In The Cold War Museum, Inc. v. Cold War Air Museum, Inc. the Court of Appeals for the Federal Circuit (“CAFC”) reversed the Trademark Trial and Appeal Board’s (“TTAB”) decision (#92047391), which had cancelled the registration of the Cold War Museum’s service mark THE COLD WAR MUSEUM (Serial 76487216).

The TTAB had initially dealt with the issue of whether the registrant’s Cold War Museum’s service mark had acquired distinctiveness and was registrable pursuant to section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f). However, the TTAB erred in cancelling the registration after it held registrant Cold War Museum had not proven the acquired distinctiveness of its mark. The CAFC, upon de novo review of the TTAB’s legal conclusions, reversed the decision.

Generally, under section 2(f), a mark that is otherwise barred from registration in view of the other section 2 requirements can still obtain registration if the appellant proves that the mark has become distinctive. If a mark’s distinctiveness is established a presumption of validity attaches to a section 2(f) registration, including a presumption that the registered mark has acquired distinctiveness. To rebut this presumption, another party seeking to cancel a section 2(f) registration must produce sufficient evidence for the TTAB to reasonably conclude that the party has overcome the record of acquired distinctiveness by a preponderance of the evidence. In the case at hand, the TTAB acknowledged that the applicant had submitted evidence of acquired distinctiveness during the earlier prosecution stage, but wrongly decided it could not consider this same evidence as it was not resubmitted in the cancellation proceeding.

In reversing the TTAB’s decision, the CAFC affirmed any record of evidence before the TTAB in the cancellation proceeding is governed by 37 C.F.R. § 2.122(b). The 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. Thus, the entire registration file, including any evidence submitted by the applicant during the prosecution, is part of the record in a cancellation proceeding. The fact that the TTAB didn not consider the evidence provided during the prosecution stage was an error of law.

Since the evidence of the registrant’s mark having acquired distinctiveness submitted during prosecution was automatically part of the record the TTAB was required to consider this same evidence in determining whether the challenger Cold War Air Museum had met its burden of proving a lack of acquired distinctiveness by a preponderance of the evidence. As the challenger Cold War Air Museum failed to present any evidence relating to the distinctiveness of the THE COLD WAR MUSEUM mark, it failed to rebut the registration’s presumption of validity. Instead, its evidence related exclusively to the mark’s descriptiveness, which is irrelevant to a section 2(f) registration. The CAFC affirmed that the burden of producing additional evidence in defense of registration only shifts to the registrant if and when the party seeking cancellation establishes a prima facie showing of invalidity. Thus, the TTAB erred in finding that any burden was shifted to registrant Cold War Museum.