Wednesday, December 16, 2020

Precedential No. 45: TTAB Finds CITY OF LONDON Geographically Descriptive for Gin, Grants Motion to Amend to Supplemental Register

Applicant Hayman Group Limited squeaked by with a Supplemental Registration for CITY OF LONDON for gin [LONDON disclaimed], after surviving an opposition based on four grounds: Section 2(e)(1) mere descriptiveness, Section 2(e)(2) geographical descriptiveness, Section 2(e)(3) geographically deceptive misdescriptiveness, and failure-to-function as a trademark. The Board sustained the geographical descriptiveness claim, dismissed the other three, rejected Hayman Group's claim of acquired distinctiveness, but granted the Group's motion to amend its application to seek registration on the Supplemental Register. City of London Distillery, Ltd. v. Hayman Group Limited, 2020 USPQ2d 11487 (TTAB 2020) [precedential] (Opinion by Judge Marc A. Bergsman). 

Section 2(e)(2) - Primarily Geographically Descriptive: The Board found that CITY OF LONDON is the name of a geographic place known generally to the American gin drinking and purchasing public, namely London, England. Although the “City of London” is technically a subdivision of London, American consumers are likely to perceive the mark CITY OF LONDON as referring generally to  London, England. Alternatively, if they perceive CITY OF LONDON as a sub-area within London, that necessarily means they perceive it as referring to London.

While Applicant’s gin does not originate in the technical City of London (i.e., within the boundaries of the financial district subdivision of London), it does originate in London. "Thus, Applicant is using the mark CITY OF LONDON to reflect its association with the geographic location known as the city of London. "

We find, therefore, that a goods-place association exists (the third element of a 2(e)(2) claim) because American gin purchasers and drinkers will believe that Applicant’s gin originates within or near the city limits of London and there is some association or connection between the gin and London.

The Board therefore sustained the Section 2(e)(2) claim.

Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive: The Board gave short shrift to the Section 2(e)(3) issue: "Because Applicant produces its gin in London and bottles it in nearby Essex, the mark CITY OF LONDON for gin does not present any material misrepresentation of fact. Accordingly, the opposition is dismissed as it pertains to Opposer’s Section 2(e)(3) claim."

Section 2(e)(1) - Merely Descriptive: Opposer contended that CITY OF LONDON is merely descriptive because it immediately conveys to purchasers that Applicant’s gin is a type of gin called "London dry." The Board, however, pointed out that the opposed mark, which includes CITY OF, is not the equivalent of or synonymous with LONDON DRY. In short, opposer's evidence did not establish that CITY OF LONDON immediately conveys any information concerning a feature, quality, or characteristic of the gin itself.

[T]he City of London is a historic district of London serving as London’s central business district known as a finance center. American consumers of gin will not view CITY OF LONDON as connoting a characteristic of the gin itself, but, as we have just held regarding the Trademark Act Section 2(e)(2) claim, as describing where it comes from. CITY OF LONDON does not directly convey to the American gin drinker or purchaser that Applicant’s product is a London dry gin or any other type of gin.

And so the Board dismissed the mere descriptiveness claim.

Failure-to-Function: Opposer argued that “the words ‘city of London’ are merely informational as they are highly geographically descriptive and/or highly descriptive of the style, purity, quality, ingredients and geographic origin of gin, such that CITY OF LONDON fails to function as a mark.”

Although opposer referred to the mark as "informational," the real issue was the allegedly highly descriptive nature of CITY OF LONDON as to gin. The CAFC identified the same issue in In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999), where it held that the purported mark THE BEST BEER IN AMERICA was so highly descriptive of the goods and so commonly used by others in connection with the goods “as to be incapable of acquiring distinctiveness as a trademark.”

The Board, however, did not "view the record here as showing that the phrase is so highly geographically descriptive and commonly used in connection with gin that it is incapable of being perceived, in the eyes of the gin-consuming public, as a source identifier." Therefore it dismissed the failure-to-function claim.

Motion to Amend: The Board then turned to Hayman Group's motion to amend its application, in the alternative, to seek registration under Section 2(f) of the Trademark, or on the Supplemental Register.

Trademark Rule 2.133 provides that an applicant may not amend in substance its application that is the subject of an opposition, except with the consent of the other party or parties and the approval of the Board, or except upon motion granted by the Board. Such a motion should be made before trial in order to give fair notice to the other party or parties. Hayman Group filed its motion to amend after the close of discovery but before opposer’s pretrial disclosures were due, and therefore it was timely.

Opposer insisted that, because it did not have the opportunity to conduct discovery on this issue, it should be allowed to take discovery as to whether the opposed mark has acquired distinctiveness. The Board observed that the motion to amend would add issues that are in the nature of affirmative defenses. Although Hayman Group did not plead its Section 2(f) claim or its alternative amendment to the Supplemental Register in its Amended Answer, "it was not categorically precluded from raising either basis for registration later by way of motion to amend the application. See, e.g., Embarcadero Tech. Inc. v. RStudio Inc., 105 USPQ2d at 1828-29." Rule 2.133 permits a party to file a motion to amend its application "so long as the motion gives Opposer sufficient notice to prepare for trial."

Finally, opposer’s claim that the mark CITY OF LONDON for gin fails to function as a mark "presupposes that it is incapable of functioning as a mark and, therefore, is not registrable on the Supplemental Register. Therefore, we find that Opposer has not shown that it needs additional discovery on this claim because it is part of Opposer’s case in chief."

The Board found that the motion to amend was timely and would not prejudice opposer if it were granted.

Acquired Distinctiveness: Because the evidence established that "London is so well-known and so closely-associated with gin generally―indeed, it gives its name to a specific and popular type of dry gin―we find CITY OF LONDON highly geographically descriptive in connection with gin." Consequently, Hayman Group's burden of establishing acquired distinctiveness under Section 2(f) was commensurately high.

Hayman Group did not submit any direct evidence of acquired distinctiveness, such as testimony from actual consumers or a customer survey. It has continuously and substantially exclusively used the CITY OF LONDON mark in the United States since 2012, with sales from October 2012 through November 22, 2019 (date of the declaration) exceeding $1.5 million dollars. However, it provided no context in the form of market share or growth, and so "these numbers do not show that CITY OF LONDON has acquired distinctiveness." Hayman Group provided no data regarding advertising expenditures, nor any evidence of intentional copying or of unsolicited media exposure. Not good enough, said the Board.

We considered the evidence as a whole and find that in light of the highly geographically descriptive nature of the mark, this meager showing falls far short of proving acquired distinctiveness.

Nonetheless, in light of the finding that CITY OF LONDON is capable of functioning as a mark, the Board granted Hayman Group's Rule 2.133 motion to amend and "approve[d]" the mark for registration on the Supplemental Register.

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TTABlogger comment:That was exhausting! I need a gin and tonic.

Text Copyright John L. Welch 2020.


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