Businesses often want to have a trademark that describes what they’re selling, but in order to be protectable, a trademark must be “distinctive.” That is, it must be used to identify the source of the product or service, not just describe it.
Courts classify marks into categories of distinctiveness. The most distinctive marks are those that are arbitrary or fanciful. Examples include EXXON for gasoline and APPLE for electronics.
Suggestive marks, those that require some imagination to determine the nature of the goods or services, are also protectable. An example is MUSTANG for fast cars.
Generic terms receive no trademark protection, while a descriptive mark receives trademark protection only if the mark’s owner can prove that the mark has acquired “secondary meaning” in the minds of the relevant public. In other words, consumers must associate the mark with a unique source and think of the term as a brand rather than as a description.
For example, TV GUIDE is descriptive of a guide to TV programs; yet because of its extensive advertising, promotion and public recognition, this mark has achieved what is known as a secondary meaning (i.e., distinctiveness). It is, therefore, protectable.
Just last month, the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision refusing to register THE JOINT for nightclub services or for a bar. “The Joint” has operated in the Hard Rock Hotel and Casino in Las Vegas since 1995.
When JC Hospitality attempted to register the mark in 2015, the trademark examiner refused registration, as did the TTAB. JC Hospitality then appealed the decision to federal court.
The court agreed with the TTAB that THE JOINT is merely descriptive of JC Hospitality’s services. Common use of the term “joint” describes restaurant and entertainment services, as was shown by a number of news excerpts using the word in that sense.
In addition, dictionaries define “joint” as, for example, “[a]n establishment of a specified kind, especially one where people meet for eating, drinking, or entertainment” or a “restaurant, bar, nightclub, or similar business.”
On appeal, JC Hospitality argued that the mark is registerable as a double entendre because it’s “a playful or ironic reference to `prison.'” This argument was rejected by both the TTAB and the court because, while “the joint” can refer to prison, there was no prison connection to JC Hospitality’s services.
Next, JC Hospitality argued that even if the mark is descriptive, THE JOINT has acquired distinctiveness (also known as “secondary meaning”). JC Hospitality submitted evidence of revenue, advertising and marketing, as well as press and consumer recognition.
Both the TTAB and the court held that relative to the “highly descriptive nature” of THE JOINT, the evidence was insufficient to demonstrate that the mark had acquired distinctiveness.
In other words, neither the TTAB nor the court believed that JC Hospitality had proven that THE JOINT is seen by consumers as identifying the source of JC Hospitality’s services.
Please feel free to contact us if you have any questions about trademark law or if you need assistance registering or protecting your trademarks.
Photo by Kartik Snekar on Unsplash.jpg
