Washington, D.C., partner Mark Tidman authored an article, "Important Issues In TTAB Cancellation Proceedings," which appeared on the "IPFrontline" website and in its November 17, 2009, newsletter.
The focus of the article is The Cold War Museum, Inc. v. Cold War Air Museum, Inc., recently heard by the U.S. Court of Appeals for the Federal Circuit. A. Neal Seth, an associate in the firm's Washington office argued for the appellant, and with him on the brief was Tidman.
According to Tidman, the recent decision by the court "clarified two significant issues involving cancellation proceedings which have been historically misunderstood and/or misapplied by practitioners and the Trademark and Trial and Appeal Board ("TTAB"). Specifically, in The Cold War Museum, Inc. v. Cold War Air Museum, Inc., the Federal Circuit addressed: (i) whether the file history for a trademark registration is automatically evidence of record in a cancellation proceeding, or instead needs to be introduced into the record through sworn affidavits or other means; and (ii) whether the burdens of proof that the respective parties carry in cancellation proceedings differ from those in opposition proceedings. No. 2009-1172, 2009 WL 3644936 (Fed. Cir. November 5, 2009)."
Tidman continues: "Many practitioners have often been under the misconception that without formally introducing evidence into the record in a cancellation proceeding, no such evidence exists. Further, practitioners commonly plead that a registration creates a presumption of validity under 15 U.S.C. ยง 1057(b) and typically have an understanding of what that means intellectually. Nonetheless, there has been some lack of clarity as to what this presumption of validity means as a practical matter and whether the TTAB will apply different burdens on the parties as between cancellation and opposition proceedings in practice."
According to Tidman, "In The Cold War Museum, the Federal Circuit first addressed the issue of what is considered to be evidence of record in a cancellation proceeding." To read Tidman's summary of the decision, click to read the full article from the IPFrontline website.