Furniture specialist JC Hospitality looses appeal over trademark registration of its descriptive and generic mark
Date Published: Jun 21, 2021
JC Hospitality LLC ("Applicant") is a furniture designer specializing in hotel and restaurant furniture. The Applicant applied to register the mark “THE JOINT” for two different classes of services; one for entertainment services and the other for restaurant and catering services at the United States Patent and Trademark Office (“USPTO”). The examining attorney refused to register the mark on the ground that “THE JOINT” was generic or alternatively descriptive of the services for which it was applied for. Section 2(e)(1) of the Trademark Act was applied to refuse the registration and point out that such a mark did not demonstrate acquired distinctiveness or for holding such secondary meaning. The Trademark Trial and Appeal Board (“Board”) affirmed the decision of the examining attorney. Aggrieved by such a decision, the applicant preferred an appeal to get the mark registered. (In re JC Hospitality LLC, Appeal Nos, 2018-2048 and 2018-2049 (Fed. Cir. February 28, 2020). The United States Court of Appeals for the Federal Circuit affirmed the decision of the Board and dismissed the appeal.
The applicant applied to register the mark “THE JOINT” on the Principal Register for 2 particular classes of services. First, under Class 41 for entertainment services like live musical performances, nightclub services, etc. and secondly, under Class 43 for restaurant, bar and catering services. The examining attorney, after examination refused to register the mark according to Section 2(e)(1) of the Trademark Act on the ground that the mark is generic for the services or alternatively, descriptive for services. The applicant countered this stance, by arguing that the mark was neither generic nor descriptive. The applicant invoked Section 2(f) which permits registration of such marks if the mark has acquired distinctiveness or due extensive usage holds a secondary meaning. The examining attorney looked into the evidences which were presented to prove acquired distinctiveness but rejected all of them, stating that the mark was generic and descriptive in nature. For the purpose of reconsideration, the case was put forth to the Trademark Trial and Appeal Board. The board affirmed the decision of the examining attorney and refused registration on similar grounds. Hence, the case has been appealed to the United States Court of Appeals for the Federal Circuit.
With respect to the point which states that the mark is generic or descriptive, the appellant court was of the opinion that the Board was right when it found that “THE JOINT” was descriptive in nature and that there were sufficient evidences to prove the same. The Board referred to various dictionary meanings of the term “joint” where it clearly found that the word meant “the idea of a business establishment that provides live musical performances, shows, and concerts, and nightclub, restaurant and bar services.” Not only this, the court also referred to various news excerpts to find that the meaning of the word “joint” which was similar to its dictionary meaning. Having considered these factors, it was concluded by the board that “THE JOINT” for services falling under Class 41 and 43 would amount to Generic or merely Descriptive in nature. To scale the distinctiveness, the court relied on well established spectrum of distinctiveness which was formulated in the case of Abercrombie & Fitch Co. v. HuntingWorld, Inc., 537 F.2d 4, 10–11 (2d Cir. 1976))
Thereafter, the applicant argued that even if the mark is descriptive, it can be registered as a double entendre. The applicant indicated that “THE JOINT” was a reference to prison. However, the essential element of double entendre, which is, to have a relationship between prison and the applied-for services, was lacking and could not be evidenced. Hence, even this argument of the applicant was rejected by the board and affirmed by the appellant court.
With respect to the point that the alleged mark did not acquire distinctiveness, the applicant argued and evidenced that the mark was in continuous use since 1995 and that there were $12 million in marketing expenditures and $104 of gross revenue associated with the proposed mark. It was also socially very well recognised. The board, upon considering these facts, had set a very high-level proof of acquired distinctiveness in cases where the mark was merely descriptive of the services to get it registered on the principal register. The board concluded that for such highly descriptive mark, the evidences presented for it to prove acquired distinctiveness were not sufficient. The Appellant Court supported the findings of the Board and considered that no error of findings had been committed and was backed by substantial rationale.
Hence, The United States Court of Appeals for the Federal Circuit affirmed the decision of the Board and dismissed the appeal to register the mark “THE JOINT” for services under Classes 41 and 43.