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...