Cold War Air Museum, Inc.v.The Cold War Museum, Inc. and Francis Gary Powers, Jr.

Trademark Trial and Appeal Board

Oct 20, 2008

No. 92047391 (T.T.A.B. Oct. 20, 2008)

Mailed: October 20, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Cold War Air Museum, Inc.
v.
The Cold War Museum, Inc. and Francis Gary Powers, Jr.1
_____

Cancellation No. 92047391
_____

W. Thomas Timmons, Esq., for Cold War Air Museum, Inc.

Katrina Edge and John H. Weber, of Baker & Hostetler LLP for
The Cold War Museum, Inc. and Francis Gary Powers, Jr.

_____

Before Seeherman, Drost, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

Petitioner seeks to cancel respondents’ registration
for the mark, “THE COLD WAR MUSEUM” for “museum services,”
in International Class 41.2

1 Francis Gary Powers, Jr., the founder and proprietor of The
Cold War Museum, Inc., assigned his rights in the mark to The
Cold War Museum, Inc. during the course of this proceeding.
Since the mark was assigned after this proceeding was commenced,
by order of February 21, 2008, the Board joined the parties
rather than granting a substitution, in accordance with TBMP
Section 512.01 (2d ed. rev. 2004).
2 Registration No. 2831529, registered on April 13, 2004, based
on a filing date of February 4, 2003, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use and first
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92047391
2
In the amended petition to cancel, petitioner alleged
that “THE COLD WAR MUSEUM” is “merely descriptive (generic)”
and that the “application under 2f should not have been
permitted.” We understand these allegations to aver that
respondents’ mark is generic and incapable of acquiring
distinctiveness, and in the alternative, that respondents’
mark is merely descriptive and has not acquired
distinctiveness. Petitioner further alleged that the mark
was not registered to the proper registrant. Respondents
denied the salient allegations of the amended petition to
cancel. Both parties filed briefs, and petitioner filed a
reply brief. After careful consideration of the evidence
and the arguments presented by the parties, for the reasons
discussed herein, the petition to cancel is granted for
respondents’ failure to show acquired distinctiveness of
“THE COLD WAR MUSEUM.”

The Record
The record in this cancellation proceeding consists of
the pleadings and the file of respondents’ registration for
“THE COLD WAR MUSEUM.” Additionally, both parties in their
briefs describe the record as including the following:

use in commerce on July 13, 1996, and a prior registration on the
Supplemental Register, No. 2096192. The registration claims
acquired distinctiveness under Section 2(f) of the Trademark Act,
15 U.S.C. § 1052(f), and disclaims the exclusive right to use
“MUSEUM” apart from the mark as shown.
Cancellation No. 92047391
3

1. The testimony deposition of Dale Bruce
Stringfellow, Jr., and accompanying exhibits.
2. Registrants’ responses to petitioner’s first
request for admissions and first set of
interrogatories, as submitted by petitioner
via notice of reliance.
3. Three pages of Google search results on the
definition of “cold war,” as submitted by
petitioner via notice of reliance.
Google search results may not be made of record via
notice of reliance. See Trademark Rule 2.122(e), 37 CFR
§2.122(e) (providing for the filing of printed publications
and official records through a notice of reliance).
However, because respondents listed the search results in
their “Description of the Record” in respondents’ own brief,
we treat the definitions as having been stipulated into the
record.3 Therefore, we consider petitioner’s submitted
Google definitions for the probative value that they may
have, as discussed herein. Meanwhile, respondents declined
to submit any testimony or evidence into the record.

3 In their brief, respondents referred to the Google search
results as “neither a compelling nor informative source of
evidence” (Respondent’s Brief at 13), but did not object to their
entry into evidence.
Cancellation No. 92047391
4
Standing
Generally, petitioner must show a “personal interest in
the outcome of the proceeding” as well as “a reasonable
basis for belief of damage.” See Books on Tape Inc. v. The
Booktape Corp., 5 USPQ2d 1301, 1302 (Fed. Cir. 1987)
(petitioner, as a competitor of respondent, “clearly has an
interest in the outcome beyond that of the public in general
and has standing.”) It is not necessary that petitioner
allege or establish its own prior rights in the marks at
issue. Id. Respondents admitted to having accused
petitioner of infringing respondents’ “THE COLD WAR MUSEUM”
mark by petitioner’s use of its business name, Cold War Air
Museum. (Response to Interrogatory No. 22). Accordingly,
we find that petitioner has established its standing.
Genericness
Generic terms are words or phrases that the relevant
purchasing public understands primarily as the common or
class name for the goods or services. In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed.
Cir. 2001); In re American Fertility Society, 188 F.3d 1341,
1346, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). These terms
are incapable of functioning as registrable trademarks
denoting source, and are not registrable on the Principal
Register under §2(f) or on the Supplemental Register.
Cancellation No. 92047391
5
The Federal Circuit has established a two-part test to
determine whether a designation is generic: (1) What is the
class of goods or services at issue? and (2) Does the
relevant public understand the designation primarily to
refer to that class of goods or services? H. Marvin Ginn
Corp. v. International Association of Fire Chiefs, Inc., 782
F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The test
turns upon the primary significance that the term would have
to the relevant public. The Federal Circuit has further
dictated that in evaluating a phrase under the two-pronged
test of H. Marvin Ginn, we must determine whether there is
sufficient evidence of genericness of “the meaning of the
disputed phrase as a whole.” See In re American Fertility
Soc., supra, 51 USPQ2d at 1837.
In a cancellation proceeding, the petitioner has the
burden of proving genericness by a "preponderance of the
evidence." Tea Board of India v. Republic of Tea Inc., 80
USPQ2d 1881, 1887 (TTAB 2006) (in counterclaim for
cancellation, “[i]t is applicant's burden to demonstrate by
a preponderance of the evidence that DARJEELING is generic,
or that the mark has become generic as a result of opposer's
failure to exercise control over use of the mark,” citing
Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551
(Fed. Cir. 1991)). Therefore we look to the record to see
whether petitioner has proven by a preponderance of the
evidence that the relevant public would understand “THE COLD
Cancellation No. 92047391
6
WAR MUSEUM,” as a unitary phrase, to be generic for the
museum services offered by respondents.
Evidence of the relevant public's understanding of a
term may be obtained from any competent source, including
consumer surveys, dictionary definitions, newspapers and
other publications. In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
Petitioner here has presented evidence of several Internet
definitions of the term “cold war” as retrieved by a Google
search. A sampling of petitioner’s highlighted definitions
includes:

1. “The struggle for power between the Soviet
Union and the United States that lasted from
the end of World War II until the collapse of
the Soviet Union. The war was considered
‘cold’ because the aggression was ideological,
economic, and diplomatic rather than a direct
military conflict.”
History1900s.about.com/od/greateventsofthecentu
ry/a/cwglossary.htm.

2. “a period after World War II (1945-89) marked
by political tension and an arms race between
the Soviet Union and the United States.”
www.wcit.org/tradis/glossary.htm.

3. “The state of antagonism and military conflict
readiness which marked the relationship between
the United States and the Soviet Union from
1946 and 1991 [sic].”
www.orlok.com/hair/holding/links/vietglossary.h
tml.

4. “The Cold War is the name given to the period
between the end of the Second World War (1945)
and 1991 when the United States of America,
representing Capitalism, and the Soviet Union,
representing Communism were ‘at war.’”
Cancellation No. 92047391
7
www.dmu.ac.uk/faculties/interfaculty/globalisat
ion/global_gloss.jsp.

5. “a struggle with little military conflict
between socialist and non-socialist countries.
The principal opponents were the United States
and the Soviet Union. Historians now believe
there was little chance of nuclear conflict.”
naiadonline.ca/book/01Glossary.htm.

6. “Policy of US, West European and Japanese
imperialism toward the Soviet Union following
World War II. Period of active hostility to
socialist countries, including subversion,
sabotage and acts of terrorism with
counterrevolutionary wars fought against
emerging independence movements in Asia . . . “
www.workers.org/marcy/perestroika/glossary.
html.

Petitioner further included respondents’ answers to
interrogatories indicating that the primary subject of
respondents’ “museum services” is “the study of the Cold
War.” (Response to Interrogatory No. 11A; Response to
Request for Admissions No. 2). Finally, petitioner
submitted deposition testimony, with exhibits including
printouts from respondents’ website.
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 in the record that the relevant public
understands “THE COLD WAR MUSEUM” as a whole to refer to the
museum services offered by respondents. In re American
Fertility Soc., supra, 51 USPQ2d at 1837. Accordingly, we
simply cannot conclude based on this record that petitioner
Cancellation No. 92047391
8
has proven by a “preponderance of the evidence” that the
mark is generic.
Descriptiveness and Acquired Distinctiveness
Petitioner has alleged in its pleadings and its brief
that “THE COLD WAR MUSEUM” is merely descriptive.
Respondents do not dispute that allegation, and the mark is
registered with a Section 2(f) claim of acquired
distinctiveness. 15 U.S.C. §1052(f). Accordingly, that the
mark is “merely descriptive” is an established fact in these
proceedings. See Yamaha International v. Hoshino Gakki, 840
F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (when a mark
is registered under the provisions of Section 2(f), “the
statute accepts a lack of inherent distinctiveness as an
established fact”); Omnicom Inc. v. Open Systems Inc., 19
USPQ2d 1876, 1878 (TTAB 1989) (registrant's claim of
secondary meaning pursuant to Section 2(f) is evidence that
the mark in question is not inherently distinctive). As
previously discussed, the record shows that “cold war” is a
recognized term regarding a particular conflict between
nations in the latter half of the twentieth century. The
evidence further indicates that the primary subject of
respondents’ “museum services” is “the study of the cold
war,” and we conclude that consumers viewing the mark “COLD
WAR MUSEUM” for “museum services” would immediately
understand that the respondents’ museum contains artifacts
and information relating to the cold war. See In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re
Cancellation No. 92047391
9
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). Accordingly, we find that petitioner has met
its burden of proving a prima facie case that respondents’
mark is highly descriptive, and that it has not acquired
distinctiveness. Yamaha Int’l Corp. v. Hoshino Gakki Co.
Ltd., supra, 6 USPQ2d at 1004 (the “one opposing a Section
2(f) registration published for opposition on the basis of
that section must have at least the initial burden of
challenging or rebutting the applicant's evidence of
distinctiveness made of record during prosecution which led
to publication of the proposed mark."). Accordingly, the
burden is shifted to respondents to show that their mark has
acquired sufficient distinctiveness to overcome its status
as “merely descriptive.” Id. at 1005.
The kind and amount of evidence necessary to establish
that a mark has acquired distinctiveness in relation to
goods or services depends on the nature of the mark and the
circumstances surrounding the use of the mark in each case.
Id.; Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823,
166 USPQ 34 (CCPA 1970); In re Hehr Mfg. Co., 279 F.2d 526,
126 USPQ 381 (CCPA 1960); In re Capital Formation
Counselors, Inc., 219 USPQ 916 (TTAB 1983). The more
descriptive the mark, the greater the burden is on the
respondent to prove its distinctiveness. See Yamaha Int’l
Corp. v. Hoshino Gakki Co. Ltd., supra, 6 USPQ2d at 1008-
1009. In Yamaha, the Court of Appeals for the Federal
Circuit affirmed the Board’s ruling that with a product
Cancellation No. 92047391
10
design configuration, there was a greater burden on the
applicant to show acquired distinctiveness. Id. Since we
have likewise found the mark here to be “highly
descriptive,” respondents must present a heightened showing
of acquired distinctiveness to meet their burden.
The evidence submitted by petitioner shows that
respondents first used “THE COLD WAR MUSEUM” as a mark in
1996. (Response to Interrogatory No. 11A). However, there
is no evidence of record that respondents have used the mark
continuously since that date. Furthermore, in response to
petitioner’s interrogatory asking: “For each calendar year
since Registrant commenced use of the COLD WAR MUSEUM Mark
or alleged Mark alone, state the amount expended by
Registrant in the advertisement of [museum services] in the
United States,” respondents answered (after objections):
“The Cold War Museum, Inc. relies heavily on press stories,
press releases and public service announcements to promote
THE COLD WAR MUSEUM.” (Response to Interrogatory No. 19).
However, the only evidence provided regarding media coverage
for respondents’ Cold War Museum dates from 1997. (Response
to Interrogatory No. 18). The evidence of record does
indicate that respondents have made efforts to stop third
parties from using the term “COLD WAR MUSEUM” in their
business or domain names without a license from respondents.
(Response to Interrogatories No. 24 and 25). However, there
is insufficient evidence for us to conclude that
respondents’ mark has acquired distinctiveness.
Cancellation No. 92047391
11
Although respondents appear to have submitted evidence
of acquired distinctiveness when they made their claim of
acquired distinctiveness in prosecuting the application
which issued as Registration No. 2831529, respondents chose
not to submit that evidence, or any other evidence, into the
record of this proceeding. This situation is reminiscent of
that discussed by the Board, and affirmed by the Court of
Appeals for the Federal Circuit, our primary reviewing
court:
Before proceeding with the merits of the claim of
distinctiveness, we must clarify a number of
questions regarding the evidence we have
considered. To begin with, during the ex parte
phase of the prosecution of this application,
applicant submitted materials which persuaded the
Examining Attorney that the color had acquired
secondary meaning. Numerous exhibits, affidavits,
and a market survey convinced the Examining
Attorney to publish the mark for opposition.
These materials, with the exception of those made
of record otherwise in this inter partes
proceeding (in connection with testimony or by
proper notices of reliance), have not been
considered by the Board. While the application
file is automatically part of the record in an
opposition proceeding by means of Trademark Rule
2.122(b), the allegations made, and documents and
other things filed in connection with the
application, are not evidence in the inter partes
proceeding on behalf of the applicant. See:
Kellogg Co. v. Pack'em Enterprises Inc., 14 USPQ2d
1545 (TTAB 1990), aff'd, 21 USPQ2d 1142 (Fed. Cir.
1991); McDonald's Corp. v. McKinley, 13 USPQ2d
1895 (TTAB 1989). Accordingly, the materials
submitted only in the ex parte effort to establish
registrability under Section 2(f) of the Act were
not considered in reaching our decision in this
opposition proceeding.
British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d
1197, 1200 (TTAB 1993), aff’d, 35 F.3d 1527, 32
USPQ2d 1120 (Fed. Cir. 1994).
Cancellation No. 92047391
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Because we cannot consider the evidence from the
registration file, there is insufficient evidence of
acquired distinctiveness. Accordingly, on this record, we
find that respondents have not met their burden of proving
acquired distinctiveness of the mark “THE COLD WAR MUSEUM.”
Since we are ruling for petitioner on this ground, there is
no need for us to discuss petitioner’s allegations as to the
proper registrant.
Conclusion
The petition to cancel “THE COLD WAR MUSEUM”
registration is granted on the basis that the mark is merely
descriptive and respondents’ have failed to show acquired
distinctiveness.
DECISION: The petition to cancel is granted.
Registration No. 2831529 will be canceled in due course.