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Reading tea leaves - Court revives trademark application for generic tea term
If you’ve had a trademark application rejected by an examiner from the U.S. Patent and Trademark Office (PTO), don’t lose hope. Examiners make reversible mistakes — as evidenced by a recent case where the U.S. Court of Appeals for the Federal Circuit rejected the multiple reasons an examiner cited when denying an application.
A brewing controversy
Bayou Grande Coffee Roasting Company filed to register the mark KAHWA for cafés and coffee shops. The examiner initially found the mark generic or merely descriptive of cafés and coffee shops. The examiner also relied on the doctrine of foreign equivalents, asserting that, because KAHWA means “coffee” in Arabic, Bayou was required to submit an English translation.
Bayou argued that the term doesn’t translate to “coffee” in Arabic. It further argued that the doctrine of foreign equivalents didn’t apply because the term has an alternative English-language meaning as a specific type of Kashmiri green tea from Central Asia. But the examiner maintained the prior refusals and added a new reason for refusal — that the tea meaning made the term generic or merely descriptive, too.
Bayou subsequently appealed to the Trademark Trial and Appeal Board (TTAB), which affirmed the examiner’s refusals based on the green tea meaning of KAHWA. It found that the mark was generic because the relevant consuming public views KAHWA as a type of green tea beverage and thus a key aspect of the genus of cafés and coffee shops, which serve a variety of tea beverages. The board said the mark also was merely descriptive of cafés and coffee shops because it refers to a type of tea, and those businesses sell tea.
The board acknowledged Bayou’s argument that the doctrine of foreign equivalents didn’t apply but declined to address the issue. Bayou appealed.
Grounds for the appellate ruling
The Federal Circuit agreed with Bayou that the TTAB’s genericness finding wasn’t supported by substantial evidence. There is no evidence on the record of any café or coffee shop in the United States ever selling kahwa. The lack of evidence that kahwa sales represent a key aspect of café and coffee shop services meant the mark couldn’t be generic for such businesses. The fact that relevant customers understood KAHWA to refer to a specific type of tea wasn’t enough to establish genericness for cafés and coffee shops selling coffee and other kinds of tea.
The appellate court similarly found no substantial evidence to support the TTAB’s mere descriptiveness ruling. The lack of evidence of any U.S. café or coffee shop ever having sold kahwa necessarily meant there was no evidence that selling the tea is a characteristic of cafés or coffee shops — or that relevant customers would immediately know selling kahwa was a characteristic of cafés and coffee shops.
Bayou also argued on appeal that the PTO shouldn’t be allowed to rely on the doctrine of foreign equivalents in future proceedings because the TTAB’s decision admitted that KAHWA has a well-established alternative English meaning (Kashmiri green tea). Under the doctrine, foreign words used as a mark are translated into English before being tested for genericness and descriptiveness.
An exception applies, though, when ordinary customers wouldn’t stop to translate the mark, even if they’re familiar with the foreign language. In such circumstances, the doctrine doesn’t require the applicant to provide an English translation.
Given that the parties in this case agreed that the term had a well-established alternative English meaning, the court held, the doctrine of foreign equivalents didn’t apply. And no translation was necessary.
In the bag
The Federal Circuit ultimately ruled in Bayou’s favor, concluding that none of the TTAB’s refusals were viable. It therefore reversed the board’s determination that KAHWA wasn’t registrable.
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