The Entire PTO File for the
November 05, 2009
Last Month at the Federal Circuit - December 2009
Judges: Lourie, Linn, Moore (author)
[Appealed from: TTAB]
In Cold War Museum, Inc. v. Cold War Air Museum, Inc., No. 09-1172 (Fed. Cir.Nov. 5, 2009), the Federal Circuit reversed the TTAB’s decision canceling registration of the service mark THE COLD WAR MUSEUM on the ground that The Cold War Museum, Inc.(“Cold War Museum”) had not proven acquired distinctiveness of that mark. Among other errors, the Federal Circuit found that the TTAB had improperly refused to consider evidence of acquired distinctiveness that was filed during the prosecution of the registration for THE COLD WAR MUSEUM mark.
Cold War Museum’s predecessor-in-interest applied to register the mark THE COLD WAR MUSEUM under Section 2(f) of the Lanham Act,15 U.S.C. § 1052(f). The examining attorney initially refused registration on the ground that the mark was merely descriptive. In response, Cold War Museum’s predecessor-in-interest filed a declaration stating that the mark had been in use for at least five years, as well as over two hundred pages of evidence in support of its claim of acquired distinctiveness. Based on this evidence, the PTO concluded that the mark had acquired distinctiveness, and allowed the application to proceed to registration.
Three years later, Cold War Air Museum, Inc. (“Air Museum”) sought to cancel the registration for THE COLD WAR MUSEUM on the ground that it was merely descriptive. Air Museum alleged that the words “the cold war museum” were merely descriptive for museum services relating to the Cold War and submitted a list of search engine results allegedly evidencing the public’s understanding of the term “cold war.” Air Museum also submitted excerpts from Cold War Museum’s website and brochure to show that the museum’s contents and exhibits all related to the Cold War. The Cold War Museum countered that the PTO had previously found that the mark had acquired distinctiveness and that the mark was presumed to be valid. Further, Cold War Museum argued that Air Museum had presented no evidence showing that the mark should not have been allowed registration under Section 2(f). Notably, Cold War Museum did not resubmit the evidence of distinctiveness that had been filed during the prosecution of the registration.
The TTAB granted the petition to cancel, finding that consumers viewing the mark would understand Cold War Museum to contain artifacts and information relating to the Cold War, and that Air Museum had therefore proven that the mark was merely descriptive. The TTAB then shifted the burden to Cold War Museum to overcome the descriptiveness finding and, although the TTAB recognized that Cold War Museum had submitted evidence of the mark’s distinctiveness during prosecution, the TTAB held that it could not consider this evidence because Cold War Museum did not resubmit it in the cancellation proceeding. The TTAB thus concluded that Cold War Museum had not proven acquired distinctiveness on the record and granted the petition to cancel.
On appeal, the Federal Circuit noted that the presumption of validity that attaches to a Section 2(f) registration includes a presumption that the registered mark has acquired distinctiveness. To rebut this presumption, a party seeking to cancel a Section 2(f) registration must produce sufficient evidence for the Board to conclude, in view of the entire record in the cancellation proceeding, that the party has rebutted the mark’s presumption of acquired distinctiveness by a preponderance of the evidence.
The evidence of record before the TTAB in a cancellation proceeding is governed by 37 C.F.R. § 2.122(b). The Federal Circuit found that § 2.122(b) clearly and unambiguously provides that the record in a cancellation automatically includes the entire file of the registration at issue without any action by the parties. According to the Court, this includes any evidence submitted by the applicant during prosecution. Thus, the Federal Circuit held that a party seeking to cancel a Section 2(f) registration must rebut the applicant’s evidence of distinctiveness made of record during prosecution to satisfy its ultimate burden of proof.
The Federal Circuit therefore found that the TTAB had erred in refusing to consider the evidence of acquired distinctiveness submitted by Cold War Museum during prosecution. In addition, the Federal Circuit found that the TTAB had erred in finding that Air Museum had established a prima facie case that the mark had not acquired distinctiveness. The Court explained that all of the evidence submitted by Air Museum related to the mark’s descriptiveness; none of it related to the issue of acquired distinctiveness. Moreover, the Court noted that Air Museum failed to argue that the mark had not acquired distinctiveness. Because Air Museum had not rebutted the registration’s presumption of validity, the Court also found that the TTAB had erred as a matter of law in shifting the burden to Cold War Museum to prove that the mark had acquired distinctiveness. Because the TTAB erred as a matter of law in concluding that Air Museum had established a prima facie case that the mark had not acquired distinctiveness, the Federal Circuit reversed the TTAB’s decision.
Summary authored by Stephanie H. Bald, Esq.