Summary
The United States Court of Appeals for the Federal Circuit reversed the Trademark Trial and Appeal Board’s refusal to register KAHWA for cafés and coffee shops. The court held that the Board’s findings of genericness and mere descriptiveness based on KAHWA’s Kashmiri green tea meaning were unsupported by substantial evidence because there was no evidence that cafés or coffee shops sold kahwa. The court also held that the doctrine of foreign equivalents did not apply because KAHWA had an undisputed well-established alternative meaning, and costs were awarded to Bayou.
Topics
Practice areas
Questions Presented
- Whether the Board's genericness and mere-descriptiveness findings based on the Kashmiri green-tea meaning constituted new grounds of refusal.
- Whether substantial evidence supported the Board's finding that KAHWA was generic for cafés and coffee shops.
- Whether substantial evidence supported the Board's finding that KAHWA was merely descriptive for cafés and coffee shops.
- Whether the doctrine of foreign equivalents required translation of KAHWA when the parties did not dispute that the mark had a well-established alternative English meaning as Kashmiri green tea.
Holdings
- The Board's genericness and mere-descriptiveness findings based on the Kashmiri green-tea meaning did not constitute new grounds of refusal because Bayou had a fair opportunity to respond to those refusals and the examiner never withdrew them.
- The Board's finding that KAHWA was generic for cafés and coffee shops was not supported by substantial evidence.
- The Board's finding that KAHWA was merely descriptive for cafés and coffee shops was not supported by substantial evidence.
- Because KAHWA had a well-established alternative English meaning as Kashmiri green tea, the doctrine of foreign equivalents did not require translation of the mark as a matter of law.
Key quotations
“Because there is no record evidence showing any café or coffee shop in the United States has ever sold kahwa, the KAHWA mark cannot be generic or merely descriptive of cafés and coffee shops.” (9)
“Given the parties do not dispute KAHWA has a well-established alternative English meaning, as the Board decision admits, no translation is necessary since the doctrine of foreign equivalents does not apply as a matter of law.” (10)
Factual background
Bayou sought to register KAHWA for cafés and coffee shops and alleged use of the mark since 2008. The examiner refused registration based on alleged meanings of KAHWA as coffee in Arabic and as Kashmiri green tea, and the Board affirmed based on the green-tea meaning. The record contained no evidence that any café or coffee shop in the United States had ever sold kahwa, a specific type of Kashmiri green tea.
Procedural history
Bayou applied to register KAHWA for cafés and coffee shops. The examining attorney refused registration on genericness and mere-descriptiveness grounds, relying on purported Arabic and Kashmiri green-tea meanings and the doctrine of foreign equivalents. The Trademark Trial and Appeal Board affirmed based on the Kashmiri green-tea meaning, and Bayou appealed to the Federal Circuit.