IP Law Daily THE JOINT merely descriptive of restaurant and entertainment services
Friday, February 28, 2020

THE JOINT merely descriptive of restaurant and entertainment services

By Linda O’Brien, J.D., LL.M.

Refusal of THE JOINT trademark application was affirmed on the grounds that the mark was merely descriptive of the applicant’s hospitality business services and acquired distinctiveness was not demonstrated.

A hospitality services’ applications to register the mark "THE JOINT" for two different classes of services were properly refused because the mark was merely descriptive of the applied-for restaurant and entertainment services and the applicant did not demonstrate acquired distinctiveness, the U.S. Court of Appeals for the Federal Circuit has determined. Thus, the Trademark Trial and Appeal Board’s order refusing registration of both proposed marks was affirmed (In re JC Hospitality LLC, February 28, 2020, Prost, S.).

Hotel and restaurant furniture designer JC Hospitality LLC ("Applicant") sought to register on the Principal Register the mark "THE JOINT" (in standard characters) for covering "entertainment services, namely live musical performances, shows, and concerts; and nightclub services" in International Class 41 and "restaurant, bar and catering services" in International Class 43.

The examining attorney refused to register the mark under Section 2(e)(1) of the Trademark Act on the two alternative grounds: that THE JOINT was generic for both classes of applied-for services, or in the alternative, merely descriptive of the services. The Board affirmed the examining attorney’s findings and the Applicant appealed the refusal to register.

Mere descriptiveness. The Board’s conclusions that THE JOINT was merely descriptive of the aAplicant’s services was supported by substantial evidence, according to the court. In finding that the common use of the term "joint" describes restaurant and entertainment services as covered by Classes 41 and 43, the Board considered numerous dictionary definitions that were submitted by both the examining attorney and the Applicant. The dictionary evidence demonstrated the proposed mark immediately conveyed "the idea of a business establishment that provides live musical performances, shows, and concerts, and nightclub, restaurant and bar services." The Board also considered several news excerpts to demonstrate use of the term "the joint."

The Applicant’s argument that, even if the mark was descriptive of its services it was registerable as a double entendre, was rejected. While acknowledging that the Applicant submitted evidence that "the joint" was one of several slang terms for prison, the Board found such evidence unpersuasive as it failed to show a relationship between prison and the applied-for services that was required for proving a double entendre for trademark purposes.

Acquired distinctiveness. The Applicant asserted that THE JOINT mark has been in substantially exclusive and continuous use since March 1995, there were $12 million in marketing expenditures and $104 of gross revenue associated with the proposed mark, and various social media websites showed press and public recognition. Upon consideration of the Applicant’s evidence, the Board concluded that, relative to the highly descriptive nature of THE JOINT, such evidence was insufficient to show that the mark had acquired distinctiveness. Specifically, the Applicant’s services were limited to a single venue within a Las Vegas casino, there was no context for how the asserted sales and marketing figures compared to similar nightclubs and restaurants, and it was unclear which mark attracted public attention since THE JOINT often appeared in connection with other marks.

In finding no error in the Board’s challenges to the Applicant’s evidence, the Federal Circuit determined that the Board’s determinations were supported by substantial evidence. Thus, the Board’s order regarding of the refusal to register the Applicant’s mark must be affirmed, the court concluded.

The cases are Nos. 2018-2048 and 2018-2049.

Attorneys: Jill Maria Pietrini (Sheppard Mullin Richter & Hampton LLP) for JC Hospitality LLC. Thomas L. Casagrande, U.S. Patent and Trademark Office, for Andrei Iancu.

Companies: JC Hospitality LLC

MainStory: TopStory Trademark USPTO FedCirNews

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