TTAB Puts Pool Hall Behind the Eight Ball

On March 20, 2025, the U.S. Trademark Trial and Appeal Board (TTAB) granted an opposition filed by Jack’s Family Restaurants, LP, and denied an application filed by Jack’s Grill and Billiards, Inc., to register JACK’S DOWNTOWN RIALTO with an “8 ball” design. Jack’s Family Restaurants LP v. Jack’s Grill and Billiards Inc., Opposition No. 91281878 (TTAB). The application was for restaurant and bar services and disclaimed “DOWNTOWN RIALTO” (Rialto, California, being the location of the restaurant). Opposer Jack’s Family Restaurants, which has nearly 250 locations, owns prior registrations for JACK’S for restaurant services.

Jack’s Grill and Billiards argued that certain “real world” differences in the parties’ actual services helped to distinguish the marks. The TTAB was not persuaded, citing well-established precedent that the TTAB is “constrained to focus on the services as they are identified in the involved application and pleaded registrations,” without reading any such “limitations” into unrestricted services.

Turning to the strength of Jack’s Family Restaurants’ JACK’S mark, the TTAB first evaluated the two types of strength: conceptual strength and commercial strength. As for the conceptual strength of a mark (i.e., whether it is fanciful, suggestive, or descriptive), third party registrations may be relied upon to show that a mark is relatively weak. Referring to such registrations, Jack’s Grill and Billiards argued that JACK’S was a weak mark for restaurant services, but failed to enter any third-party registrations into the record, so the TTAB dismissed the argument. The TTAB also noted that JACK’S was registered on the Principal Register without a claim of acquired distinctiveness, and this was presumed to be at least suggestive and thus inherently distinctive.

As for commercial strength, Jack’s Family Restaurants claimed use for 60 years with “many millions” of customers, numerous awards, and media coverage. It submitted confidential sales figures and advertising expenses, which the TTAB categorized as “impressive by any measure,” though it did not refer in its briefing to any comparative information to put those figures in context. In a broad-brushed generous nod to Jack’s Family Restaurants, the TTAB stated that because JACK’S enjoys “at least some commercial strength, it is entitled to a wider scope of protection than ordinary inherently distinctive marks.” Just how much “some” commercial strength is that entitles a trademark owner to “wider than ordinary” protection remains unclear.

After finding that the parties’ services and channels of trade were identical, the TTAB then found that the dominant element of the parties’ marks (JACK’S) looks similar, sounds similar, and has a similar meaning and commercial impression. Unsurprisingly, the TTAB ultimately concluded that consumers who “encounter both marks may assume that the marks refer to the same Jack.”

Takeaway

Whether the submission of third-party registrations to show conceptual weakness or evidence of common actual use of JACK’S by third parties to show commercial weakness might have saved the application is unknown. However, in the absence of such evidence, the JACK’S application was likely always behind the eight ball. This is a good reminder of the importance of submitting third-party registrations into the record if you want the TTAB to consider them for whatever probative value they may have.