Activision’s ownership of the Crash Bandicoot franchise is cause of no small measure of chagrin for many PlayStation fans, as the publisher has proven reluctant to actually do something relevant with one of the beloved franchises that carried Sony’s platforms to their current popularity.
The publisher gained control of the franchise after the absorption of Sierra, and besides rumor and very vague mentions, its plans for the use of the character are shrouded in mystery, if they even exist.
Yet, Activision can’t just sit on Crash Bandicoot forever. While trademarks can be renewed, and Crash‘s has indeed been renewed in 2011, there are legalities involved that ensure that a company can’t keep a name forever unless it actually uses it.
The infamous (between trademark holders, at least) Section 8 of the Lanham Act dictates that a company needs to provide a declaration of use or excusable non-use and a specimen of said use to the United States Patent and Trademark Office between the 5th and 6th year after the registration of a trademark, then between the 9th and 10th year, and subsequently every ten years.
If the company fails to provide that kind of documentation, the USPTO simply cancels the trademark and it becomes fair game.
Former Activision parent company Vivendi Games provided its latest declaration of use in 2011 (the current trademark was first registered in 2001), using the Crash Bandicoot Action Pack for PS2 as its specimen.
The next date on the calendar is quite far in the future, 2021, but by that date Activision will definitely need to do something with the franchise, or they will incur in the serious risk to lose the trademark.
Currently the publisher sells four Crash Bandicoot classics on the PSN, but they’re all exclusively for PSP and PS3 (they’ve been proven to run on Vita, but they’re not supported officially, and that’s what matters in in legal terms). In 2021 we’ll be way past the end of the life cycle of both platforms, which means that that offering will most probably be not usable anymore as a specimen for a declaration of use.
Without a valid declaration of use, Activision would have to file a declaration of excusable non-use, and the following are the reasons accepted by trademark law:
- Decreased Demand. Decreased demand for the product sold under the mark, resulting in its discontinuance for an indefinite period, does not excuse nonuse. The purpose of the affidavit requirement is to eliminate registrations of marks that are in nonuse due to ordinary changes in social or economic conditions. See In re Conusa Corp., supra; In re Parmalat S.p.A., 32 USPQ2d 1860 (Comm’r Pats. 1991); Ex parte Astra Pharmaceutical Products, Inc., supra; Ex parte Denver Chemical Mfg. Co., supra.
- Trade Embargo or Other Circumstance Beyond Owner’s Control. Nonuse may be considered excusable where the owner of the registration is willing and able to continue use of the mark in commerce, but is unable to do so due to a trade embargo.
- Sale of a Business. Temporary nonuse due to the sale of a business might be considered excusable.
- Retooling. The mark might be out of use temporarily because of an interruption of production for retooling of a plant or equipment, with production possible again at a scheduled time. However, nonuse due to retooling is excusable only if the owner shows that the plant or equipment being retooled was essential to the production of the goods and that alternative equipment was unavailable on the market. In re New England Mutual Life Insurance Co., 33 USPQ2d 1532 (Comm’r Pats. 1991).
- Orders on Hand. If the product is of a type that cannot be produced quickly or in large numbers (e.g., airplanes), yet there are orders on hand and activity toward filling them, nonuse might be considered excusable.
- Illness, Fire and Other Catastrophes. Illness, fire and other catastrophes may create situations of temporary nonuse, with the owner being able to outline arrangements and plans for resumption of use. Such nonuse is often excusable. However, a mere statement that the owner is ill and cannot conduct his or her business will not in itself excuse nonuse; the owner must show that the business is an operation that could not continue without his or her presence. New England Mutual Life Insurance, supra.
- Negotiations With Distributors. A recitation of efforts to negotiate agreements that would allow for resumption of use of the mark, or a statement that samples of the goods have been shipped to potential distributors, may establish lack of intention to abandon the mark, but does not establish the existence of special circumstances that excuse the nonuse. In re Parmalat, supra; In re Moorman, supra.
- Use in Foreign Country. Use of the mark in a foreign country has no bearing on excusable nonuse of a mark in commerce that can be regulated by the United States Congress. In re Conusa, supra.
- Use of Mark on Different Goods/Services. Use of the mark on goods/services other than those recited in the registration does not establish either special circumstances or lack of intention to abandon the mark. Ex parte Kelley-How-Thomson Co., supra.
- Use of Mark in Another Form. Use of a mark as an essential part of a materially different composite mark does not excuse the failure to use the mark at issue. In re Continental Distilling Corp., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958).
Currently, I don’t see any of those applying to the Crash Bandicoot franchise (most definitely “Decreased Demand” does not apply), so finding an excuse for the lack of use of the trademark would be fairly difficult for the publisher.
There’s actually a relevant precedent for this: earlier this year Sega lost control of the Shen Mue trademark in the U.S. because they failed to file their declaration of use (since they weren’t really using it) and didn’t find a valid excuse to justify the lack of thereof. To this date they still didn’t manage to get it back, and the only way to do so would be to actually do something with the franchise.
While losing the trademark wouldn’t mean that anyone could freely do a Crash Bandicoot game, Activision has proven quite protective with its intellectual properties in the past (even overprotective at times), so it’s quite unlikely that they’re willing to just let it go. Of course they could also attempt to sell it in order to make a last profit out of it.
While 2021 isn’t exactly close at hand, games aren’t developed in a day, and in order to be a valid specimen a product (unfortunately it doesn’t need to be a game, but just something fitting one of the multiple classes of the trademark) needs to be already on the market. It might take time, but Activision can’t just sit on Crash forever without doing anything with it, and that’s somewhat comforting.