Trademark Cancellation: Presumption of Validity includes Presumption of Acquired Distinctiveness for Marks Registered under Section 2(f)

Cold War Museum v. Cold War Air Museum (Fed. Cir. 2009)

In 2004, the appellant registered the service mark THE COLD WAR MUSEUM under Section 2(f) after providing evidence that the mark had acquired distinctiveness through “substantially exclusive and continuous use in commerce for at least the previous five years.”

Three years later, the Air Museum filed a cancellation proceeding. In that proceeding, the TTAB cancelled the mark based on its finding that the mark was merely descriptive of the service being provided.

On appeal, the Federal Circuit reversed TTAB and instead held that the party seeking to cancel the mark had not overcome the presumption “the registered mark has acquired distinctiveness.”

A mark registered on the Principal Register is presumed to be valid. . . . [T]he presumption of validity that attaches to a Section 2(f) registration includes a presumption that the registered mark has acquired distinctiveness. To rebut this presumption, a party seeking to cancel a Section 2(f) registration must produce sufficient evidence for the Board to conclude, in view of the entire record in the cancellation proceeding, that the party has rebutted the mark’s presumption of acquired distinctiveness by a preponderance of the evidence.

TTAB had refused to consider the mark-holder’s originally submitted evidence of distinctiveness. On appeal, the Federal Circuit also held that evidentiary ruling to be in error.

[T]he Board acknowledged that the applicant had submitted evidence of acquired distinctiveness during prosecution. However, the Board decided that it could not consider this evidence because the Cold War Museum did not resubmit the evidence in the cancellation. This was error. The unambiguous language of 37 C.F.R. ยง 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. Therefore, the evidence of the mark’s acquired distinctiveness submitted during prosecution was automatically part of the record before the Board, and the Board was required to consider this evidence in determining whether Air Museum had met its burden of proving a lack of acquired distinctiveness by a preponderance of the evidence.

rules indicate that the “evidence of record” in an opposition includes the entire registration file history .

23 thoughts on “Trademark Cancellation: Presumption of Validity includes Presumption of Acquired Distinctiveness for Marks Registered under Section 2(f)

  1. 21

    Not Che Guevara,

    Thanks for identifying yourself as a birther wingnut. BTW, where was McCain born?

  2. 18

    “On the other hand as far as patents are concerned, isn’t it trending towards a reduced presumption of validity.”

    No Mooney, its not.

  3. 17

    Dear Lionel,

    My question was:

    “If not Reagan, then who?”

    Let me put it this way:
    Who deserves more credit than President Reagan?

  4. 16


    The Soviet Union collapsed under the weight of it’s poor economic policies, the primary of which was central planning. Some market basis is required to properly evaluate the needs and wants of a community.

    Did Reagan accelerate the collapse by his arms escalation? Sure. But the idea that Reagan brought down the USSR is absurdly naive.

  5. 15

    What I’m curious about is: is the ratio of wingnut patent prosecutors who comment here abnormally high because of the software troll/E.D.Texas angle, or i there just one genuinely tweaked puppy who yaps like crazy ever time St. Ronnie is mentioned?

  6. 13

    “”Reagan ended the cold war” That Republican canard never gets old. ”

    And the old canard that Obama is an American citizen, or that Lincoln “freed the slaves” never gets old either

    Is there any doubt that Mooney and Hutz are the same angry little liberal?

  7. 12

    A simple google of “COLD WAR MUSEUM” shows what seems to be several entities using that mark. Appellant needs to aggresssively protect their mark (e.g. sue all other users) or risk losing that mark.

    The 04-Feb-2003 trademark application for THE COLD WAR MUSEUM says the first use was July 13, 1996. A google books search for “COLD WAR MUSEUM” before July 1996 shows generic use of the term going back to at least 1969.

  8. 11

    i was easily better off within the first ten days of his term, so much so that i started the nobel peace prize nomination process for him

  9. 10

    JAOI – Why Messiabama, of course! He’s responsible for everything good, even when it’s double-plus-ungood (in which case, it’s still good)!

    I mean, aren’t you better off now than you were 11 months ago???!!!

    Of course, the recession would have last pretty much the same length whether a republican or democrat was president, but at least this way we’ve tripled the national debt . . . (what, that isn’t a good thing . . . oh yeah) . . . um, hey, isn’t that a squirrel on the White House lawn.

    Good job, Messiabama and the dum-o-cRATs (remember when the dum-o-cRATs cried because the republican commercial showed “RAT” before showing the whole word “democrat”.)

  10. 7

    On the other hand as far as patents are concerned, isn’t it trending towards a reduced presumption of validity.

  11. 3

    Seems to me Reagan ended the cold war Mooney. A heck of a lot more than you will EVER do – not counting, of course your lengthy resume of indecent acts with the corpse of Che Guevara’s mule. I read on DRUDGE about a guy who just got three years in jail for indecent liberties with a horse – do you like horses too Mooney?

  12. 2

    The Cold War Museum I believe is run or was started by Gary Powers son….Gary Powers Jr.

    MM – I hope you have heard of him at least.

  13. 1


    Never heard of it until now. Is that where they keep Reagan’s brain?

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