Patent Law

Cold War Museum v. Cold War Air Museum (Fed. Cir. 2009)

In 2004, the appellant registered the service mark THE COLD WAR MUSEUM under Section 2(f) after providing evidence that the mark had acquired distinctiveness through "substantially exclusive and continuous use in commerce for at least the previous five years."

Three years later, the Air Museum filed a cancellation proceeding. In that proceeding, the TTAB cancelled the mark based on its finding that the mark was merely descriptive of the service being provided.

On appeal, the Federal Circuit reversed TTAB and instead held that the party seeking to cancel the mark had not overcome the presumption "the registered mark has acquired distinctiveness."

A mark registered on the Principal Register is presumed to be valid. . . . [T]he 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.

TTAB had refused to consider the mark-holder's originally submitted evidence of distinctiveness. On appeal, the Federal Circuit also held that evidentiary ruling to be in error.

[T]he Board acknowledged that the applicant had submitted evidence of acquired distinctiveness during prosecution. However, the Board decided that it could not consider this evidence because the Cold War Museum did not resubmit the evidence in the cancellation. This was error. The unambiguous language of 37 C.F.R. § 2.122(b) provides that the entire file of the registration at issue is automatically part of the record, without any action necessary by the parties. Therefore, the evidence of the mark's acquired distinctiveness submitted during prosecution was automatically part of the record before the Board, and the Board was required to consider this evidence in determining whether Air Museum had met its burden of proving a lack of acquired distinctiveness by a preponderance of the evidence.

rules indicate that the "evidence of record" in an opposition includes the entire registration file history .