On February 28th, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Trademark Trial and Appeal Board’s (TTAB) decision to refuse registration of two trademark applications belonging to JC Hospitality LLC (JC). Both applications sought to register the mark THE JOINT under different classes of services (Class 41 and Class 43). See In re JC Hospitality. The CAFC agreed with the TTAB that the marks were merely descriptive of JC’s services, and lacked any showing that the marks acquired distinctiveness as source identifiers.
The law is not particularly new in this non-precedential decision, although the trademark applicant obviously had a different opinion than did the trademark examiner, the TTAB and the Federal Circuit on the acquired distinctiveness of THE JOINT. Nevertheless, the case is an interesting quick read and a good reminder of what is required in order to obtain a trademark. It is also provides a cautionary tale for business owners who quite frequently will prefer a name or mark that is merely descriptive of the goods or services, which from a marketing / business perspective can seem like a good choice. Legally speaking, from a proprietary standpoint, obtaining protection for such names and marks ranges from impossible to virtually impossible to extremely difficult.
No Luck for THE JOINT at the PTO
The applications at issue were both related to the same proposed trademark — THE JOINT — in standard characters. Application Serial No. 85/525,425 (the ‘425 application), covered entertainment services in the form of live shows and concerts, and Application Serial No. 86/525,431 (the ‘431 application), covered restaurant, bar, and catering services. The trademark examining attorney, upon review of the applications, refused registration in both cases because THE JOINT is generic for both classes of services, or in the alternative because the mark is merely descriptive of the services.
After receiving the rejection, JC amended its application under 2(f) of the Trademark Act, claiming that the mark had acquired distinctiveness and could therefore be registered. The trademark examining attorney considered the argument, but once again rejected both applications for the same two reasons (i.e., THE JOINT is generic, or alternatively, merely descriptive without any acquired distinctiveness).
After final refusal by the trademark examining attorney, JC appealed to the TTAB, which affirmed the examiner’s determination that THE JOINT was generic, or in the alternative, merely descriptive without having acquired distinctiveness as a source identifier for the mark.
On to the Federal Circuit for THE JOINT
In its review of the TTAB’s decision, the Federal Circuit looked to the methods used by the TTAB in determining that JC’s mark is merely descriptive. The Court concluded that it was appropriate to consider both the Oxford dictionary and Wiktionary definitions of “joint” which demonstrate that the mark conveys the idea of a business establishment that provides live musical entertainment and shows paired with nightclub, restaurant, and bar services. The court also agreed that numerous news excerpts clearly demonstrated usage of the terms “the joint” and “joint.” Furthermore, the Court rejected JC’s argument that “THE JOINT” can be registered as a double entendre for the applied-for services as a slang term for “prison,” because the evidence did not show a relationship between applied-for services and prison.
The Federal Circuit then turned to the ‘425 application, in which JC argued that the evidence in the record did not reflect that “THE JOINT” is descriptive of live musical performances, shows, concerts, or nightclub services under Class 41. The court found that JC failed to provide any explanation as to why the TTAB’s decision was not supported by substantial evidence, and thus concluded that all evidence pointed toward the mark being merely descriptive of entertainment services under Class 41.
The court next turned to JC’s argument that the TTAB erred in finding that the mark did not demonstrate acquired distinctiveness. JC argued that the declarations made by its own Vice President of Entertainment demonstrate that “THE JOINT” has been in exclusive and continuous use since 1995. JC also argued that the TTAB required an impossible level of evidence by requiring context for JC’s sale and marketing figures, as requested in response to JC’s assertion that a total gross revenue of more than $104 million and press/internet recognition of the mark are evidence of distinctiveness. The Court disagreed with JC, finding that a high level of proof is required to show acquired distinctiveness, such as information comparing JC’s sales and marketing figures to other similar businesses. In fact, the Court explained that these questions are particularly appropriate because the record evidence showed significant overlap between JC’s use of “THE JOINT” with other high-profile marks, such as “Hard Rock” and “Hard Rock Hotel & Casino.”
With all evidence considered, the Court affirmed the TTAB’s refusal to register “THE JOINT” for services under either Class 41 or 43.
The Difficult Case of Acquired Distinctiveness
A trademark can be any word, name, symbol, or device or any combination thereof used by any person or business to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. In order to be registered, a mark must be capable of distinguishing the goods of the trademark applicant from those of others. Fundamentally, the problem here for JC Hospitality was that the trademark examiner, the TTAB and ultimately the Federal Circuit did not believe THE JOINT would be capable of distinguishing the goods/services in question.
Trademarks are often classified in categories of generally increasing distinctiveness, namely a trademark can be considered to be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. The latter three categories of trademarks are deemed inherently distinctive and are entitled to trademark protection because their intrinsic nature serves to identify a particular source of a product. In contrast, generic marks are those that refer to the genus of which the particular product cannot be registered as trademarks. Similarly, trademarks that are merely descriptive of a product are not inherently distinctive and hence cannot be protected.
The primary question in this case was whether THE JOINT, which was descriptive, had acquired the distinctiveness necessary to allow it to be protected. The Trademark Laws in the United States explain that a descriptive mark that otherwise could not be registered may be registered if it has become sufficiently distinctive. This acquired distinctiveness is generally called secondary meaning. So it is said in the industry that when a descriptive trademark has acquired secondary meaning it may then be protected.
The Trademark Manual of Examining Procedure explains secondary meaning as follows:
The crux of the secondary meaning doctrine is that the mark comes to identify not only the goods but the source of those goods. To establish secondary meaning, it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer (citations omitted).
This presents a heavy burden on the trademark applicant. It is not an insurmountable burden, but demonstrating the primary significance of the term is the producer and not the product is not easy.