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Is the Cold War Really Over . . .  Cold War Museum Inc. v. Cold War Air Museum Inc.

Insight March 02, 2010

Who would have thought that two museums would be battling out for the right to use THE COLD WAR MUSEUM? Although the Cold War ended in 1991, two museums currently are warring over who gets to use the term COLD WAR MUSEUM as their service mark.

The Cold War Museum endeavors to maintain a historically accurate record of the people, places and events of the Cold War.

Cold War Museum header

 

The Cold War Air Museum is a non-profit flying museum dedicated to the preservation of Cold War era aircraft.

Cold War Air Museum banner

 

On February 27, 1997, Francis Gary Powers, Jr. applied to register the service mark THE COLDWAR MUSEUM for museum services. His application lists a first use date of July 13, 1996. Presumably, the PTO found the mark merely descriptive and Mr. Powers therefore registered his mark on the Supplemental Register. On February 4, 2003, Mr. Powers, again applied to register the service mark THE COLD WAR MUSEUM for museum services on the Principal Register. (The Principal Register provides numerous benefits, including nationwide ownerhsip rights and presumed notice of those rights.) Not surprisingly, by Mr. Powers’ second application also was denied under Section 2(e) of the Trademark Act, based on the mere descriptiveness of the mark.

In response to the descriptiveness refusal, Mr. Powers filed a 2(f) Declaration of Acquired Distinctiveness alleging that his mark had become distinctive of museum services by virtue of the fact he made use of THE COLD WAR MUSEUM mark exclusively and continuosly for the 5 years prior to his making the claim of distinctiveness. This is common practice amongst applicants.

In order for marks to be registerable on the Principal Register, they must be “distinctive”, meaning that they have the ability to function and be recognized as a brand. A mark that describes a purpose, feature, characteristic, or function of the product or service that it’s used to promote typically does not function as a brand and will be considered “merely descriptive” by the USPTO. The PTO will not register “merely descriptive” marks on the Principal Register unless acquired “distinctiveness” is proven. Distinctiveness sometimes may be proven through 5 years’ exclusive and continuos use, though more proof is required for more descriptive marks.

Unfortunately for Mr. Powers, given the highly descriptive nature of THE COLD WAR MUSEUM mark, the PTO Examiner remained unconvinced that the mark had acquired distinctiveness and she therefore maintained her 2(e) refusal to register. In response to this, Mr. Powers submitted over 200 pages ofevidence that his THE COLD WAR MUSEUM mark had indeed acquired distinctiveness. Based on the evidence submitted by Mr. Powers, the Examiner withdrew her 2(e) refusal and allowed the mark THE COLD WAR MUSEUM to become registered on the Principal Register.

Three years later, on April 18, 2007, Cold War Air Museum, Inc. filed a Petition to Cancel the federal service mark registration for THE COLD WAR MUSEUM on the grounds that the mark was merely descriptive at the time of registration and thus should not have been registered. After a full Cancellation proceeding, the Trademark Trial and Appeal Board (TTAB) granted the Petition filed by Cold War Air Museumon October 20, 2008, ordering the THE COLD WAR MUSEUM mark cancelled. Mr. Powers appealed the TTAB’s ruling to the Federal Circuit (CAFC), which just reversed the TTAB on November 5, 2009.

The issue on appeal was whether or not the Registrant (Mr. Powers) was required to submit evidence of distinctiveness during the Cancellation proceeding. The CAFC found that Mr. Powers’ THE COLD WAR MUSEUM application (and more importantly, all of the evidence submitted therewith ) was made of record in the Cancellation proceeding because Trademark Rule 2.122(b) provides that the record in a Cancellation proceeding automatically includes the file of the registration at issue. Because Mr. Powers proved acquired distinctivenes in his registration application, and the Air Museum did nothing to rebut this evidence, the CAFC ruled that the Board erred in determining that the mark had not acquired distinctiveness. Therefore the Board reversed the TTAB and the THE COLD WAR MUSEUM registration will not be cancelled.

The morals of the story?

If museums can engage in lengthy trademark disputes, so can you! Descriptive marks cost more and are more difficult to protect, which is why trademark attorneys routinely discourage you from falling in love with them. Choose and protect your marks wisely.