11 December 2020TrademarksMuireann Bolger

Distillery toasts gin trademark victory at US TTAB

The City of London Distillery has temporarily prevented a competitor from registering a ‘City of London’ trademark in the US, at the US Trademark Trial and Appeal Board (TTAB).

On Tuesday, December 8, the board found that the Hayman Group had failed in its attempts to show that consumers viewed ‘City of London’ as a brand rather than a geographic reference, despite decades of sales in the US.

However, the TTAB stopped short of accepting the City of London Distillery’s argument that the mark was permanently incapable of functioning as a trademark.

Hayman asserted that it adopted the mark to suggest that its gin is a ‘London Dry’ gin.

In its opposition, the City of London Distillery argued that the company “produces and sells gin with the trade name and brand name ‘City of London’, that London Gin Distillery is the oldest working distillery located in the UK capital,” and that the City of London is “an area of historic significance” which “has a rich gin history”. Consequently, it held that Hayman’s mark should be invalid because it was geographically descriptive.

The board found that it is common knowledge among the US public that London is a major city in England, and that while the “City of London” is technically a subdivision of the “city of London,” the public, including gin drinkers, are likely to perceive the mark as referring generally to the city of London, England.

It further stated that “in the absence of any evidence indicating that the addition of the words ‘City of’ would either prevent US consumers from understanding that the mark refers to London, England, it found that the mark for gin is the name of a geographic place (London) known generally to the US gin drinking and purchasing public.

It added that US consumers of gin will not view ‘City of London’ as connoting a characteristic of the gin itself, but, as as describing where it comes from.

The board found that the mark does not directly convey to the US gin drinker or purchaser that the applicant’s product is a London dry gin or any other type of gin, and that Hayman’s mark for gin was primarily geographically descriptive.

It added that Hayman’s evidence to support its assertion that its mark had acquired distinctiveness was inadequate. “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,” it said.

The board continued: “Although the  applicant’s use of the mark...for gin has been continuous and substantially exclusive since October 2012, its sales and advertising have been de minimis and it has received no media attention. Accordingly, [the] applicant failed to prove that ‘City of London’ for gin has acquired distinctiveness and we refuse to register the mark under Section 2(f) of the Trademark Act.”

However, it found that the mark was not so highly geographically descriptive and commonly used that it could never function as a trademark, stating that “we find that the applicant’s mark ...for gin is capable of functioning as a mark...”.

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