November 2009 Issue

Civil Cases

The Cold War Museum, Inc. v. Cold War Air Museum, Inc.,
2009 WL 3644936 (Fed. Cir. Nov. 5, 2009)

ABSTRACT
Respondent obtained a registration under Section 2(f) for the mark THE COLD WAR MUSEUM.  During the prosecution of that registration, Respondent had submitted a declaration stating that the mark had been in use for at least five years, as well as over two hundred pages of evidence to support his contention that the mark had acquired distinctiveness.  Petitioner sought to cancel the registration on the ground that it was merely descriptive.  The TTAB granted the petition to cancel finding that Petitioner had proven that the mark was descriptive and had not acquired distinctiveness, and that Respondent had failed to prove acquired distinctiveness on the record before the TTAB because, among other things, Respondent had failed during the cancellation proceeding to resubmit the evidence of acquired distinctiveness filed during the prosecution of the registration.  The Federal Circuit reversed the TTAB’s decision, finding that the entire PTO file for the subject registration was automatically of record during the cancellation, and Petitioner had not established a prima facie case that the mark had not acquired distinctiveness.

CASE SUMMARY

FACTS
Respondent The Cold War Museum, Inc. (“Respondent”) applied to register the mark THE COLD WAR MUSEUM under Section 2(f).  The Examining Attorney initially refused registration on the ground that the mark was merely descriptive.  To overcome the refusal, Respondent 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 Examining Attorney concluded that the mark had acquired distinctiveness and allowed the application to proceed to registration.

Three years later, Petitioner Cold War Air Museum, Inc. (“Petitioner”) sought to cancel the registration for THE COLD WAR MUSEUM on the ground that it was merely descriptive.  Petitioner 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.”  Petitioner also submitted excerpts from the Respondent’s website and brochure to show that the museum’s contents and exhibits all related to the Cold War.  Respondent countered that the PTO had previously found that the mark had acquired distinctiveness, and the mark was presumed to be valid.  Further, Respondent argued that Petitioner had presented no evidence showing that the mark should not have been allowed registration under Section 2(f).  Respondent 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 The Cold War Museum to contain artifacts and information relating to the Cold War, and that Petitioner had therefore proven that the mark was merely descriptive.  The TTAB then shifted the burden to Respondent to overcome the descriptiveness finding and, although the TTAB recognized that Respondent had submitted evidence of the mark’s distinctiveness during prosecution, held that it could not consider this evidence because Respondent did not resubmit it in the cancellation proceeding.  The TTAB thus concluded that the Respondent had not proven acquired distinctiveness on the record and granted the petition to cancel.

ANALYSIS
On appeal, the Federal Circuit found that 37 CFR § 2.122(b) clearly and unambiguously provides that the record in a cancellation automatically includes the entire file of the registration at issue.  37 CFR § 2.122(b) states:

(b) Application files. (1) The file . . . 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 forms 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.

This, according to the Federal Circuit, includes any evidence submitted by the applicant during prosecution.  Accordingly, the Federal Circuit found that the TTAB had erred in refusing to consider the evidence of acquired distinctiveness submitted by Respondent during prosecution.  In addition, the Federal Circuit found that the TTAB had erred in finding that Petitioner had established a prima facie case that the mark had not acquired distinctiveness.  The Court explained that all of the evidence submitted by Petitioner related to the mark’s descriptiveness; none of it related to the issue of acquired distinctiveness.  Because Petitioner 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 Respondent to prove that the mark had acquired distinctiveness.  Thus, the Federal Circuit reversed the TTAB’s decision, which found that the mark THE COLD WAR MUSEUM had not acquired distinctiveness and had ordered the cancellation of the registration.

CONCLUSION
In TTAB proceedings, the entire file for the subject application or registration, including all evidence submitted during the prosecution of that application or registration, is automatically of record and need not be resubmitted.