CAFC Reverses TTAB's "COLD WAR MUSEUM" Decision Regarding Evidence of Record in Cancellation Proceeding

The U.S. Court of Appeals for the Federal Circuit yesterday reversed the TTAB's decision in Cold War Air Museum, Inc. v. The Cold War Museum, Inc. and Francis Gary Powers, Jr., Cancellation No. 92047391 (October 20, 2008) [not precedential]. [TTABlogged here]. The Board had cancelled a registration for the mark THE COLD WAR MUSEUM for "museum services," finding the mark merely descriptive and lacking in acquired distinctiveness. Respondent Cold War Museum, whose registration issued under Section 2(f), failed to submit evidence of acquired distinctiveness during the cancellation proceeding, and consequently the Board ruled in Petitioner's favor. The CAFC ruled that Respondent was not required to submit evidence of acquired distinctiveness because the PTO file (and the Section 2(f) evidence therein) was automatically part of the record under Trademark Rule 2.122(b). And so the CAFC reversed. [mp3 of oral argument here]. The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 92 USPQ2d 1626 (CAFC 2009) [precedential].


The CAFC observed that Rule 2.122(b) provides that the record in a cancellation proceeding automatically includes the file of the registration at issue:

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

It found this Rule to be "clear and unambiguous."

The entire registration file—including any evidence submitted by the applicant during prosecution—is part of the record in a cancellation "without any action by the parties." Therefore, a party seeking to cancel a Section 2(f) registration must rebut the applicant’s evidence of distinctiveness made of record during prosecution to satisfy its ultimate burden of proof.

Moreover, the CAFC pointed out that Petitioner Air Museum did not even argue the issue of acquired distinctiveness in its petition for cancellation [it argued only mere descriptiveness, which is "irrelevant to the validity of a Section 2(f) registration"], and so Petitioner failed to rebut the registration's presumption of validity. The CAFC therefore ruled that the the Board erred as a matter of law in concluding that Air Museum had established a prima facie case that the mark had not acquired distinctiveness.

Air Museum, as the party seeking cancellation, bore the burden of persuasion as well as the initial burden of establishing a prima facie case. If Air Museum had satisfied its initial burden sufficient to establish a prima facie case that the registration had not acquired distinctiveness, the burden of production would have shifted to the Cold War Museum. However, Air Museum failed to present any evidence or argument of lack of distinctiveness, and therefore the Board erred in finding that any "burden" was shifted to the Cold War Museum.

TTABlog comment: Does this mean that a declaration submitted during prosecution is now admitted into evidence in a subsequent cancellation proceeding, even though it would ordinarily be inadmissible hearsay?

Text Copyright John L. Welch 2009.