SW Legal studies in Business

Descriptive Mark Must Have Be Distinctive to Be Registered and Valid
Description

Appeals court held that a descriptive mark that had been in use for more than five years and had evidence of distinctiveness was valid when registered. The presumption that it was not valid was not overcome by a challenge to the mark by a party that wished to have the registration removed.

Topic Intellectual Property
Key Words

Trademark; Descriptive Trademark; Distinctiveness; Registration

C A S E   S U M M A R Y
Facts

Powers filed an application to register the service mark, The Cold War Museum, for museum services. Powers claimed registration on the basis of acquired distinctiveness as required under the Lanham Act. The mark had become distinctive through exclusive and continuous use in commerce for more than five years. The examining attorney refused registration, contending that the mark was “merely descriptive” of the identified museum services. Powers appealed and the Patent and Trademark Office (PTO) concluded that the mark, while descriptive, was entitled to registration. Three years later, the Cold War Air Museum filed a petition for cancellation of the mark with the PTO, alleging that “the cold war museum” was merely descriptive and the mark never should have been registered. The PTO granted the request and cancelled the mark as it determined that the mark had not acquired sufficient distinctiveness to overcome its descriptive status. The Cold War Museum appealed.

Decision

Reversed. Due to the presumption of validity for a registered trademark, the burden of persuasion in a cancellation proceeding rests on the party seeking to cancel the registration. The presumption of a mark’s validity includes a presumption that the registered mark has acquired distinctiveness. That presumption must be rebutted. Regardless of the descriptive nature, the mark in this case had acquired distinctiveness in use for more than five years as required for valid registration. The plaintiff failed to overcome the presumption of distinctiveness that had been established at the time the mark was registered.

Citation Cold War Museum, Inc. v. Cold War Air Museum, ---F.3d--- (2009 WL 3644936, Fed. Cir., 2009)

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