By James Juo.

A trademark application may be refused by the USPTO on the ground that the proposed mark is primarily geographically misdescriptive of the identified goods, under Section 2(e)(3) of the Trademark Act (the “Act”), 15 U.S.C. § 2(e)(3).[1] To support a Section 2(e)(3) misdescriptiveness refusal against a trademark application, the USPTO must prove that:

1. the primary significance of the mark is a generally known geographic place or location;
2. the goods for which applicant seeks registration do not originate in the geographic place identified in the mark;
3. purchasers would be likely to make a goods-place association; that is, purchasers would be likely to believe that the goods originate in the geographic place identified in the mark; and
4. the misrepresentation regarding the geographic origin of the goods would be a material factor for a significant portion of the relevant consumers deciding whether to buy the goods in question.

See In re Miracle Tuesday, LLC, 695 F.3d 1339, 104 USPQ2d 1330, 1332 (Fed. Cir. 2012) (citing In re Cal. Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1858 (Fed. Cir. 2003)); In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003); see also In re Spirits Int'l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1493 (Fed. Cir. 2009) (holding that the test for materiality incorporates a requirement that a “significant portion of the relevant consumers be deceived”).

In the precedential decision of In re Jonathan Sibony, Ser. No. 86293054, — USPQ2d — (TTAB 2021), the USPTO had refused registration of the word mark REPUBLIC OF LONDON for shirts, pants, and other clothing items, asserting the mark was geographically misdescriptive under Section 2(e)(3), which was appealed to the TTAB.

With respect to the first prong, the TTAB acknowledged that the Examining Attorney submitted “sufficient evidence that London is a generally known geographic place or location known for fashion and apparel manufacture.”

While the Applicant, Jonathan Sibony, “readily” acknowledged that the goods do not originate in London, he argued that “there is no such place as the ‘Republic of London,'” so the primary significance of the REPUBLIC OF LONDON mark under the first prong is not a generally known geographic location. The Examining Attorney conceded that “REPUBLIC OF LONDON, literally, is fictitious.”

In discussing its prior precedents, the TTAB noted that it previously had held that PARIS BEACH CLUB, applied to T-shirts and sweatshirts, was not deceptive under Trademark Act Section 2(a) because Paris is not located on an ocean or lake, and does not have a beach, thus creating an incongruous and humorous phrase so “the requisite goods/place association which is necessary for finding a mark is geographically deceptively misdescriptive or geographically deceptive is not present.” In re Sharky's Drygoods, 23 USPQ2d 1061, 1062–63 (TTAB 1992).

The TTAB also discussed In re Morinaga Nyugyo K.K., 120 USPQ2d 1738, 1748 (TTAB 2016), where the Board found the applicant's mark MT. RAINIER THE MOUNTAIN OF SEATTLE ESPRESSO & MILK and Design was not primarily geographically deceptively misdescriptive of espresso beverages and espresso flavored sandwiches because “[w]hile there is no doubt that the term SEATTLE identifies a generally known geographic location, as it is used in the context of Applicant's mark, we do not find that the relevant public would consider it to indicate of the origin of the goods.”

In these cases, the additional literal elements altered the deceptive (under Trademark Act Section 2(a)) or primarily geographically deceptively misdescriptive (under Trademark Act Section 2(e)(3)) nature of the marks as to the goods involved.

Here, neither “LONDON” nor “the city of London” was the mark at issue. Rather, based on the evidence of record and the applicable authorities, REPUBLIC OF LONDON is a phrase referencing a fictitious place that does not exist. The TTAB noted that the addition of “REPUBLIC OF” to “LONDON” shifts the primary significance of the mark away from LONDON proper.

While REPUBLIC OF LONDON includes the geographic term “London,” the primary significance of the mark as a whole is a fictitious place, the “Republic of London.” Because Section 2(e)(3) requires the mark, as a whole, to be primarily geographically deceptively misdescriptive, REPUBLIC OF LONDON does not meet the first prong of this standard, namely, that the primary significance of the mark as a whole be a generally known geographic place.

Both the Examining Attorney and the Applicant also submitted evidence of third-party registrations. The TTAB, however, found them “to be of little relevance,” noting that the registrations were either for products far removed from the clothing products at issue, or did not contain a geographic term (such as REPUBLIC OF SPORT).

The trademark attorneys at Thomas P. Howard, LLC are experienced at prosecuting trademark applications before the USPTO, as well as enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

[1] A trademark application also can be refused by the USPTO under Section 2(e)(2) on the ground that the proposed mark is primarily geographically descriptive of the identified goods.