms. Jurries testified that
the COTTON CANDY mark was also used as a “cutie mark” on
another toy pony known primarily by another name which Ms.
Juries could not recall.11 Ms. Jurries indicated that the

8 See n. 7 supra.
9 Jurries testimony at 134-135.
10 Jurries testimony at 177-178.
11 Jurries Testimony at 142-43. Ms. Jurries explained ”cutie
marks” in response to a question as to how different ponies in
Opposition No. 91152638
25
use of COTTON CANDY as a “cutie mark” on another pony in the
line took place “in the late 80s.” This obviously could
include 1989. It appears that this use of COTTON CANDY was
something other than the use she testified about on direct
examination, and unrelated to the sales figures she
provided, all of which related to the toy pony named COTTON
CANDY.
The evidence, as a whole, indicates some ambiguity as
to whether Hasbro’s statement that the mark was in use in
1989 was or was not false. The evidence suggests that Mr.
Robbins may have had a reasonable basis for believing that
the COTTON CANDY mark was in use at the time he executed the
Combined Declarations in 1989. Due to her subordinate
position at the time, Ms. Jurries may not have had the same
information. Even Ms. Jurries’ own testimony regarding the
use of COTTON CANDY as a “cutie mark” in the “late 80s”
contributes to this ambiguity.
In similar cases where we have found fraud it is
generally clear that the statement in question is false.
Usually the registrant admits that the statement is false,
or the record otherwise clearly establishes that the
relevant statement is false. See, e.g., Torres v. Cantine

the My Little Pony line could be distinguished from one another:
“They could be identified from what we refer to as a cutie mark,
which is a decoration on the pony, usually the hind quarter,
sometimes all over the pony.” Jurries Testimony at 10.

Opposition No. 91152638
26
Torresella S.r.L., 1 USPQ2d at 1484-85; Medinol Ltd. v.
Neuro Vasx Inc., 67 USPQ2d at 1209; First International
Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1636 (TTAB
1988). Here we do not have that kind of clarity. On the
contrary, we have genuine ambiguity. In the absence of more
definitive evidence that the statements by Hasbro were
false, we conclude, on this record, that Hasbro did not
commit fraud. Smith International Inc. v. Olin Corp., 209
USPQ 1033, 1044 (TTAB 1981)(“It thus appears that the very
nature of the charge of fraud requires that it be proven ‘to
the hilt’ with clear and convincing evidence. There is no
room for speculation, inference or surmise and, obviously,
any doubt must be resolved against the charging party.”).
The Specimen of “Current” Use
Goldman also asserts fraud on the basis that the
specimen of use Hasbro provided with the Combined
Declarations was improper because it did not show current
use of the mark at the time the declarations were filed.
This ground is truly part and parcel of the claims of
abandonment and fraud. The acceptability of the specimen,
as alleged here, is not a separate ground for cancellation.
As the Board observed in a similar context, “Moreover,
fairness dictates that the ex parte question of the
sufficiency of the specimen not be the basis for sustaining
an opposition.” Century 21 Real Estate Corp. v. Century
Opposition No. 91152638
27
Life of America, 10 USPQ2d 2034, 2035 (TTAB 1989). See
Granny’s Submarine Sandwiches, Inc. v. Granny’s Kitchen,
Inc., 199 USPQ 564, 567-68 (TTAB 1978). Cf. Torres, 1
USPQ2d at 1483-84. Accordingly, we reject Goldman’s claim
seeking cancellation based on the submission of an improper
specimen.
Conclusion
In sum, on the basis of the entire record we conclude
that Hasbro discontinued use of the COTTON CANDY mark on toy
ponies for a period of well over three years prior to the
February 7, 2001 filing date of the Goldman application
without an intent to resume use of the COTTON CANDY mark on
toy ponies. Accordingly, Hasbro abandoned its rights in the
COTTON CANDY mark prior to the filing date of the Goldman
application, and therefore, Hasbro’s COTTON CANDY
registration must be cancelled. We conclude further that
Hasbro only began its subsequent use of the COTTON CANDY
mark on toy ponies after the February 7, 2001 filing date of
the Goldman application. Consequently, Hasbro lacks the
priority necessary to maintain its opposition to the Goldman
application. AmBRIT Inc. v. Kraft Inc., 1 USPQ2d at 1178.
Decision: Goldman’s counterclaim for cancellation of
Registration No. 1,296,526 is granted, and Hasbro’s
opposition to Application Serial No. 76206220 is dismissed.