TTAB approves ‘Republic of London’ TM
The US Trademark Trial and Appeal Board (TTAB) has decided that the phrase “Republic of London” can be registered as a trademark, claiming that the place does not exist, therefore can be marked.
The examining attorney had previously refused registration on the grounds that the mark “is primarily geographically deceptively misdescriptive” as the goods do not originate from London.
However, the TTAB reversed the refusal to register, arguing that the examiner erred in finding that the mark was geographically misdescriptive of the goods because, while “Republic of London” includes the term “London”, the mark in full refers to a fictitious place.
In a short precedential opinion handed down on October 14, the TTAB board ruled that a mark is only geographically misdescriptive when considered as a whole.
The applicant, Jonathan Sibony, requested registration of the mark for International Class 25 covering “belts for clothing, blazers, blouses, capris…”.
‘Primarily geographic’
Administrative trademark judge Hudis argued that the US Trademark Act requires that a mark be “primarily” geographic in order to refuse a registration based on geographic matters.
Hudis wrote: “A composite mark would not be likely to be perceived as identifying the geographic origin of the goods or services, then the mark is regarded as arbitrary, fanciful, or suggestive and cannot be primarily geographically descriptive.”
Sibony argued that there is no such place as the “Republic of London”, so the mark refers to a fictitious location, citing prior cases where prior marks including “Republic of…” and “London” were issued in the US.
Countering this, the US Patent and Trademark Office (USPTO) issued opposing examples of geographical marks, including “City of London” that had been denied.
However, Hudis considered the third-party marks, cited by both parties “to be of little relevance,” as the products were far removed from the clothing products at issue.
Concluding the opinion, Hudis identified that “London is not the mark in question”, agreeing that the addition of “Republic of…” shifts the primary significance of the mark away from “London” proper.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
Today’s top stories
