Federal Circuit Reverses Cancellation of THE COLD WAR MUSEUM
A recent trademark decision from the Federal Circuit emphasizes the sometimes critical role procedural issues can play in the outcome of a case.
In 2004, Francis Gary Powers, Jr. obtained registration of the mark THE COLD WAR MUSEUM for museum services based on acquired distinctiveness of the mark under Section 2(f) of the Lanham Act (15 U.S.C. 1052(f)). Mr. Powers later assigned the rights to the mark to The Cold War Museum, Inc. During the initial prosecution of the mark after the examining attorney had refused registration, Mr. Powers submitted more than 200 pages of material supporting his contention that the mark had acquired distinctiveness.
In 2007, Cold War Air Museum Inc. filed a petition to cancel the registration arguing that the mark was merely descriptive for museum services related to the Cold War. In support of this claim, it submitted search engine results evidencing the public's understanding of the term "cold war" and excerpts from the mark owner's website and brochure to demonstrate that the museum's contents all related to the Cold War.
The mark owner responded by arguing that even if the mark was descriptive it had become distinctive and was therefore eligible for registration under Section 2(f), that the PTO had accepted evidence submitted during prosecution as sufficient proof of distinctiveness and thus the mark was now presumed valid. It also argued that the challenger had not presented any evidence showing that the mark should not have been registered under Section 2(f). The mark owner did not resubmit the evidence of acquired distinctiveness that had been submitted during prosecution.
The TTAB granted the cancellation petition finding that the challenger had proven that the mark was "highly descriptive" and had not acquired distinctiveness. The TTAB then shifted the burden to the mark owner to show to the contrary. Although the TTAB acknowledged that evidence of acquired distinctiveness had been submitted during prosecution, it concluded that it could not consider the evidence because the evidence had not been resubmitted in the cancellation proceeding.
The Federal Circuit held that this conclusion was in error and fatal to the TTAB's decision granting the petition for cancellation. Emphasizing that registration of the mark under Section 2(f) afforded it both a presumption of validity as well as a presumption that the mark had acquired distinctiveness, the Federal Circuit stated that the challenger to the registration must therefore produce sufficient evidence to rebut these presumptions.
First, the Federal Circuit concluded that the TTAB had erred in concluding that it could not consider the evidence of acquired distinctiveness submitted during prosecution as the applicable regulation, 37 C.F.R. 2.122(b), unambiguously states that the entire registration file is automatically part of the record in a cancellation proceeding. As a result, the challenger must rebut evidence of acquired distinctiveness in the registration file in order to satisfy its burden of proof.
Second, the Federal Circuit held that the challenger had failed to satisfy this burden. To the contrary, the challenger's arguments in the cancellation proceeding related exclusively to the descriptive nature of the mark, which is irrelevant to the validity of a Section 2(f) registration. The challenger presented no evidence relating to the acquired distinctiveness of the mark and therefore failed to rebut the presumption of validity. And, given that failure, the Federal Circuit also concluded that the TTAB had erred in shifting the burden to the mark owner.
The Federal Circuit therefore reversed the TTAB's decision granting the petition for cancellation.
The cite is The Cold War Museum, Inc. v. Cold War Air Museum, Inc., No. 2009-1172 (Fed. Cir. Nov. 5, 2009).
