Case: 18-2048    Document: 61   Page: 1   Filed: 02/28/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

            IN RE: JC HOSPITALITY LLC,
                       Appellant
                ______________________

                  2018-2048, 2018-2049
                 ______________________

     Appeals from the United States Patent and Trademark
 Office, Trademark Trial and Appeal Board in Nos.
 86/525,425, 86/525,431.
                  ______________________

                Decided: February 28, 2020
                 ______________________

     JILL MARIA PIETRINI, Sheppard Mullin Richter &
 Hampton LLP, Los Angeles, CA, argued for appellant. Also
 represented by PAUL BOST, SUSAN M. HWANG.

    THOMAS L. CASAGRANDE, Office of the Solicitor, United
 States Patent and Trademark Office, Alexandria, VA, ar-
 gued for appellee Andrei Iancu. Also represented by
 THOMAS W. KRAUSE, CHRISTINA J. HIEBER.
                 ______________________

     Before PROST, Chief Judge, O’MALLEY and REYNA,
                     Circuit Judges.
 PROST, Chief Judge.
Case: 18-2048    Document: 61      Page: 2    Filed: 02/28/2020




 2                                   IN RE: JC HOSPITALITY LLC




      JC Hospitality appeals from an order of the Trademark
 Trial and Appeal Board (“Board”) affirming the U.S. Patent
 and Trademark Office’s refusal to register two trademark
 applications. Both applications sought to register the same
 proposed mark “THE JOINT,” but for two different classes
 of services. The Board affirmed both refusals on the
 ground that the mark is generic for the applied-for services,
 or, in the alternative, because the mark is merely descrip-
 tive of the services and that JC Hospitality had not proven
 that the mark had acquired distinctiveness as a source
 identifier for the services. We affirm the Board’s order with
 respect to both applications because we conclude that sub-
 stantial evidence supports the Board’s conclusions that
 THE JOINT is merely descriptive of JC Hospitality’s ser-
 vices and that JC Hospitality has not demonstrated ac-
 quired distinctiveness.
                               I
     This appeal involves two trademark applications to
 register the same proposed mark, THE JOINT (in standard
 characters). Application Serial No. 86/525,425 (“the ’425
 application”) covers “[e]ntertainment services, namely live
 musical performances, shows, and concerts; and nightclub
 services” in International Class 41. Application Serial
 No. 86/525,431 (“the ’431 application”) covers “[r]estau-
 rant, bar and catering services” in International Class 43. 1
    Prosecution of these applications proceeded in parallel.
 The examining attorney refused registration in both



     1   The ’425 and ’431 applications were filed by JC
 Hospitality’s predecessor in interest, HRHH IP, LLC. On
 March 30, 2018, HRHH assigned the applications to JC
 Hospitality, and that assignment was recorded with the Of-
 fice on May 25, 2018 at Reel 6336/Frame 0854. We refer to
 JC Hospitality and its predecessor in interest collectively
 as JC Hospitality.
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 IN RE: JC HOSPITALITY LLC                                  3



 applications based on two alternative grounds under Sec-
 tion 2(e)(1) of the Trademark Act. 15 U.S.C. § 1052. Spe-
 cifically, the examining attorney determined that THE
 JOINT is generic for both classes of applied-for services, or
 in the alternative, merely descriptive of the services.
     JC Hospitality responded by arguing that the mark is
 neither generic nor merely descriptive. In the alternative,
 JC Hospitality amended its application to claim the benefit
 of Section 2(f), which permits an applicant to register a
 merely descriptive mark if the applicant can demonstrate
 acquired distinctiveness. 15 U.S.C. § 1052(f). The examin-
 ing attorney considered, but rejected, the evidence of ac-
 quired distinctiveness and again refused registration of the
 mark on the bases that the mark was generic for the ser-
 vices, or in the alternative, was merely descriptive but had
 not acquired distinctiveness for the services.
     After the examining attorney’s refusals became final,
 and following reconsideration by the examining attorney,
 the Board considered JC Hospitality’s appeal from prose-
 cution on both grounds. The Board consolidated the pro-
 ceedings on appeal and decided them in one opinion. With
 respect to both, the Board affirmed the examining attor-
 ney’s finding that THE JOINT is generic, or in the alterna-
 tive, merely descriptive of JC Hospitality’s services, and
 that JC Hospitality had not acquired distinctiveness as a
 source identifier for the mark. In re HRHH IP, LLC, Nos.
 86525425 and 865252431, 2018 WL 1871443 (T.T.A.B. Apr.
 4, 2018) (“Board Decision”).
    JC Hospitality timely appealed. We have jurisdiction
 under 15 U.S.C. § 1071(a) and 28 U.S.C. § 1295(a)(4)(B).
                              II
     A proposed trademark is evaluated for eligibility based
 on the mark’s placement on a distinctiveness spectrum,
 which includes in ascending order: generic (or “common”
 descriptive), merely descriptive, suggestive, and arbitrary
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 4                                   IN RE: JC HOSPITALITY LLC




 (or fanciful) marks. In re N.C. Lottery, 866 F.3d 1363, 1366
 (Fed. Cir. 2017) (citing Abercrombie & Fitch Co. v. Hunting
 World, Inc., 537 F.2d 4, 10–11 (2d Cir. 1976)); In re Chip-
 pendales USA, Inc., 622 F.3d 1346, 1350–51 (Fed. Cir.
 2010).
      Relevant to this appeal, under Section 2(e)(1) of the
 Trademark Act, a mark is merely descriptive if it describes
 “the qualities or characteristics of a good or service.” Park
 ’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 194
 (1985) (citing 15 U.S.C. § 1052(e)(1)); see also In re Bayer
 Aktiengesellschaft, 488 F.3d 960, 964 (Fed. Cir. 2007).
 “[M]arks that are merely descriptive cannot be registered
 unless they acquire secondary meaning under § 2(f) of the
 [Trademark] Act.” N.C. Lottery, 866 F.3d at 1366 (citing
 15 U.S.C. § 1052(f)); see also Park ’N Fly, 469 U.S. at 194.
 In determining whether a mark has acquired distinctive-
 ness, or secondary meaning, the Board may consider the
 following factors: “(1) association of the [mark] with a par-
 ticular source by actual purchasers (typically measured by
 customer surveys); (2) length, degree, and exclusivity of
 use; (3) amount and manner of advertising; (4) amount of
 sales and number of customers; (5) intentional copying;
 and (6) unsolicited media coverage of the product embody-
 ing the mark.” Converse, Inc. v. ITC, 909 F.3d 1110, 1120
 (Fed. Cir. 2018); see also In re Steelbuilding.com, 415 F.3d
 1293, 1300 (Fed. Cir. 2005). “[T]he applicant’s burden of
 showing acquired distinctiveness increases with the level
 of descriptiveness; a more descriptive term requires more
 evidence of secondary meaning.” Steelbuilding.com, 415
 F.3d at 1297 (citing In re Bongrain Int’l (Am.) Corp., 894
 F.2d 1316, 1317 (Fed. Cir. 1990)).
     Whether a mark is merely descriptive, and whether an
 applicant has demonstrated acquired distinctiveness are
 questions of fact that we review for substantial evidence.
 See In re TriVita, Inc., 783 F.3d 872, 874 (Fed. Cir. 2015)
 (mere descriptiveness); In re La. Fish Fry Prods., Inc., 797
 F.3d 1332, 1335 (Fed. Cir. 2015) (acquired distinctiveness).
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 IN RE: JC HOSPITALITY LLC                                 5



 We review the Board’s conclusions of law de novo. See In
 re Thrifty, Inc., 274 F.3d 1349, 1351 (Fed. Cir. 2001).
     JC Hospitality appeals the Board’s conclusion that the
 proposed mark THE JOINT is generic for services in Clas-
 ses 41 and 43. JC Hospitality also appeals the Board’s al-
 ternative conclusion that the mark THE JOINT is merely
 descriptive of services in Classes 41 and 43, and that JC
 Hospitality has not established acquired distinctiveness of
 the mark for either class of services. Because we conclude
 that substantial evidence supports the Board’s conclusions
 that THE JOINT is merely descriptive of the applied-for
 services, and that JC Hospitality did not establish acquired
 distinctiveness, we affirm the Board’s decision. We do not
 reach the Board’s alternative basis for refusal that the
 mark is generic for the services in Classes 41 and 43.
                              A
     The Board found that the THE JOINT is merely de-
 scriptive of JC Hospitality’s services based on evidence
 showing that common use of the term “joint” describes res-
 taurant and entertainment services as covered by Classes
 41 and 43. More particularly, the Board considered a num-
 ber of dictionary definitions that were submitted by both
 the examining attorney and JC Hospitality during prose-
 cution of the applications. See Board Decision, at *4. For
 example, the Oxford Dictionary defines “joint” as “[a]n es-
 tablishment of a specified kind, especially one where people
 meet for eating, drinking, or entertainment.” J.A. 245–46,
 885–86. Similarly, Wiktionary defines “joint” as “[a] res-
 taurant, bar, nightclub, or similar business.” J.A. 75, 904–
 06. The Board concluded that this dictionary evidence
 “demonstrates that [JC Hospitality’s] mark immediately
 conveys the idea of a business establishment that provides
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 6                                    IN RE: JC HOSPITALITY LLC




 live musical performances, shows, and concerts, and night-
 club, restaurant and bar services.” Board Decision, at *11. 2
     The Board also considered a number of news excerpts
 submitted by the examining attorney during prosecution of
 both applications to demonstrate use of the term THE
 JOINT. See Board Decision, at *4–6. For example, one ex-
 cerpt dated August 21, 2015, and published in the San Jose
 Mercury News, stated “History San Jose is gearing up for
 another fundraising celebration of Manny’s Cellar on Sept.
 18 in the historic downtown Fallon House, which was once
 home to the restaurant and bar. The joint was a haunt for
 the city’s movers and shakers from 1962 until 1990.”
 J.A. 242, 1075 (emphasis added). Another excerpt dated
 August 1, 2012, and published in the Newark Star-Ledger,
 stated “Delta’s, situated in a former firehouse, is not your
 ordinary soul food restaurant. The joint jumps on Thurs-
 days, Fridays and Saturdays, when DJs and jazz and R&B
 groups turn Delta’s into a happening spot.” J.A. 233–34,
 1066–67 (emphasis added).
      Other news excerpts submitted by the examining attor-
 ney during prosecution of both applications specifically
 considered use of the term JOINT without the definite ar-
 ticle “the.” See Board Decision, at *6. For example, an ar-
 ticle published in the Philadelphia Inquirer on May 21,
 2013, stated “Walter hopes to pursue a college degree in
 business and one day open his own music/restaurant
 joint.” J.A. 233, 1065–66 (emphasis added).
      On appeal, JC Hospitality argues that the Board erred
 in finding THE JOINT merely descriptive because even if
 the marks are descriptive of its services, the mark is



     2    Though neither JC Hospitality nor the examining
 attorney submitted a definition of “THE,” the Board took
 judicial notice of three dictionaries defining “the” as a defi-
 nite article. Board Decision, at *4.
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 IN RE: JC HOSPITALITY LLC                                    7



 registerable as a double entendre. Appellant’s Br. 35 (quot-
 ing Trademark Manual of Examining Procedure (“TMEP”)
 § 1213.05(c) (A “‘double entendre’ will not be refused regis-
 tration as merely descriptive if one of its meanings is not
 merely descriptive in relation to the goods or services.”)).
 Specifically, JC Hospitality argues that THE JOINT func-
 tions as a double entendre because it is “a playful or ironic
 reference to ‘prison’” instead of to its services. Appellant’s
 Br. 35. Thus, according to JC Hospitality, THE JOINT is
 registerable for its services because the term “prison” is not
 descriptive of them. Appellant’s Br. 35–36; see also TMEP
 § 1213.05(c).
      The Board considered and rejected JC Hospitality’s ar-
 gument that THE JOINT is registerable as a double en-
 tendre for the applied-for services. Board Decision, at *7–
 8. The Board acknowledged that JC Hospitality submitted
 evidence that revealed “the joint” is one of several slang
 terms for prison. Id., at *8. The Board, however, found
 this evidence unpersuasive because it did not demonstrate
 a relationship between prison and the applied-for services
 as required for proving a “double entendre” for trademark
 purposes. Id., at *7; see also TMEP § 1213.05(c) (“For
 trademark purposes, a ‘double entendre’ is an expression
 that has a double connotation or significance as applied to
 the goods or services.”). Indeed, only a single article de-
 scribing a musician’s plans for when he “get[s] out of the
 joint” had even a tangential relationship to JC Hospital-
 ity’s services. Board Decision, at *8. Taken together, the
 Board found there was insufficient evidence in the record
 to demonstrate that consumers would associate “the con-
 cept of the ‘the joint’ as a prison with [JC Hospitality’s] en-
 tertainment services, nightclub services, restaurants, bars,
 or catering services.” Id., at *7. We agree and conclude
 that substantial evidence supports the Board’s conclusion
 that THE JOINT is not a double entendre for the services
 covered by either Class 41 or 43.
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 8                                   IN RE: JC HOSPITALITY LLC




      With respect to the ’425 application only, JC Hospital-
 ity summarily argues in a single sentence that the evidence
 of record is insufficient to establish that THE JOINT is de-
 scriptive of live musical performances, shows, concerts, or
 nightclub services covered by Class 41. Appellant’s Br. 36.
 JC Hospitality does not point to any specific failure of evi-
 dence, nor does JC Hospitality otherwise explain why the
 Board’s decision is not supported by substantial evidence.
 We conclude that based on the record in this case, substan-
 tial evidence, including the dictionary definitions and news
 excerpts cited and relied on by the Board, supports the
 Board’s finding that THE JOINT is merely descriptive of
 the entertainment services covered by Class 41.
      Accordingly, we conclude that the Board’s determina-
 tion that THE JOINT is merely descriptive of the services
 covered by both Classes 41 and 43 is supported by substan-
 tial evidence.
                              B
     We now turn to JC Hospitality’s argument that it
 demonstrated acquired distinctiveness for THE JOINT un-
 der Section 2(f) of the Trademark Act. JC Hospitality ar-
 gues that the Board’s determination that it did not
 demonstrate acquired distinctiveness is not supported by
 substantial evidence. We disagree.
     For both applications, JC Hospitality asserted acquired
 distinctiveness by relying on two declarations by its Vice
 President of Entertainment, Charles Smith, which pur-
 ported to include evidence related to revenue, advertising
 and marketing, and press and consumer recognition.
 JC Hospitality argues that the Smith Declarations and re-
 lated exhibits demonstrate that THE JOINT has been in
 substantially exclusive and continuous use since March
 1995. JC Hospitality also argues that the evidence shows
 more than $12 million in marketing expenditures for THE
 JOINT and a total gross revenue of more than $104 million.
 Furthermore, JC Hospitality argues that a variety of online
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 IN RE: JC HOSPITALITY LLC                                  9



 websites and forums (e.g., various social media websites,
 Yelp and TripAdvisor forums, and YouTube) show press
 and public recognition.
     The Board considered JC Hospitality’s evidence but
 concluded that relative to the “highly descriptive nature” of
 THE JOINT, the evidence was insufficient to demonstrate
 that the mark had acquired distinctiveness. Board Deci-
 sion, at *12 (citing Steelbuilding.com, 415 F.3d at 1297).
 The Board observed that JC Hospitality’s services are lim-
 ited to a single venue within the Hard Rock Hotel and Ca-
 sino in Las Vegas, Nevada, and found the sales and
 marketing figures unpersuasive of acquired distinctiveness
 because there was no context for how those figures com-
 pared to similar restaurants and nightclubs. Board Deci-
 sion, at *12.       The Board also carefully reviewed
 JC Hospitality’s remaining evidence but found it similarly
 lacked context and was unpersuasive because the mark
 THE JOINT often appeared in connection with other
 marks (e.g., “Hard Rock” or “Hard Rock Hotel & Casino”).
 The Board stated that “it is unclear which mark . . . at-
 tracts public attention.” Id., at *12. Thus, the Board con-
 cluded that JC Hospitality failed to demonstrate that THE
 JOINT is perceived as identifying the source of its services
 and therefore that it had not shown acquired distinctive-
 ness. Id., at *13.
     On appeal, JC Hospitality argues that the Board re-
 quired an impossible level of evidence by requiring more
 context for its sales and marketing figures. JC Hospitality
 also argues that reference to other marks in its evidence is
 either sporadic or of secondary significance, and that the
 Board erred by calling into question which mark had at-
 tracted public attention.
     We do not agree with JC Hospitality that in this case
 the Board required too high a burden to show acquired dis-
 tinctiveness. The Board correctly determined that a high
 level of proof was required to show acquired distinctiveness
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 10                                 IN RE: JC HOSPITALITY LLC




 for the mark THE JOINT. See Steelbuilding.com, 415 F.3d
 at 1297; see also Royal Crown Co., Inc. v. The Coca-Cola
 Co., 892 F.3d 1358, 1368–69 (Fed. Cir. 2018). As a result,
 we do not find error in the Board’s challenges to JC Hospi-
 tality’s evidence, which it found failed to provide infor-
 mation showing how JC Hospitality’s sales and marketing
 figures compared to similar businesses. Indeed, we agree
 with the Board that such questions are particularly appro-
 priate where record evidence showed significant overlap
 between JC Hospitality’s use of THE JOINT with other
 marks. See Fish Fry, 797 F.3d at 1337 (discounting adver-
 tising expenditures concerning FISH FRY PRODUCTS
 where the evidence relied on included ads promoting an-
 other mark). Given the prominence of “Hard Rock” and
 “Hard Rock Hotel & Casino” in the evidence submitted, and
 the relationship of those marks to the applied-for services,
 we are unpersuaded that they are of secondary signifi-
 cance. Thus, we conclude that the Board’s finding that JC
 Hospitality has not demonstrated acquired distinctiveness
 is supported by substantial evidence.
                        CONCLUSION
    For the foregoing reasons, we affirm the Board’s affir-
 mance of the refusal to register THE JOINT for services
 under either Class 41 or 43.
                        AFFIRMED
