Friday, November 07, 2008

TTAB Cancels "THE COLD WAR MUSEUM" Registration, Respondents Fail to Prove Acquired Distinctiveness

The Board granted a petition to cancel a registration for the mark THE COLD WAR MUSEUM for "museum services," finding the mark merely descriptive and lacking in acquired distinctiveness. Respondents, whose registration issued under Section 2(f), failed to submit evidence of acquired distinctiveness in this proceeding, and consequently the Board ruled in Petitioner's favor. Cold War Air Museum, Inc. v. The Cold War Museum, Inc. and Francis Gary Powers, Jr., Cancellation No. 92047391 (October 20, 2008) [not precedential].

Petitioner, operator of the Cold War Air Museum, was accused of infringing the subject mark, and therefore it had standing to bring this petition for cancellation.

Genericness: Petitioner first alleged, unsuccessfully, that THE COLD WAR MUSEUM is generic for Respondents' services. The Board applied the CAFC's American Fertility test, which requires that, in evaluating a phrase for genericness, the Board "must determine whether there is sufficient evidence of genericness of 'the meaning of the disputed phrase as a whole.'"

"While the evidence shows that 'cold war' would be understood as meaning the struggle between the United States and the Soviet Union in the period 1945-1991, there is insufficient evidence that the relevant public understands 'THE COLD WAR MUSEUM' as a whole to refer to the museum services offered by respondent." [I.e., to the genus of services - ed.].

Mere Descriptiveness: Because the subject registration was obtained under Section 2(f), it is a given that the mark is merely descriptive. Moreover, the record established that "cold war" is a recognized term, and that "COLD WAR MUSEUM" would be immediately understood by consumers to mean that Applicant's museum "contains artifacts and information relating to the cold war." Accordingly, Petitioner met its burden to make a prima facie case that the mark THE COLD WAR MUSEUM "is highly descriptive, and that it has not acquired distinctiveness." The burden then shifted to Respondents to establish acquired distinctiveness.

Acquired Distinctiveness: Because Respondents' mark is highly descriptive, "respondents must present a heightened showing of acquired distinctiveness to meet their burden." Although Respondents submitted evidence during prosecution to support their 2(f) claim, they did not submit any evidence in this proceeding. That was a major misstep: although the application file is considered part of the record, "the allegations made, and documents and other things filed in connection with the application, are not evidence in [an] inter partes proceeding ...."

Petitioner submitted some of Respondents' interrogatory answers, but the statements therein were insufficient to establish acquired distinctiveness. The Board therefore granted the petition and cancelled the subject registration.

TTABlog postscript: Reconsideration denied here.

Text Copyright John L. Welch 2008.


Post a Comment

<< Home