Cold War Air Museumv.The Cold War Museum, Inc.

Trademark Trial and Appeal Board

Apr 30, 2010

No. 92051706 (T.T.A.B. Apr. 30, 2010)

Mailed: April 30, 2010

Cancellation No. 92051706

Cold War Air Museum

v.

The Cold War Museum, Inc.

Before Walters, Grendel, and Bergsman,
Administrative Trademark Judges.

By the Board:

Cold War Air Museum (“petitioner”) seeks to cancel The
Cold War Museum Inc.’s (“respondent”) registration for the
mark THE COLD WAR MUSEUM1 for museum services in
International Class 41. As grounds for cancellation,
petitioner alleges that the involved registration was
fraudulently applied for and obtained and the mark is
generic for the recited services.
In lieu of an answer, respondent filed a motion to
dismiss under Fed. R. Civ. P. 12(b)(6) on January 11, 2010.2
Because both parties have submitted evidentiary materials
outside the pleadings which we have not excluded, we

1 U.S. Registration No. 2831529, issued April 13, 2004, reciting
July 13, 1996 as the date of first use and date of first use in
commerce.
2 Petitioner’s filing of March 24, 2010 was filed in
contravention of the suspension order of January 12, 2010 and
will receive no consideration.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92051706
2
construe the motion as one for summary judgment under Fed.
R. Civ. P. 56.3 See TBMP Section 503.04 (2d ed. rev. 2004).
Respondent seeks summary judgment in its favor on the
ground that petitioner is barred from bringing this action
because of the prior judgment in Cancellation No. 92047391.
In Cancellation No. 92047391, which involved the same
parties4 and the same registration herein, petitioner sought
cancellation on the grounds that the mark is used by a party
other than the registrant and that the mark is merely
descriptive or generic. In its decision of October 20,
2008, the Board found that while the mark was not generic,
it was descriptive, and that respondent had failed to
establish acquired distinctiveness. Having reached this
decision, the Board determined that there was no need to
address petitioner’s allegations regarding use of the mark
by a party other than registrant. On appeal, the United
States Court of Appeals for the Federal Circuit reversed the
Board’s decision, finding that the Board had erred as a
matter of law in concluding that petitioner had established

3 Although the time for serving initial disclosures has not
passed, inasmuch as it is based on the doctrine of res judicata,
respondent’s motion falls within the exceptions set forth in
Trademark Rule 2.127(e)(1).
4 Although we note that Cancellation No. 92047391 named Gary
Francis Powers, Jr. as a co-defendant along with The Cold War
Museum, Inc. (the named respondent in the proceeding herein).
Cancellation No. 92051706
3
a prima facie case that the mark had not acquired
distinctiveness.5
Summary judgment is only appropriate where there are no
genuine issues of material fact in dispute, thus allowing
the case to be resolved as a matter of law. Fed. R. Civ. P.
56(c). The party seeking summary judgment bears the burden
of demonstrating the absence of any genuine issue of
material fact, and that it is entitled to a judgment under
the applicable law. See Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting
Co., Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir.
1987). A factual dispute is genuine if, on the evidence of
record, a reasonable fact finder could resolve the matter in
favor of the non-moving party. See Opryland USA Inc. v.
Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v.
Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed.
Cir. 1992).
The evidence on summary judgment must be viewed in a
light most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant's favor.
Lloyd's Food Products, Inc. v. Eli's, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra.

5 The Federal Circuit decision similarly never addressed
petitioner’s allegations concerning the registrant.

Cancellation No. 92051706
4
The Board may not resolve issues of material fact; it may
only ascertain whether issues of material fact exist. See
Lloyd's Food Products, 25 USPQ2d at 2029; Olde Tyme Foods,
22 USPQ2d at 1542.
Under the doctrine of res judicata or claim preclusion,
“a judgment on the merits in a prior suit bars a second suit
involving the same parties or their privies based on the
same cause of action.” Jet, Inc. v. Sewage Aeration
Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir.
2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322,
326 n. 5 (1979)). “For claim preclusion based on a judgment
in which the claim was not litigated, there must be (1) an
identity of the parties or their privies, (2) a final
judgment on the merits of the prior claim, and (3) the
second claim must be based on the same transactional facts
as the first and should have been litigated in the prior
case.” Sharp Kabushiki Kaisha v. ThinkSharp, Inc., 448 F.3d
1368, 79 USPQ2d 1376, 1378 (Fed. Cir. 2006).
In this instance, it is clear that the doctrine of res
judicata applies to petitioner’s claim of genericness. The
parties are the same in each of the respective proceedings,
a final judgment on the genericness claim was rendered by
the Board in its order of October 20, 20086, and

6 The Board found that petitioner had not proven genericness by a
preponderance of the evidence, and petitioner never appealed this
ruling.

Cancellation No. 92051706
5
petitioner’s present claim of genericness is based on the
same set of transactional facts as that in the previous
cancellation proceeding. Hence, there is no genuine issue
of material fact that res judicata bars petitioner’s claim
of genericness in this proceeding.
With regard to petitioner’s claim of “fraud” we
similarly note that the doctrine of res judicata is
applicable. Again, there is no dispute that the first
condition is met because the same parties have been involved
in the respective cancellation proceedings. Also, after
reviewing the petitions to cancel in the respective
proceedings, there is no dispute that petitioner’s claim in
the present proceeding that respondent fraudulently obtained
its registration arises out of the same set of transactional
facts as in the prior cancellation proceeding. Lastly, the
final judgment on the merits in the prior Board proceeding,
precludes petitioner from now litigating its claim of fraud.
Under res judicata, a final judgment on the merits of an
action precludes the parties or their privies from
relitigating issues that were or could have been raised in
that action. See U.S. Soil, Inc. v. Colovic, 214 USPQ 471
(TTAB 1982) and cases cited therein. In this instance, it
is clear that petitioner’s “fraud” claim could have been
raised in the prior proceeding.
We turn to petitioner’s claim concerning the proper
registrant and find that to the extent such claim challenges
the ownership of the subject mark it is barred under Section
Cancellation No. 92051706
6
14 of the Trademark Act, 15 U.S.C. § 1064, inasmuch as the
subject registration is now over five years old. See TBMP
Section 307.02 (2d ed. rev. 2004).
In view of the foregoing, we hereby grant respondent’s
motion for summary judgment.
The petition for cancellation is dismissed.