TTAB's COLD WAR MUSEUM cancellation decision reversed

United States of America
In The Cold War Museum Inc v Cold War Air Museum Inc (Case 2009-1172, November 5 2009), the US Court of Appeals for the Federal Circuit has clarified certain evidentiary and burden of proof rules associated with cancellation proceedings before the Trademark Trial and Appeal Board (TTAB).
In reversing the TTAB’s decision to cancel the registration for the mark THE COLD WAR MUSEUM for “museum services”, the court held that the evidence made of record during the prosecution of an underlying registration is automatically part of the record in subsequent cancellation proceedings, even if such evidence is not formally introduced by the parties to the proceedings. The court concluded that sufficient evidence had been made of record during the prosecution of the underlying registration to support a finding that the mark had acquired distinctiveness. Thus, the fact that no such evidence had been submitted during the cancellation proceedings was not determinative.

By way of background, the Cold War Museum Inc registered the mark COLD WAR MUSEUM in 2004 for use in connection with “museum services”. The application was filed pursuant to §2(f) of the Lanham Act on the basis that the mark had become distinctive as a result of at least five years of substantially exclusive and continuous use in US commerce. Because the trademark examining attorney believed the mark to be “highly descriptive”, additional evidence of acquired distinctiveness was required. In further support of its application, the Cold War Museum submitted more than 200 pages of documentation attesting to the distinctiveness of the mark. In light of this material, the application was published and matured to registration. 

In 2007 another museum with a Cold War theme, the Cold War Air Museum Inc, petitioned to cancel the COLD WAR MUSEUM mark on the basis that it was merely descriptive. As such, no one entity should enjoy exclusivity over the mark. The petitioner argued that because the mark was merely descriptive, registration pursuant to §2(f) should not have been permitted. During the cancellation proceedings, the Cold War Museum maintained its position that its mark had acquired distinctiveness. It also argued that because the mark was registered, it was now entitled to a presumption of validity. The Cold War Museum further pointed out that the petitioner had not submitted any evidence to counter the examining attorney’s finding that the mark had acquired distinctiveness at the time the registration issued. Importantly, however, the Cold War Museum did not re-submit the evidence of acquired distinctiveness that it had submitted during the registration process. 

The TTAB agreed with the petitioner that the COLD WAR MUSEUM mark was merely descriptive, and thereafter shifted the burden to the Cold War Museum to show that sufficient distinctiveness had been acquired as of the registration date to overcome the mark’s descriptive status. Finding that the Cold War Museum had not made such a showing (in large part because the prior distinctiveness evidence had not been re-submitted in the cancellation proceedings), the TTAB cancelled the registration.

On appeal, the Federal Circuit began its analysis by pointing out that a registration must be presumed to be valid. As such, a registration issued pursuant to §2(f) is presumed to have acquired distinctiveness, even if that mark would otherwise be considered descriptive of the claimed goods or services. The Federal Circuit pointed out that, in order to meet the “significant burden” of overcoming this presumption of validity, a petitioner seeking cancellation must establish that the evidence of record in the cancellation proceedings rebuts the presumption by a preponderance of the evidence. 

Turning first to the issue of evidence, the Federal Circuit disagreed with the TTAB’s conclusion that the underlying distinctiveness evidence submitted by the Cold War Museum in connection with the prosecution of its application was not of record in the cancellation. Evidence made part of the record during the prosecution of its application remained of record. As such, the fact that the Cold War Museum had not resubmitted the evidence of distinctiveness in defence of the cancellation was immaterial. The court held that under the procedural rules governing cancellation actions (specifically, 37 CFR §2122(b)), the record in cancellation proceedings “automatically includes the file of the registration at issue”. Thus, “any evidence submitted by the [registrant] during prosecution” is part of the record without the registrant having to re-submit it. To the extent prior case law had been interpreted otherwise, the court expressly overruled it.

As to the parties’ respective burdens vis-à-vis invalidity in cancellation proceedings, the court held that the party seeking cancellation always bears the burden to establish a prima facie case that a challenged registration is invalid. In the distinctiveness context, that initial burden is to establish a prima facie case of no acquired distinctiveness in light of the record. It is not until the petitioner establishes the prima facie case of invalidity that the burden shifts to the registrant to make a further distinctiveness showing. In the present case, the TTAB’s shifting of the burden to the Cold War Museum before the petitioner had made a prima facie case of invalidity - and before the petitioner had put in any evidence or argument as to the lack of distinctiveness - was error requiring reversal of the TTAB’s decision.
Timothy J Kelly, Fitzpatrick Cella Harper & Scinto, New York

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