Friday, April 06, 2018

TTAB Finds "THE JOINT" Generic for .... Guess What?

The Board affirmed a refusal to register THE JOINT, in standard character form, for "Restaurant, bar and catering services" and for "Entertainment services, namely, live musical performances, shows, and concerts; and nightclub services," on the ground of genericness. Alternatively, the Board found that THE JOINT, if not generic, is merely descriptive of applicant's services and lacks acquired distinctiveness. In re HRHH IP, LLC, Serial Nos. 86525431 and 86525425 (April 4, 2018) [not precedential] (Opinion by Judge Robert H. Coggins).

Genericness: The Board found the genus of services at issue to be defined by the recitations of services in the two subject applications. "[T]he relevant consuming public consists of ordinary consumers who attend live musical performances, shows, and concerts, and who use nightclub, restaurant, bar, and catering services."

Examining Attorney Sani Khouri submitted dictionary definitions of THE and JOINT, and website references demonstrating use of the terms "joint" and "the joint" in connection with entertainment and eating establishments. Applicant argued that the addition of THE to JOINT transforms the proposed mark such that it would be perceived as American slang for "jail." The Board, however, was not convinced of the transformation, finding only minimal evidence in support of applicant's assertion. The argument, the Board observed, is even less convincing when THE JOINT is considered in relation to applicant's services.

Applicant contended that THE JOINT is a double entendre, but the Board found "nothing in the record that would lead us to believe that consumers would associate the concept of 'the joint' as a prison with its entertainment services, nightclub services, restaurants, bars, or catering services."

In sum, the record demonstrates that the primary consumer perception of the term THE JOINT, as a whole, is that of a common name for the identified services, namely, nightclubs, restaurants, and bars.

The Board therefore affirmed the genericness refusal.

Mere Descriptiveness and Section 2(f): Implicit in the Board's genericness holding is a ruling that THE JOINT is merely descriptive of the services. The dictionary definitions alone show that the term "immediately conveys the idea of a business establishment that provides live musical performances, shows, and concerts, and nightclub, restaurant and bar services."

As to acquired descriptiveness, applicant's allegation of more than five years of use was insufficient proof in view of the highly descriptive nature of THE JOINT. Applicant claimed more than $12 million in advertising expenses since 1995, and more than $104 million in gross revenues from 2009-2016. It has tens of thousands of website visitors per month, nearly 100,000 likes on Facebook, and nearly 25,000 Twitter followers.

The Board, however, pointed out that applicant did not provide any context for those figures. Moreover, applicant's services are offered at a single location in Las Vegas at the Hard Rock Hotel and Casino.

The Board concluded that applicant failed to show that THE JOINT will be perceived as a source identifier for applicant's services, and so the Board affirmed the alternative Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog comment: This decision will, I believe, be appealed. 

THE NIGHTCLUB or THE RESTAURANT would surely be generic. What about THE GREASY SPOON? THE DUMP? When does a term cross the line between derogatorily descriptive and and generic?

Text Copyright John L. Welch 2018.


At 6:38 AM, Blogger Unknown said...

Shades of Serial. When you take an outmoded term and bring it back to the public consciousness - are you fleecing the public domain or reinventing?

At 9:07 AM, Anonymous Laura Day said...

I'm pretty sure the actual intended double entendre was a reference to Nevada's newly legal recreational weed, but obviously they may not have been comfortable making that argument before a federal agency.

At 9:37 AM, Blogger Ratty said...

"The Dump"? Not generic for restaurants, and certainly potentially descriptive of so many things that it might not even be merely descriptive of anything. Tangentially relevant trivia: on Washington Island, Wisconsin, the place you take your garbage, which in most locations would be called "the dump" is called The Island Exchange. When you have old stuff that might still be usable -- that old dinette set or something -- you take it there an leave it near the garbage compactor. Someone else drops off their old cabinet, and takes your old dinette set, completing the "exchange." So some places "the dump" could be a place you take your garbage, or a dive bar, or your uncle's messy residence, but could it be distinctive on the Island?

At 9:52 AM, Blogger Unknown said...

"Hole is the Wall" is registered for bar and restaurant services.
"The pit" was registered for restaurant services.
Where do you draw the line? This decision should be appealed.

At 7:04 PM, Anonymous Anonymous said...

I agree with the Board’s decision in affirming the refusal to register “The Joint” because of its genericness. Particularly interesting, however, was the Board denying the applicant their petition for “acquired descriptiveness” despite the applicant having demonstrated significant advertising expenditures and earnings. Under section 2(f), the applicant would have initially appeared to have had a strong argument for distinctiveness because they could offer “proof of substantially exclusive and continuous use . . . for the five years before the date on which the claim of distinctiveness [was] made.” Section 2(f). After all, the applicant had “nearly 100,000 likes on Facebook, and nearly 25,000 Twitter followers” and had spent $12 million in advertising since 1995.
I can understand that these numbers and expenditures would give the applicant a basis to argue that “The Joint” had achieved secondary meaning because, not only did thousands of people like their restaurant, but many more people probably visited “The Joint” without taking the time to “follow” them on social media. I agree, however, with the Board’s conclusion because, with the “The Joint” only having one location in the Hard Rock Hotel and Casino, there is not a broad enough reach of the mark to achieve the required secondary meaning with the ordinary consumer to warrant exclusive, federal trademark protection.
As stated in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2nd Cir. 1976) “no matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufactures of the product of the right to call an article by its name.” Although, here, the applicants were attempting to trademark the name of their restaurant instead of a line of clothing, the result remains the same. As the Board detailed in its decision, “The Joint” immediately conveys an “entertainment or eating establishment.” If the Board would have granted the applicant trademark rights to “The Joint,” numerous another restaurants and clubs would certainly be impacted. The applicant’s expenditure of resources and recognition amongst a specific community does not overcome the genericness of their mark.
Looking forward, I would recommend for the applicants to consider other names that could be considered arbitrary, fanciful, or even suggestive. If the applicants are set on having a double entendre for their mark, there could be numerous other options that would still convey the edgier vibe that they appear to be seeking. I understand the difficulties and expenses involved in attempting to change the name of the establishment. After this decision, however, the applicants may realize that they have been successful enough and will choose to continue without federal trademark protection.


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