The Federal Circuit recently upheld a decision by the Trademark Trial and Appeal Board (TTAB) that the Hard Rock Hotel & Casino in Las Vegas, Nevada cannot register a trademark for THE JOINT, its music venue at the casino. The Federal Circuit found that the mark is merely descriptive.

History

In February of 2015, JC Hospitality LLC (“JC”), owner of the Hard Rock Hotel & Casino, filed two trademark applications for THE JOINT. One application listed the services as “restaurant, bar and catering services”. The other application listed services as “entertainment services, namely live musical performances, shows and concerts; and nightclub services”.

The Trademark Office rejected both applications as being generic, or in the alternative, merely descriptive. The Trademark Office provided evidence that the term “the joint” is widely known as an establishment where people meet for eating, drinking or entertainment. JC argued that the term is a double entendre for “prison”. JC also filed evidence showing that its venue had achieved acquired distinctiveness as it was well-known by consumers. The Trademark Office found this evidence insufficient and JC appealed to the TTAB, which affirmed the Examining Attorney’s refusal. JC subsequently appealed to the Federal Circuit.

Federal Circuit Opinion

The Federal Circuit agreed with the TTAB. Both found substantial evidence supported consumers commonly understand the term “The Joint” to refer to a restaurant or entertainment venue. Regarding the double entendre, the Court found that JC did not provide a sufficient relationship between its services and prison.

The Court also found the evidence submitted by JC to be insufficient to establish acquired distinctiveness in the mark. In one aspect, JC presented evidence of several third party websites using “THE JOINT” when referring to their venue. The Court found that reference on the third party websites of “THE JOINT” was often made in conjunction with the “HARD ROCK” trademark. As such, the Court could not ascertain how consumers viewed “THE JOINT” apart from the HARD ROCK trademark. In another aspect, JC provided advertising and revenue figures for THE JOINT. The Court also found this evidence non-persuasive since JC did not provide a comparison to similar nightclub and restaurant establishments.

Conclusion

The Federal Circuit’s ruling in this case affirms the high bar for showing acquired distinctiveness to those wishing to register a merely descriptive mark. Whenever possible, potential trademark applicants should choose fanciful, arbitrary or suggestive marks for their brand as opposed to descriptive marks.