Washington D.C.'s International Spy Museum has accused the KGB Spy Museum in New York of stealing its trademarks.

The International Spy Museum said in a lawsuit that the KGB Spy Museum, which recently opened in Manhattan, infringed its registered “International Spy Museum” and “Spy Museum” trademarks while using a similar red-and-black color scheme on its website.

The Washington also accused the New York museum of deceptive practices, such as temporarily listing the International Spy Museum’s phone number on its website.

The complaint, filed Jan. 22 in the U.S. District Court of the Southern District of New York, said the new museum’s solicitation of donations and ".org” web location suggests nonprofit status, though the institution doesn’t appear in the federal database of nonprofits.

The Washington museum, currently closed amid construction at a new location, also said it also couldn’t find any business with a name similar to “KGB Spy Museum” registered to do business in New York State.

Distinct or Disguised

Trademark infringement depends on the likelihood consumers may mistakenly believe a trademark rights-holder to be associated with a good or service.

Attorneys say the KGB museum will likely argue “Spy Museum” merely describes the product—and such “descriptive” marks don’t inherently warrant protection. The KGB was the former Soviet Union’s security and intelligence agency from 1954-91. But descriptions can be overcome if consumers associate a mark with a particular source or, in this case, museum.

“It’s an interesting case for sure,” said Danny Awdeh, an IP attorney for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. “Merely descriptive marks aren’t inherently protectable. But they can become protectable through ‘acquired distintiveness,’ if the general public identifies it as indicating a particular company or source.”

Awdeh cited Chipotle as an example where a mark that’s simply the name of a Mexican chili came to represent a powerful brand that included it in its cuisine. He said numbers cited in Spy Museum’s complaint—more than 600,000 admissions and $125 million in sales annually—helps make a case for brand recognition.

The D.C. museum had to persuade the U.S. Patent and Trademark Office that the mark had “secondary meaning” beyond descriptiveness to customers in order to secure the registration of Spy Museum in 2018. That makes the mark presumptively valid nationwide, shifting the burden to the KGB museum to show otherwise, according to Michael Graif, a trademark attorney for Mintz, Levin, Cohn, Ferris, Glovsky and Popeo PC.

Graif said he’d imagine consumer surveys would come into play during litigation. That could help the D.C. museum establish that consumers would assume the KGB Spy Museum was associated with the International Spy Museum. Other ways of establishing likelihood of confusion would include discovery of evidence of bad faith or intent to appear associated with the D.C. museum, he said.

“It’s not going to help that they initially had the phone number of the Spy museum on the website,” Graif said.

Awdeh also found the phone number and alleged lack of registration as a New York business or nonprofit “troubling.” Proving actual consumer confusion can be difficult to establish, he said. But evidence the KGB museum even tried to copy the D.C. museum’s appearance could lead a court to assume it accomplished its goal.

“Absent products or services truly competitive or absent willful infringement or bad faith, it’s difficult to prove damages,” Awdeh said, noting damages would be limited considering the newness of the museum. “Bad faith and willful infringement are relevant to escalating damages, and come into play in a consumer confusion analysis as well.”

A spokesperson for the International Spy Museum declined to comment, and an attorney representing it did not immediately respond to a request for comment. KGB Spy Museum did not immediately comment.

The Roberts Law Group PLLC represents The International Spy Museum.

The case is The International Spy Museum v. The KGB Spy Museum, S.D.N.Y., No. 19-636, 1/22/19