On Dec. 9, 2025 in In Re: Bayou Grande Coffee Roasting Co., the U.S. Court of Appeals for the Federal Circuit (the “CAFC”) held that the mark KAHWA for cafes and coffee shops was registrable after the mark had been rejected for registration by both the examining attorney and the Trademark Trial and Appeal Board (the “Board”) on genericness and mere descriptiveness grounds. The examining attorney had relied on the doctrine of foreign equivalents to support the two rejection grounds.
The following discussion is intended to assist trademark registration applicants in understanding the factors that ought to go into a generic/merely descriptive rejections analysis by the Board and the courts. It also provides an important tip on one of the important requirements for applying the doctrine of foreign equivalents by the examining attorney. For a previous blog on merely descriptive marks in general, click here.
KEY POINTS
- Any finding of genericness and mere descriptiveness as grounds for rejection must be supported by substantial evidence.
- The doctrine of foreign equivalents does not apply in where alternative English translations of the foreign word exist.
- A suggestive mark is not a merely descriptive mark and may be registered providing there is no likelihood of confusion of the mark with existing registered marks.
- Every proposed mark should be carefully evaluated for possible rejection on likelihood of confusion, merely descriptive and generic grounds before any application is ever filed because appeals are expensive. Why? Because the reversal rate of trademark registration refusals is historically only around 10%.
- Brand development is also an expensive endeavor wherein the funds are best spent on developing brands which will be the beneficiaries of valuable legal rights, namely registered trademarks and free of infringement claims with existing brands. In other words, Do It Right the First Time!
CASE DISCUSSION
- Whether a Mark is Generic Is a Question of Fact Which Must Be Supported by Substantial Evidence.
The examining attorney in Bayou had opined that the mark’s English translation is “coffee.” Under the doctrine equivalents, the KAHWA mark was therefore both generic and merely descriptive of the Applicant’s services. Bayou had argued that KAHWA does not mean coffee in Arabic and that the doctrine of equivalents does not apply because KAHWA has an alternative meaning in the English language for a specific type of green tea from Central Asia to no avail. Nevertheless, the examining attorney maintained the prior refusal on the coffee meaning plus added new grounds of refusal based on the tea meaning.
Upon appeal by Bayou, the Board affirmed the examining attorney’s rejection. In doing so, the Board concluded that relevant customers regard KAHWA as the generic description for a type of green tea beverage. The Board did not get into the “coffee” discussion, apparently accepting Bayou’s argument concerning the mark’s alternative meaning. Nevertheless, because cafes and coffee shops serve a variety of tea beverages, the board concluded that KAHWA is generic since it refers to a key sales practice of cafes and coffee shops.
In its appeal to the CAFC, Bayou argued that the Board’s genericness finding was not supported by substantial evidence. It appears that the USPTO’s Director had concluded that the Board had made an incorrect decision concerning genericness because the Director elected not to respond to Bayou’s genericness argument and instead sought affirmation of the Board’s decision on merely descriptive grounds only. See FN 2 of the Slip Opinion.
The CAFC’s opinion emphasized that a generic trademark comprises terms that the relevant purchasing consumer understands primarily as the common or class name for the associated goods or services because of the common usage of the generic term. “[T]he determination of whether a mark is generic must be made in relation to the goods or services for which registration is sought, not in the abstract.” In re Virtual Independent Paralegals, LLC, 2019 USPQ2d 111512, at *2 (TTAB 2019). Many times, a mark that is found to be generic will also be found to be merely descriptive. For example, in In Re Responsive Ads, the Board held that the mark RESPONSIVLEADS was both generic and merely descriptive.
The public policy behind excluding generic marks from registration is that generic terms are used by the general public; such terms cannot indicate a particular source of the goods/services. Th commentator adds that trademark law’s primary purpose is to ensure that the consumer will be able to identify the goods/services provided under a registered mark with the source of the goods/services.
The CAFC noted that the Director had not proffered any evidence of any café or coffee shop in the U.S. ever selling kahwa, a specific type of Kashmiri green tea. As such, the KAHWA mark could not be generic for cafes and coffee shops “because there is no evidence that selling kahwa tea is a key aspect of café or coffee shop services.” Accordingly, the CAFC concluded that the KAHWA mark is not generic under the “substantial evidence” standard required for establishing genericness.
- Where a Mark Is Merely Descriptive Is a Question of Fact Which Must Be Supported by Substantial Evidence.
“Whether a mark is merely descriptive requires establishing that it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” Slip opinion at 6. An argument for overcoming a finding of merely descriptive is that the mark is suggestive. This means that some imagination or thought is required by prospective customers to discern the actual goods/services associated with the mark the applicant is trying to register.
The Board had found that record evidence shows kahwa is a type of green tea. Because cafes and coffee shops serve teas, the mark “KAHWA immediately informs prospective customers that the establishment serves this particular type of green tea drink.” The Board then stated that prospective customers would not need imagination or thought to discern the nature of the Applicant’s café/coffee shop services when they encountered the mark. Slip opinion at 6. This conclusion was introduced to shut down any counterargument that KAHWA was not merely descriptive but suggestive and therefor registrable.
The Director argued to the CAFC that the relevant customers understand that KAHWA: 1) refers to Kashmiri green tea; and 2) cafes frequently serve tea (though not kahwa). The problem with this argument, as emphasized by the CAFC, is that there was no record evidence showing that any café or coffee shop in the U.S. has ever sold kahwa green tea. Therefore, selling kahwa tea cannot be a characteristic of the services for which Bayou was seeking a registered trademark. The Board and the Director were attempting to get around the “kahwa” problem by insisting that the word must apply to any type of tea. The CAFC kept the analysis focused on kahwa green tea only.
Finally, the CAFC completely closed down any argument of merely descriptiveness by stating that at most KAHWA was suggestive, not merely descriptive, “because the relevant customers would have to make the mental leap from KAHWA green tea to teas generally, and then to cafes and coffeeshops.” Under trademark law, a suggestive mark is in essence one that requires the relevant customer to stop and think because the customer does not instantaneously associate the mark with the mark’s goods/services at least the first time in encountering it. Suggestive marks are registrable providing they meet the other requirements for registration (e.g., proper specimens are submitted to the USPTO).
- The Doctrine of Foreign Equivalents Does Not Apply Where the “Foreign Word” Mark Has a Well-Established Alternative Meaning.
Under the doctrine of foreign equivalents, a foreign word mark from a language familiar to an appreciable segment of American consumers and the English equivalent may be held to be confusedly similar with a registered mark comprising the foreign word mark’s English translation. The translated meaning of a foreign word(s) mark is supposed to be provided in the trademark application for registration of the mark in the US. The examining attorney should apply the doctrine if evidence from, e.g., a dictionary and Internet shows that the relevant English translation from the foreign-word mark is literal and direct. If the doctrine is applied, the examining attorney will use the relevant du Pont factors to assess whether there is a likelihood of confusion based on a trademark search. The search includes conducting a registered trademark search using the English translation of the foreign word. For a detailed description of the doctrine, see TMEP § 1207.01(b)(vi). The doctrine is not typically applied where the foreign word mark is from an ancient or obscure language. Rejections based on descriptiveness and genericness may also be applied under the doctrine, resulting in rejection of the mark. TMEP § 1209.03(g). Examiners are directed to use the doctrine as a guideline.
Upon Appeal to the CAFC, Bayou asked the Court to determine if the USPTO should be precluded from relying on the doctrine in any future proceedings because the Director did not dispute KAHWA’S well-established alternative meaning. This ruling was likely sought by Bayou because it has several pending and registered applications having the word KAHWA. This was a sound strategic move because USPTO’s Director argued that the Court should not address the doctrine of equivalents because the Board had not addressed it. Accordingly, the doctrine could well have been cited in Bayou’s pending or future applications, resulting in additional registration issues and costly appeals.
The Court disagreed with the Director’s position and emphasized that the doctrine is not applicable where the mark at issue has a well-established alternative English meaning. Because the Director never disputed KAHWA’S alternative meaning, no translation of the word KAHWA was even necessary since the doctrine does not apply as a matter of law.
KAHWA is a registrable mark after all under the principles of trademark law as articulated in the CAFC’s decision.
FOOD FOR THOUGHT
What if KAHWA had only one meaning – coffee? Do you think the outcome might have been different? Why or why not?
THANK YOU FOR YOUR INTEREST IN THIS ARTICLE. THE CONTENT IS FOR INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.
© 2025 by Troy & Schwartz, LLC
Susan Dierenfeldt-Troy
