[00:00:01] Speaker 01:
Just as a preliminary matter, let me point out the obvious, which is Judge O'Malley is not physically present this morning, but she is listening to the arguments and is fully participating in this case.

[00:00:18] Speaker 01:
Rest assured of that.

[00:00:19] Speaker 01:
Anyway, good morning.

[00:00:21] Speaker 01:
The first case for argument is 18-2048 in Ray J.C.

[00:00:26] Speaker 01:
Hospitality.

[00:00:31] Speaker 04:
Thank you, Your Honor, Jill Petrini, for the appellant.

[00:00:35] Speaker 04:
What I'd like to start with, obviously, we've got two refusals here, genericism and descriptiveness.

[00:00:43] Speaker 04:
And then the last part of descriptiveness is whether the 2F evidence was sufficient or not.

[00:00:48] Speaker 04:
In terms of genericism, what I'd like to note is both the appellee's brief and the TTAB decision consistently refer to the class 41 identification of services as simply entertainment services.

[00:01:00] Speaker 04:
And that's not the identification.

[00:01:02] Speaker 04:
The office, the Patent and Trademark Office, is trying to expand the identification.

[00:01:07] Speaker 01:
So you would say, and your amendment or addendum would be entertainment services, namely live musical performances, shows and concert, and nightclub services.

[00:01:17] Speaker 04:
Correct.

[00:01:18] Speaker 04:
Because entertainment services is quite broad.

[00:01:20] Speaker 04:
I mean, I can entertain myself by going to Marshall's at night.

[00:01:24] Speaker 01:
Although nightclub services is a little harder because that's where there's an arguable overlap maybe between class 43 bar

[00:01:34] Speaker 04:
Maybe?

[00:01:36] Speaker 04:
Yeah, I think of a nightclub as dancing, music, that type of thing.

[00:01:41] Speaker 04:
I don't see it as a bar.

[00:01:43] Speaker 04:
A bar to me is different than a nightclub.

[00:01:45] Speaker 01:
So would you say that, at least starting with the generic question, that you've got a much stronger case with respect to Class 41 than you do with Class 43?

[00:01:56] Speaker 01:
I would agree.

[00:01:58] Speaker 04:
Yes, I would agree with that.

[00:02:00] Speaker 04:
And the burden of proof for the office is clear and convincing evidence.

[00:02:04] Speaker 04:
There has to be a substantial showing with clear evidence to support that genericism refusal.

[00:02:10] Speaker 04:
And the substantial evidence burden ties back to the, our standard ties back to the burden of proof.

[00:02:16] Speaker 04:
So it's not a preponderance.

[00:02:18] Speaker 04:
And so for the class 41 services in particular, what we have for evidence submitted by the office is two definitions that reference nightclub.

[00:02:30] Speaker 04:
Two references to entertainment generally, which I would submit are not relevant for the reasons we just discussed.

[00:02:37] Speaker 04:
And then at best, two references to music, but it's combined with the restaurant, a soul food restaurant and one other one.

[00:02:44] Speaker 04:
And what we have in the record for the appellant is we have multiple unsolicited uses of the joint to refer to the appellant's venue.

[00:02:53] Speaker 04:
And that puts us more in the category of the Merrill Lynch case, where it was cash management account.

[00:02:59] Speaker 04:
And many of the references that were submitted in the record actually identified Merrill Lynch as the source.

[00:03:06] Speaker 04:
There's no third party use identified in the record that identifies another music venue or another nightclub, another concert hall called the joint.

[00:03:15] Speaker 04:
None.

[00:03:16] Speaker 04:
None whatsoever.

[00:03:17] Speaker 01:
So let's turn to the merely descriptive, because that's perhaps a little harder for you than the generic.

[00:03:27] Speaker 01:
So you offer evidence of acquired distinctiveness, but that evidence says joint at hard rock.

[00:03:38] Speaker 01:
So that's a little different than just doing joint, right?

[00:03:42] Speaker 04:
Well, two things on that.

[00:03:44] Speaker 04:
Because I went over the revised Smith Declaration again yesterday, obviously, to prepare.

[00:03:50] Speaker 04:
And the evidence primarily refers to the joint by itself.

[00:03:54] Speaker 04:
And that's the revenue is identified just as revenue for the joint venue.

[00:03:58] Speaker 04:
It's not for the hotel overall.

[00:03:59] Speaker 04:
And that's the same with the advertising.

[00:04:02] Speaker 04:
They could parse that out.

[00:04:04] Speaker 04:
There's a separate entrance.

[00:04:05] Speaker 04:
You can come through the

[00:04:07] Speaker 04:
You come through the hotel to get to the venue, but you can also see the venue from the outside.

[00:04:12] Speaker 04:
Because that's the largest venue at the hotel, they're able to track that revenue separately and advertise, which they did.

[00:04:19] Speaker 04:
And the visitors per month were for the joint on the website.

[00:04:24] Speaker 04:
It has its own path that you can then track the visitors to that specific entry point on the website.

[00:04:31] Speaker 04:
And the Twitter social media page is called The Joint Las Vegas.

[00:04:35] Speaker 04:
And anyone who's been to Las Vegas knows that people don't use physical addresses to say where something is.

[00:04:42] Speaker 04:
You use what the name of the hotel or casino is.

[00:04:45] Speaker 04:
It's just, oh, where's that?

[00:04:47] Speaker 04:
That's at MGM.

[00:04:48] Speaker 04:
Oh, that's at Hard Rock.

[00:04:49] Speaker 04:
So the at is more of a physical location.

[00:04:54] Speaker 02:
How about the marketing expenditures of $20 million?

[00:05:01] Speaker 02:
Are they drawn specifically to the restaurant?

[00:05:05] Speaker 04:
Yeah, the venue, yeah.

[00:05:07] Speaker 04:
Yes, they are.

[00:05:09] Speaker 01:
But what does that do to the two classes, 41 and 43?

[00:05:13] Speaker 04:
Well, the venue serves food and beverage, so there's not a separate restaurant at the venue.

[00:05:21] Speaker 04:
So it's like a

[00:05:24] Speaker 04:
It's not a multi-class application.

[00:05:27] Speaker 04:
We have separate applications.

[00:05:28] Speaker 04:
But the food and beverage is offered at the venue.

[00:05:31] Speaker 04:
There's not a separate restaurant at the venue.

[00:05:33] Speaker 04:
So if I'm sitting at a table and I want to get something to eat, I can do that.

[00:05:37] Speaker 04:
Or if I go to the bar and I want to get something to eat while I listen to the show, I can do that.

[00:05:43] Speaker 04:
And everything is tied to

[00:05:46] Speaker 04:
It's segregated to the joint as its own separate P&L.

[00:05:51] Speaker 01:
Is that because it's viewed as a restaurant or a place to get a drink or is it really a concert hall?

[00:05:57] Speaker 04:
Concert hall.

[00:05:58] Speaker 01:
So nobody would necessarily go in there for a drink, pick that as a drink.

[00:06:03] Speaker 01:
I mean, is the cost of, is there a cover charge getting in?

[00:06:05] Speaker 04:
Oh yeah, yeah.

[00:06:06] Speaker 04:
There's a ticket.

[00:06:07] Speaker 04:
For example, I saw Mary J. Blige there in August and I have a ticket and I have to have a concert ticket to get in.

[00:06:15] Speaker 04:
And once I get into the venue, I can have food or beverage if I want.

[00:06:21] Speaker 01:
Let me just follow up on Judge Raina's question with regard to the revenue and the advertising numbers and so forth.

[00:06:31] Speaker 01:
I don't really have an absolute firm view of the answer to this question, but is it your view that under the law those numbers don't stand by themselves, that you have to do a comparison?

[00:06:43] Speaker 01:
to give them any meaning, like if it's 10 million but it's in an industry where everybody is in the gazillions of dollars, then that seems less significant than if the comparative number is very small for competitors.

[00:06:56] Speaker 01:
So just help me out on how we evaluate those factors.

[00:07:00] Speaker 04:
Yeah, I'm glad you raised that because I was thinking what's my highlight reel and that's one of the highlight reels that I wanted to talk to you about that today.

[00:07:08] Speaker 04:
That makes an impossible burden for an applicant to submit 2F evidence because how would I get that information unless it was publicly available

[00:07:18] Speaker 04:
of a competitor.

[00:07:19] Speaker 04:
I don't have subpoena power in an ex parte application.

[00:07:22] Speaker 04:
I might be able to find some information on the internet or I might not.

[00:07:27] Speaker 04:
There's no way to really garner that information to provide it and I have not seen a case from this court

[00:07:34] Speaker 04:
its predecessor or the TTAB that requires that, that we have to have this type of evidence of competitive analysis to show.

[00:07:43] Speaker 01:
But it does make the numbers meaningful.

[00:07:45] Speaker 01:
For example, one might even have a strong case if their revenue and advertising numbers are a million dollars.

[00:07:54] Speaker 01:
But that doesn't strike anyone as hard.

[00:07:57] Speaker 01:
I mean, it's very hard in the absence of comparison.

[00:08:01] Speaker 01:
To some extent, the appellant may have a much tougher road if it's not a comparative number that we're using, right?

[00:08:08] Speaker 04:
Well, yeah, I would agree with that.

[00:08:09] Speaker 04:
But the issue is whether you can actually obtain that information.

[00:08:13] Speaker 04:
And in this context, in a

[00:08:16] Speaker 04:
In an opposition or a cancellation proceeding, you could get that because you have the power of discovery.

[00:08:22] Speaker 04:
You don't have the power of discovery in an ex-party application to get that.

[00:08:25] Speaker 03:
What about public workers like SEC Firearms and things of that nature, or even private market research?

[00:08:33] Speaker 04:
If it's a public company, then you would be able to get that information, but a lot of venues are not.

[00:08:41] Speaker 04:
owned by public companies.

[00:08:42] Speaker 04:
And what would be the comparison?

[00:08:44] Speaker 04:
Would I compare Dodger Stadium, which puts on concerts, to a 4,000 seat venue in Las Vegas?

[00:08:54] Speaker 04:
That wouldn't be a fair comparison because the number of people... But it would give you something to argue with.

[00:08:59] Speaker 04:
Right, well there is evidence of the record that does give some comparison and that in the Twitter printouts we submitted at appendix 162 to 171 named best concert venue in Las Vegas.

[00:09:14] Speaker 04:
It was also best of Las Vegas awards three years in a row.

[00:09:17] Speaker 04:
and it was in the top 25 venues, and that was in the Yelp.

[00:09:25] Speaker 04:
Somebody from Canada recognized that it was in the top 25 venues in the United States by Billboard magazine, which is obviously sort of the Bible of music publications.

[00:09:36] Speaker 01:
So all those go to the class 41 argument, not the class 43?

[00:09:41] Speaker 04:
Well, because it's one venue, it goes to both.

[00:09:45] Speaker 04:
Because I can't separate it out, there's no separate restaurant to go to that.

[00:09:51] Speaker 04:
It's all in one venue, effectively.

[00:09:55] Speaker 04:
So it has to go to both, because they're offering both at the same time in the same location.

[00:10:02] Speaker 04:
One thing... But we are free.

[00:10:05] Speaker 01:
I mean, your arguments can be separated out as to the result here.

[00:10:09] Speaker 01:
It can come and divvy up the class, distinguish between the class 41 and the class 43, isn't that... Yes, I understand that.

[00:10:18] Speaker 04:
I just don't have a way to parse it out for you, given the nature of the venue.

[00:10:24] Speaker 04:
on that.

[00:10:24] Speaker 04:
I have five minutes left for a rebuttal.

[00:10:28] Speaker 04:
I did want to point out one thing before I sit down on the devil in tonder.

[00:10:31] Speaker 04:
There was a comment that our customers don't get the joke, and they do.

[00:10:36] Speaker 04:
And that's at appendix 208.

[00:10:39] Speaker 04:
There were two Yelp reviews, both from California.

[00:10:42] Speaker 04:
One says, first of all, don't be deceived by the exterior of this joint.

[00:10:46] Speaker 04:
No pun intended, or is there?

[00:10:49] Speaker 04:
But really, don't be fooled, because this place is freaking huge.

[00:10:52] Speaker 04:
And the person from San Francisco says, the only negative of getting out of the joint, ha ha, they heard you into the casino, which is way too small and you feel claustrophobic.

[00:11:01] Speaker 04:
Prisons are notoriously small.

[00:11:03] Speaker 04:
There's no freedom.

[00:11:05] Speaker 04:
Clearly, people are getting the connection with the joint versus being a prison reference.

[00:11:14] Speaker 01:
How do we apply the double entendre argument to the merely descriptive factor?

[00:11:19] Speaker 01:
because it could still be merely descriptive even if the term might be used to describe something else, right?

[00:11:34] Speaker 04:
I interrupted myself and got myself distracted.

[00:11:36] Speaker 01:
I apologize.

[00:11:38] Speaker 01:
Do you recall the question?

[00:11:39] Speaker 01:
Yes, please.

[00:11:42] Speaker 01:
If one, you're right.

[00:11:43] Speaker 01:
If you're right, and some people might hear joint and think of a drug thing, and others might think of a jail, and others might think of a concert hall.

[00:11:54] Speaker 01:
That maybe goes to the argument of generic, but what does that do to the merely descriptive?

[00:11:59] Speaker 01:
Does that make it impossible to be merely descriptive just because there might be another connotation that is associated with the term?

[00:12:06] Speaker 04:
Well, it's not just maybe another connotation.

[00:12:09] Speaker 04:
There definitely is a connotation.

[00:12:10] Speaker 04:
And we've submitted that through the dictionary definitions, the articles, and you've got the Yale reviews where they are making that connection.

[00:12:16] Speaker 04:
And it's not a marijuana cigarette is never referred to as the joint.

[00:12:21] Speaker 04:
It's a joint.

[00:12:22] Speaker 04:
So the joint is very much a vernacular colloquialism for prison.

[00:12:27] Speaker 04:
So in that case, it does take it out of the descriptiveness.

[00:12:30] Speaker 01:
OK.

[00:12:30] Speaker 01:
But still, you've got prisons, and you've got restaurants, bars, and concert halls.

[00:12:34] Speaker 04:
Right, but I apologize, but I don't agree that the joint has any generic or descriptive qualities as to a nightclub, a concert hall, live music performance.

[00:12:46] Speaker 04:
There's just no evidence of it.

[00:12:47] Speaker 04:
There's two dictionary definitions and that's it on that.

[00:12:52] Speaker 04:
So I have two minutes left if you have any.

[00:12:55] Speaker 04:
I'll sit down.

[00:12:56] Speaker 01:
Thank you.

[00:13:07] Speaker 00:
I want to start with the genericness refusal first.

[00:13:12] Speaker 00:
It's very clear that the public's understanding of the contested term can come from all sorts of different kinds of evidence, including dictionary definitions and publications.

[00:13:21] Speaker 00:
And the lens through which we view that evidence is the context of the goods and services that are identified in the ID of the application.

[00:13:30] Speaker 01:
Okay, so I don't know if this is

[00:13:33] Speaker 01:
where this comes from the appendix, but I've got a list here in my bench prepared by my clerk about all of the definitions that were at issue in this case.

[00:13:42] Speaker 01:
And that goes to the generic stuff.

[00:13:44] Speaker 01:
So we've got two different classes here, and the result may be different for the two different classes.

[00:13:50] Speaker 01:
But of all this dozen or more, I'm not saying, I mean, a few of them have prison.

[00:13:57] Speaker 01:
like or just building the Oxford American Heritage, Merrin-Webster.

[00:14:02] Speaker 01:
I mean, most of these don't help you.

[00:14:06] Speaker 01:
And the ones that arguably have something like a restaurant and bar, I'm not seeing

[00:14:13] Speaker 01:
where you have one that's a nightclub out of Collins.

[00:14:16] Speaker 01:
What are you getting to help you here, certainly with respect to class 41 and the dictionary definitions?

[00:14:25] Speaker 00:
I understand.

[00:14:27] Speaker 00:
I point to a number of definitions that we have here.

[00:14:31] Speaker 00:
The Oxford dictionary says it's an establishment of a specified kind, especially one where people meet for eating, drinking, or entertainment.

[00:14:38] Speaker 04:
OK.

[00:14:39] Speaker 00:
There's another one that's in Wiktionary that says the definition of joint is a restaurant, bar, nightclub, or similar business.

[00:14:48] Speaker 00:
Merriam-Webster talks about a place of entertainment.

[00:14:52] Speaker 00:
Collins English Dictionary talks about a bar or nightclub.

[00:14:56] Speaker 00:
So there's a lot of definitions from the dictionaries that apply to Class 41 and Class 43.

[00:15:04] Speaker 00:
And so the question here is... But more than not, don't, right?

[00:15:09] Speaker 01:
I mean, of the ones we've got, more than not, certainly with respect to a concert.

[00:15:14] Speaker 01:
You've got prison in Oxford.

[00:15:17] Speaker 01:
You've got, I don't know, with the American Heritage, a cheap and disreputable gathering place.

[00:15:23] Speaker 01:
I don't know where that goes.

[00:15:25] Speaker 01:
You've got a building or dwelling, a prison, a particular place, a place or establishment, slang for prison.

[00:15:34] Speaker 01:
I mean, a dwelling or meeting place?

[00:15:37] Speaker 00:
Marijuana cigarette or an orthopedic joint.

[00:15:39] Speaker 00:
There's all sorts of different definitions.

[00:15:41] Speaker 00:
Yeah.

[00:15:42] Speaker 00:
But what you do in a case where you're looking at whether or not a mark is generic for particular services is you look at it from the perspective of consumers who are looking at those services.

[00:15:51] Speaker 00:
And in the context of those services, which of those definitions resonates?

[00:15:56] Speaker 00:
And that's consistent with what Judge Friendly said in the Abercrombie case many decades ago where he said,

[00:16:01] Speaker 00:
You know, a word can be generic for many different things.

[00:16:05] Speaker 00:
So if they were in a state where you could sell marijuana cigarettes and they called their store the joint, you know, that would be generic for that as well.

[00:16:14] Speaker 00:
So the fact that there are other definitions doesn't really matter because we have to focus on the goods and services that are listed in the application.

[00:16:22] Speaker 00:
So that really just, you know, tunnels in what you're going to be looking at in the context of these two services.

[00:16:29] Speaker 01:
Let me ask you two.

[00:16:30] Speaker 01:
I'm struggling with, because I think there's a difference here between the classes.

[00:16:35] Speaker 01:
And so I'm struggling on how we evaluate and apply the tests to the different classes, because restaurants, bars, I guess Class 41 does include nightclub services, which of necessity would necessarily, I think all of them at least, have a bar.

[00:16:51] Speaker 01:
So there's some overlap.

[00:16:52] Speaker 01:
But to me, a concert venue

[00:16:55] Speaker 01:
with live performances is something different, substantially different than a restaurant or bar, right?

[00:17:01] Speaker 00:
It's a different thing, but if you look at the dictionary definitions, they define the word the joint, again looking at the services here, as a place of entertainment.

[00:17:09] Speaker 00:
they have entertainment services which they say are in the nature of musical concerts and we so there is the dictionary definitions do in fact cover what they are doing here and there's also some evidence in the record of publications where people were writing about particular locations and saying that it's

[00:17:29] Speaker 00:
You know, a restaurant where you can get live R&B and jazz bands on the weekends or a music restaurant joint is something that someone wants to open.

[00:17:38] Speaker 01:
But again, there are very few, looking at the list here of those, the news article experts which were cited by the examiner, very few of them here have anything to do with concerts or necessarily music venues.

[00:17:52] Speaker 00:
Right.

[00:17:53] Speaker 00:
Right, I agree.

[00:17:54] Speaker 00:
More of them have to do with restaurants, which might have to do with the fact that there are more restaurants in the country than there are music venues, but be that as it may... Yes, so what if we were just looking at this case in terms of Class 41?

[00:18:05] Speaker 01:
How are we supposed to affirm the generic conclusion by the board and the examiner?

[00:18:09] Speaker 00:
Because of the evidence that's in the record, the dictionary definitions and the three or four things that talk about restaurants that also have music or entertainment, there is substantial evidence a reasonable person could have found the way the board did, particularly in light of the fact

[00:18:26] Speaker 00:
that this prison reference that they want to focus on, there is no evidence of that.

[00:18:32] Speaker 00:
So given a mix of evidence where there are three or four things in publications and the dictionary definitions on the one hand and nothing that really supports this prison definition on the other,

[00:18:44] Speaker 00:
it was reasonable for the board to have found on this factual matter that it was generic for the Class 41 services.

[00:18:51] Speaker 01:
Well, can you go through the news articles?

[00:18:55] Speaker 01:
Which ones?

[00:18:55] Speaker 01:
I'm just off the top.

[00:18:57] Speaker 01:
I'm not seeing the music concert.

[00:19:01] Speaker 00:
Sure.

[00:19:03] Speaker 00:
The Philadelphia Enquirer argument, which was that there's basically two parallel records in the case.

[00:19:09] Speaker 00:
It was at appendix two.

[00:19:10] Speaker 01:
A music slash restaurant joint?

[00:19:12] Speaker 00:
Yeah, that person who wanted to open up a music slash restaurant joint.

[00:19:16] Speaker 00:
There is the Newark Star Ledger article that talks about the joint to refer to a music that features entertainment from DJs, jazz, and R&B groups.

[00:19:27] Speaker 00:
So that's live music.

[00:19:30] Speaker 00:
There was another one that was the Mountain Democrat that talked about using the joint for a restaurant that has entertainment in the form, not of music, but of video poker games.

[00:19:40] Speaker 01:
Can I ask you to just interrupt?

[00:19:42] Speaker 01:
I'm sorry to interrupt, but just because the time is limited.

[00:19:45] Speaker 01:
But your friend, I think, makes the argument with respect to these articles that many of them are not meaningful because it's not joint or even the joint that appears.

[00:19:55] Speaker 01:
It's Hawaiian joint, Manhattan joint,

[00:19:59] Speaker 01:
hamburger and sandwich restaurant joints and that that sort of cuts against you rather than for you?

[00:20:05] Speaker 00:
Well I think that it supports us just not as much as when the is with the joint but it supports the definition of joint that the board found which means a place of entertainment or meals or nightclubs.

[00:20:18] Speaker 00:
So it does support it, it's just not as direct a support as the ones that actually say the joint when referring to those places.

[00:20:26] Speaker 00:
So I don't think that it cuts against us at all.

[00:20:28] Speaker 00:
I think it's fully consistent with what the board found about what the word joint means in the context of the kinds of services we're talking about here.

[00:20:41] Speaker 00:
One of the things I wanted to clear up about the double entendre argument, and I think it's important because they kind of make the double entendre argument both for genericness and the descriptiveness refusal.

[00:20:52] Speaker 00:
All of the cases that they've cited where the TTAB has found that there was a double entendre, those were all 2E1 merely descriptiveness cases.

[00:21:04] Speaker 00:
In those cases, because you're looking at whether a marquee is merely descriptive,

[00:21:09] Speaker 00:
When there is some other definition that's apparent from the mark itself and the goods and services we're talking about, and that other second meaning is not descriptive, then the mark is not merely descriptive.

[00:21:22] Speaker 00:
But when we have a case where there's genericness as that issue, the issue is whether or not the mark is primarily

[00:21:29] Speaker 00:
a source indicator or primarily identifies the class of goods.

[00:21:35] Speaker 00:
So there's an additional hurdle in using a double entendre argument when you've got a genericness refusal because you not only have to show that there is a secondary meaning that's applicable to the goods and services, but you have to show it's the primary meaning because otherwise it's still primarily the generic meaning.

[00:21:53] Speaker 00:
And that's something I think that gets kind of lost in the way.

[00:21:56] Speaker 01:
Well, what if you're in an instance where you don't find that it's generic, but you can find it's merely descriptive?

[00:22:02] Speaker 01:
So you don't have behind you the fact that it's generic.

[00:22:07] Speaker 00:
Right.

[00:22:07] Speaker 00:
So in a merely descriptive case, you still have to find that in the context of the goods and services, which are entertainment services for live music, nightclub services, and in class 43, the restaurant services and bar services, you have to find that consumers looking at just the words, the joint, would conjure a prison.

[00:22:28] Speaker 00:
and that there is no there's a lot of argument about that here but there is no evidence in the record that that is in fact what people do in the context of the joint for these classes of services and that what the board has conflict between the two classes that's what i'm struggling with maybe it's just not

[00:22:47] Speaker 01:
It's almost like you could win on 41 on the concert because it has a more generic or descriptive meaning that deals with restaurants but not with concert halls.

[00:22:57] Speaker 01:
Can we analyze this case by differentiating between concert venues and things that are just restaurants?

[00:23:05] Speaker 00:
Well, I think you do have to do that because there really are two classes.

[00:23:09] Speaker 00:
And I would admit that there's certainly more evidence, as you pointed out, that has to go to restaurants being called joints in the record.

[00:23:16] Speaker 00:
Or bars.

[00:23:17] Speaker 00:
Or bars.

[00:23:18] Speaker 00:
But I still think that what the board found here with respect to class 41, the music venue services, that there is substantial evidence that supports what the board did.

[00:23:30] Speaker 00:
And we can see that because there isn't any evidence for them to have found the other way.

[00:23:35] Speaker 00:
And so there was really just a sort of a one-sided record here.

[00:23:39] Speaker 00:
How could a reasonable person have found otherwise?

[00:23:42] Speaker 01:
I mean, the burden is on the government here.

[00:23:45] Speaker 00:
Yes.

[00:23:46] Speaker 01:
Let me just ask you, on the merely descriptive and on all of the evidence they put on with respect to revenues and advertising and so forth, in certain respects, standing alone, it seems substantial.

[00:24:01] Speaker 01:
So what's the problem?

[00:24:03] Speaker 00:
The problem, as we pointed out in our brief, is that when they showed the exemplars of these different things that were talked about in the declaration that were the Twitter, the Facebook, the Yelp reviews, the TripAdvisor reviews, all of these things also prominently featured the Hard Rock Hotel and Casino March.

[00:24:24] Speaker 00:
and this court and other circuits have been very clear that when you're giving evidence of advertising revenue, look how much we've promoted this mark, people now know it's associated with us, that it's got to be something where the inference is from that, that you can say that that particular mark, the joint,

[00:24:44] Speaker 00:
is what people are, is the impression that's coming from this advertising.

[00:24:51] Speaker 00:
But when there's other marks in there, or maybe a different mark with additional words to it, then that inference gets kind of torn a little bit.

[00:24:59] Speaker 00:
It's harder to make that leap.

[00:25:01] Speaker 00:
So that's what the board was doing here when it gave less weight to that evidence.

[00:25:06] Speaker 01:
Even if it's just a location, I mean the joint in Washington.

[00:25:12] Speaker 01:
Is that different than saying the joint at the Hard Rock Cafe?

[00:25:15] Speaker 01:
I mean, is it just a location, venue kind of thing?

[00:25:20] Speaker 00:
I'm not sure I understand your Honor's question.

[00:25:22] Speaker 01:
But you're saying the joint go, you're saying it mitigates, am I understanding correctly, it mitigates the impact of the advertising and all of that.

[00:25:32] Speaker 01:
Yes.

[00:25:32] Speaker 01:
Because it's not just the joint.

[00:25:35] Speaker 01:
It's associated with the Hard Rock Cafe.

[00:25:37] Speaker 00:
Right.

[00:25:38] Speaker 00:
The consumer is getting both marks.

[00:25:39] Speaker 01:
Your friend started her argument by suggesting that those who know Vegas appreciate that whether it's hard rock or something, it's kind of almost sort of a dress.

[00:25:51] Speaker 01:
It's so there could be a joint in various casinos, and you just put in their location.

[00:25:55] Speaker 01:
So that's what I'm going with.

[00:25:57] Speaker 00:
Yeah.

[00:25:58] Speaker 00:
I don't think there's anything in the record that bears on that argument.

[00:26:01] Speaker 00:
I mean, that would be something maybe that could have been fleshed out here, but it wasn't an argument that was made

[00:26:07] Speaker 00:
or supported below.

[00:26:08] Speaker 00:
And so there really is nothing to support that in the record, as far as I can tell.

[00:26:16] Speaker 00:
So with respect to the acquired distinctiveness, I think, particularly if you look at it in terms of sort of as a comparator, the case 20 years ago in the Boston beer case, where the annual revenues for advertising and for sales were about what the same as the numbers that they're giving you here for a period of several years.

[00:26:35] Speaker 00:
And even then, because of the descriptive nature of the market issue in that case, that wasn't enough to say that the board was unreasonable in not finding acquired distinctiveness in that case.

[00:26:47] Speaker 01:
Can I just take you back to the generic issue that we started talking about?

[00:26:53] Speaker 01:
You do more of these cases than I do.

[00:26:56] Speaker 01:
What we're left with, at least with respect to class one and entertainment, is you've got two, tops three, I think, dictionary definitions that even could arguably cover class 41.

[00:27:10] Speaker 01:
How do we evaluate that?

[00:27:11] Speaker 01:
And you've got numerous others that don't, that say something else, that define joint as being something else.

[00:27:17] Speaker 01:
How could we find generic, at least with respect to class 41, where if you scan all the dictionaries, only two of 15 have the suggestion in them?

[00:27:29] Speaker 00:
Well, I think that there are other dictionary definitions, and because we have two or three of them here, that shows that that is what the public thinks of when it hears join.

[00:27:40] Speaker 01:
Well, except two or three, but we've got 15 others that say something else, whether it's a prison, whether it's a dwelling, or whether it's just a restaurant.

[00:27:48] Speaker 00:
You have to look at these, the way this court and the way the board and the agency look at these cases is you don't just look to see are there multiple definitions and look at all the different ones.

[00:27:59] Speaker 00:
You have to look at it in the context of people who are looking to get those kinds of services.

[00:28:05] Speaker 00:
And in that context, you want to go to a concert, you want to go to a restaurant, you're thinking about that and you see the joint, you're not going to think of prison in that context.

[00:28:15] Speaker 00:
Now, one... Well, let me ask you.

[00:28:17] Speaker 01:
Okay, so you're thinking about concerts.

[00:28:19] Speaker 01:
Go down the list of definitions.

[00:28:22] Speaker 01:
I mean, you have to sort of search pretty deeply to come up with anything.

[00:28:28] Speaker 01:
I mean, they don't mention the word concert.

[00:28:30] Speaker 01:
At most, the ones you cited talk about entertainment or talk about nightclub or similar business.

[00:28:38] Speaker 01:
That's all you've got in the definitions when you're trying to make a case of generics.

[00:28:42] Speaker 00:
Well, they talk about places of entertainment, and in the very definition of their goods and services, they say entertainment services, specifically musical concert entertainment.

[00:28:53] Speaker 00:
So the dictionary definitions precisely cover what they are doing.

[00:28:58] Speaker 00:
It may cover other kinds of entertainment services.

[00:29:01] Speaker 00:
And that's why, for example, I talked to you about the restaurant that had the video poker entertainment.

[00:29:07] Speaker 00:
But the entertainment does cover these kinds of musical entertainment services.

[00:29:14] Speaker 00:
Any of these other definitions are not relevant when you look at it in the context of these particular goods and services.

[00:29:21] Speaker 00:
And that has to be the way this is.

[00:29:23] Speaker 00:
Otherwise, you're going to have a situation where as long as there is any other definition that could come up even wholly apart from these kinds of services,

[00:29:34] Speaker 00:
You're not going to have genericness, and genericness is about protecting competition, protecting competitors from using these words.

[00:29:41] Speaker 01:
No, I appreciate that, but I think you're kind of trying to overstate it, and it's worrying me a little because that can be... If you have any other... My suggestion looking at this list is that there's one other that doesn't cover entertainment services.

[00:29:55] Speaker 01:
So we're talking about two different things.

[00:29:57] Speaker 01:
I'm not suggesting a situation where you can find some other definition out of 40 that does something other than entertainment services.

[00:30:06] Speaker 01:
That's not this case, right?

[00:30:09] Speaker 00:
I think it is kind of this case, because here you have all sorts of definitions that don't apply through the legal lens that you have to use, which is the context of these goods and services here.

[00:30:21] Speaker 00:
So once you use that lens, everything else becomes irrelevant, unless there is evidence in the record, which we don't have here, that shows that despite the fact that these are music and nightclub and restaurant services, people nevertheless conjure up prison.

[00:30:38] Speaker 00:
And there is nothing that supports that in the record here.

[00:30:41] Speaker 01:
Thank you.

[00:30:54] Speaker 04:
A couple of points.

[00:30:55] Speaker 04:
This issue of no evidence of the definition of prison in the record is just simply not true.

[00:31:02] Speaker 04:
We've got seven definitions that use, that define joint or the joint as prison.

[00:31:09] Speaker 04:
Two of them use the particular, which is the trademark here, and that's the Online Slang Dictionary and Oxford Dictionary.

[00:31:17] Speaker 04:
then the Wikipedia definition says it's always used with the, so it's not joint by itself, it's the joint.

[00:31:24] Speaker 04:
And we do have evidence of the record of, in terms of articles, and I cited the

[00:31:32] Speaker 04:
customers who actually do get the joke.

[00:31:35] Speaker 04:
So we do have evidence in the record of that.

[00:31:38] Speaker 04:
And also, the relevant public here, particularly for the Class 41 services, are people who go to music shows.

[00:31:46] Speaker 04:
And people who go to music shows like music, by definition.

[00:31:49] Speaker 04:
That's why they pay to go in.

[00:31:51] Speaker 04:
And it's common knowledge that, and we have evidence of Folsom Prison, that Johnny Cash did a live performance in the late 60s at Folsom Prison in California and recorded- I know, I saw the movie.

[00:32:03] Speaker 04:
Yeah, and you're right, I forgot about the movie.

[00:32:07] Speaker 04:
But I knew about it and I was born in the early 60s and I knew about that concert that went on.

[00:32:13] Speaker 04:
And that there was an album, at least one, maybe two albums recorded at that.

[00:32:17] Speaker 04:
So the connotation between music and prison for those people who like music shows is there.

[00:32:26] Speaker 04:
So we have that.

[00:32:27] Speaker 04:
Another point that was made by Mr. Cascandre was that we need to show secondary meaning for the double entendre for the identified goods or services.

[00:32:37] Speaker 04:
There's no requirement of a showing of secondary meaning for the double entendre with the identified services.

[00:32:47] Speaker 04:
In fact, the cases really don't even talk about that.

[00:32:50] Speaker 04:
They talk, and if someone does,

[00:32:52] Speaker 04:
by chance, make the association.

[00:32:55] Speaker 04:
That was in the sugar and spice case.

[00:32:58] Speaker 04:
The court said, to the extent that the nursery rhyme is familiar to one scene or hearing the mark, his recall is undoubtedly stimulated to make the association with everything nice.

[00:33:09] Speaker 04:
So there wasn't an actual showing that they made it.

[00:33:12] Speaker 04:
It's like, if they do it.

[00:33:14] Speaker 04:
And that's the same thing with the no bones about it case.

[00:33:18] Speaker 04:
and the hard line, there was no evidence to show that there was some connection between the hard line meaning an attitude of toughness and mattresses.

[00:33:28] Speaker 04:
So the office is trying to create evidentiary hurdles that are not in the case law to support their position.

[00:33:36] Speaker 04:
And the other point I would make, and this is going back to, but this applies to both class 41 and 43, is the joint is too vague of a term.

[00:33:47] Speaker 04:
You really don't know what you're talking about without the food modifier, right?

[00:33:50] Speaker 04:
When we're talking about restaurant, it's a soul food joint, it's a burger joint, it's a Hawaiian joint.

[00:33:55] Speaker 04:
And with respect to the music venue, you don't know what you're talking about.

[00:34:01] Speaker 04:
You have, it's a pun, and you can figure out that it's a pun.

[00:34:05] Speaker 04:
But you know, it's not the concert hall.

[00:34:08] Speaker 04:
That's not the name of it.

[00:34:09] Speaker 04:
And in fact, our Wikipedia entry has the joint, parentheses, music venue, so people know what it is.

[00:34:16] Speaker 04:
So with that in mind, I don't see how the joint can be generic.

[00:34:20] Speaker 04:
for either class 41 or 43, but certainly not descriptive for this, and we've got all the evidence that shows this association.

[00:34:29] Speaker 04:
The difference between that beer case, that was this, the mark was, it was crazy, it was the best beer in America.

[00:34:36] Speaker 04:
And the issue was it was too laudatory, and there were so many other people, companies that were using

[00:34:43] Speaker 04:
best beer in America, both before and after the applicant.

[00:34:47] Speaker 04:
And a lot of these cases come down to, is there a competitive need?

[00:34:51] Speaker 04:
Is there evidence in the record that others are using this and need to continue to use it?

[00:34:56] Speaker 04:
There's no evidence of record, certainly for Class 41.

[00:35:00] Speaker 04:
And for Class 43, whenever they use joint, the joint, it's always referring back to whatever the name of the restaurant was or the type of restaurant.

[00:35:08] Speaker 04:
So we would submit that

[00:35:10] Speaker 04:
It's too vague of a term to be either generic or descriptive and we've submitted sufficient evidence of secondary meaning if the court finds that the descriptiveness refusal was sufficient on this.

[00:35:24] Speaker 04:
The office is trying to place a burden on applicants with this 2F evidence that is just, we would never be able to meet it.

[00:35:33] Speaker 01:
Thank you.