In a complaint filed on January 22, 2019, Washington, DC’s International Spy Museum accused New York’s KGB Spy Museum of infringing its registered “International Spy Museum” and “Spy Museum” trademarks, in addition to using a similar color scheme on its website. The Washington museum also accused the New York museum of deceptive practices, which can lead to consumer confusion. Bloomberg Law reached to Finnegan partner Danny Awdeh for his thoughts on the case.

Danny said, “It’s an interesting case for sure. Merely descriptive marks aren’t inherently protectable. But they can become protectable through ‘acquired distinctiveness,’ if the general public identifies it as indicating a particular company or source.” Based on the Washington museum’s annual admissions and sales, Danny believes there is justification that supports brand recognition.

Regarding deceptive practices, the International Spy Museum accused the KGB Spy Museum of temporarily listing the International Spy Museum’s phone number on its website. The International Spy Museum also found no record of a business with a name similar to “KGB Spy Museum” registered in New York State. Danny agreed that this is troubling and while proving consumer confusion can be difficult, the court may side with the International Spy Museum based on the evidence that the KGB museum tried to copy its appearance.

Lastly, Danny provided his thoughts on proving damages. He said, “Absent products or services truly competitive or absent willful infringement or bad faith, it’s difficult to prove damages. Bad faith and willful infringement are relevant to escalating damages, and come into play in a consumer confusion analysis as well.”