Tuesday, May 17, 2016

CAFC Upholds TTAB: CHURRASCOS (Stylized) Generic for Restaurant Services

The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's ruling in In re Cordua Restaurants LP, 110 USPQ2d 1227 (TTAB 2014) [precedential] [TTABlogged here], finding the term CHURRASCOS, in the stylized from shown below, to be generic for restaurant services. The fact that Applicant Cordua owns a registration for the mark CHURRASCOS in standard character form for the same services ("restaurant and bar services; catering") was irrelevant because each trademark application must be examined on its own merits. In re Cordua Restaurants, Inc., 118 USPQ2d 1632 (Fed. Cir. 2016) [precedential].


The question of whether a term is generic is a question of fact. The CAFC applies the "substantial evidence" standard in reviewing the TTAB's determination.

The court first pointed out that Cordua's ownership of a registration for the CHURRASCOS word mark did not preclude a finding of genericness for the stylized version of the mark. Cordua argued that the Board should have fully considered its "intcontestable registration," but the court observed that a mark's incontestability under Section 15 is not a shield against genericness. Section 14 states that a registration for a mark that has become generic may be cancelled at any time.

In any event, this proceeding does not involve the earlier registration, and the Section 7(b) presumption of validity of that registration does not carry over to the new application for registration of a different mark. The Board must evaluate the present record to determine whether the stylized mark is ineligible for registration, and the USPTO must establish genericness by clear evidence. The Board applied that standard here.

The court noted that the Board's genericness analysis addressed Cordua's own restaurant services (stating that "'Churrasco' steak is clearly one of the primary items applicant's CHURRASCOS restaurants serve"). However, that error was harmless, because the Board properly determined that the involved genus of services was "restaurant services," and Cordua agreed with that determination.

The question, then, was whether "churrascos" is generic for restaurant services generally. The Board's findings that "churrascos" is a generic term for a type of grilled meat, and that "churrascos" is a generic term for a restaurant featuring churrasco steaks, was supported by substantial evidence.

Cordua maintained that "churrascos" refers to a style of grilling meat and not to restaurant services, but the court observed "[i]f the relevant public would understand a term denoting a specialty dish to refer to a key aspect of restaurant services, then the term is generic for restaurant services." Substantial evidence supported the finding that "churrascos" refers to a "key aspect" of a class of restaurants because those restaurants are commonly referred to as "churrasco restaurants." The Board found no error in the Board's conclusion that "there  is a class of restaurants that have churrascos as a centeral focus of their services, and both competitors in the field and consumers use the term 'Churrasco" to refer to this type of restaurant."


Cordua contended that even if "churrascos" is generic as to "churrasco restaurants" (also known as "churrascarias"), it is not generic for all restaurant services. However, a term is generic if relevant consumers understand the term to refer to part of the claimed genus, even if the public does not understand the term to refer to the broad genus as a whole. For example, "pizzeria" is generic for restaurant services, even though it refers only to a sub-group or type of restaurant rather than to all restaurants.

[R]egistration of the stylized form of CHURRASCOS on the Principal Register would give Cordua rights that it could enforce against all others providing restaurant services, including operators of traditional Latin American churrascarias (churrasco restaurants) that specialize in meat grilled in the churrasco style

And so the CAFC held that the TTAB did not err in its decision.

Read comments and post your comment here.

TTABlog comment: In footnote 2 of its opinion, the CAFC dismissed the notion that the USPTO's determination that the CHURRASCOS word mark was eligible for registration is binding in this case as a matter of issue preclusion under B&B Hardware. The CAFC found no suggestion in B&B Hardware that an examining attorney's decision to register or refuse to register a mark satisfies the traditional requirements of issue preclusion. See Restatement (Second) of Judgments Sec. 27 (1982) (requiring that an issue be "actually litigated" between parties for issue preclusion to apply).

Text Copyright John L. Welch 2016.

25 Comments:

At 10:01 AM, Blogger Bob Klein @ AMS said...

I have never heard or seen the term "Churrascos" and have no idea what it means or refers to. Pizzeria, yes. Trattoria, yes. Bistro, yes. But Churrascos? (Even Windows thinks I misspelled it!) It would seem that a survey would show that relatively few know what they term refers to. How many would need to know the term to view it as generic? And in the stylized font?

 
At 12:09 PM, Anonymous Elizabeth King said...

Of course cited throughout the B&B Hardware decision is the case of University of Tenn. v. Elliott, 478 U. S. 788, 798 (1986), which the Court noted was a state agency decision in the ex parte context. In Elliott, an agency terminated an employee who then appealed to the agency’s board (presided over by another employee as the Administrative Law Judge). 478 U.S. at 792. The administrative board upheld the termination and the U.S. Supreme Court found the administrative decision grounded issue preclusion when the employee sought relief via a separate cause of action. The majority in B&B cited this case 4 times, and it was referenced twice in the dissent. The notion that B&B will not be relevant in certain ex parte contexts may prove to be incorrect. It should be noted that the Appellant in Cordua never once argued that either Section 14 or 15 protect a generic term from challenge. Cordua's argument was that the existence of a registration protected under Section 14 for the legally equivalent mark mandated the consideration of the facts contained in the prior record since the nature of a genericness challenge is fact-based. We believe the court's analysis of this crucial issue was in error.

 
At 12:46 PM, Anonymous Anonymous said...

Difficult to see how a decision by a single examining attorney in 2008 could have preclusive effect as to whether a term is generic some years later.

 
At 12:55 PM, Blogger John L. Welch said...

Had the applicant sought review by way of civil action under Section 1071, it could have added survey evidence. But surveys are expensive. Moreover, under the Shammas decision, an applicant who choses the Section 1071 route must pay the USPTO's expenses, win or lose, including a possible survey by the USPTO. So the survey approach may be undesirable for financial reasons. [Perhaps it should have been done at the TTAB stage].

As fellow New Englanders, Bob, you and I know that in these parts, the word "spa" is generic for a convenience store. If you were to conduct as survey on genericness across the country, probably relatively few would find the term "spa" generic for those services. If you did a survey across the country regarding "churrascos," maybe the results would favor applicant. But what about in the Southwest? Or in some other particular section of the country?

 
At 1:05 PM, Anonymous Elizabeth King said...


Anonymous: No one ever made the assertion that the existence of the prior registration is preclusive, a fact which you would be aware of if you read the briefs and motions in this case. Appellant asserted that the error was in failing to consider the fact record supporting registration for the standard character mark for the same services. The basis for that assertion was that genericness is a question of fact and as such the facts contained in the legally equivalent registration file were relevant to the determination of the mark's operation as an indicator of source as opposed to generic nomenclature. The import of B&B is that the outcome here (in this application) might impact enforcement there (in the prior registration). This reinforces the importance of considering all facts of record, which include the facts contained in the prior registration file.

 
At 1:08 PM, Anonymous Elizabeth King said...

John: We were informed that if we appealed to the district court in order to put in survey evidence, which certainly would show CHURRASCOS is a mark, the USPTO would seek all expenses including their survey costs win or lose. The Office's position is in line with the SHAMMAS decision. It is my view that this portion of the Act needs to be modified.

 
At 1:10 PM, Anonymous Elizabeth King said...

Bob- I agree with you. Pizzeria is a type of restaurant. Churrascaria is a type of restaurant. CHURRASCOS is not a restaurant type and no evidence exists that CHURRASCOS is used or understood primarily to refer to restaurants, which is the test under Marvin Ginn.

 
At 2:23 PM, Anonymous Anonymous said...

Yet another Federal Circuit decision misapplying the genericness doctrine. I totally agree that Pizzeria, Churrascaria, and Bistro are generic terms for restaurant services, but a restaurant using the name of the food served at the restaurant as its mark is not using a generic term. Descriptive, yes, but generic, no.

 
At 2:37 PM, Blogger John L. Welch said...

According to the CAFC, the evidence indicated that there is a sub genus of restaurants called "churrasco restaurants." Just like, in the well known case, the evidence showed that a sub group fire sprinklers was called ATTIC.

You are probably correct that "pickle" is not generic for restaurants, because there is no sub-group of restaurants called "pickle restaurants." But "seafood," "fish," etc. would, I expect, be deemed generic.

Think of a phone book with listings for various type of restaurants. The listing would be sub-genuses of restaurant services and the names would be generic for "restaurant services."

 
At 3:50 PM, Anonymous Becky with the Good Hair said...

According to the CAFC, one could register misdescriptive matter with impunity, e.g., CHURRASCOS for sushi or vegetarian restaurants....when one parses through the spartan evidence of record, it is simply insufficient to show that CHURRASCOS is generic for SERVICES: a couple of pidgeon Spanish references to “churrasco restaurants” is not substantial evidence. The CAFC failed to account for the goods/services and genericness/descriptiveness dichotomies. CHURRASCOS could be generic for steak but a mental step is required for restaurant services whereas CHURRASCARIA would be generic for the actual services. Referencing an item or an ingredient found at the restaurant is a descriptive wink as to what is provided therein. The Applicant should be required to show evidence of secondary meaning: and 8,000,000 in annual sales, five restaurants, and five-figure annual advertising expenses would seem to be show evidence of acquired distinctiveness. In Applicant/Registrant's case, CHURRASCOS was really synecdoche for a Latin fusion restaurant. It would be like calling a Salvadoran restaurant "PUPUSAS." PUPUSAS are "featured" items on a menu - but the mark would serve to orientate the consumer as to one of many types of food that they may encounter. PUPUSERIA? Generic. What happens now for Registrants like "DOSA" (standard characters; 2(f) - U.S. Registration No. 4002408. Google "dosa restaurants" - I guess because one can find it on "the Google" the PTO can cancel the registration now....wither too, U.S. Registration No. 4654551 for GYROS & SALADS (standard characters on the Supplemental)?

 
At 5:27 PM, Anonymous Anonymous said...

Is Churrascos for a restaurant featuring churrasco steaks any different than Yogurts for a yogurt shop? I fail to understand how Churrascos is not generic for a churrasco restaurant, and these comments above are making me realize it was not the CAFC's analysis of the issue that was in error. Imagine eating breakfast at EGGS & BACON, then grabbing lunch at CHICKEN CHEESESTEAKS before your date night at FILET MIGNONS AND BAKED POTATOES. If you have room, head on over to HOT FUDGE SUNDAES. If you're still awake, venture over to CIGARS AND DIGESTIFS. Typical, generic Saturday night for me. The problem lies with the Examiners too lazy or afraid of holding marks generic and going to the Board. Some do, some don't (GYROS & SALADS). Some are lucky, some are not, and THAT is a big problem. The lesson here is, file 1a w/ Teas Plus, if you receive that generic advisory on first action, re-file immediately. If you receive the Supplemental Advisory, smile, call the EA and get your reg. Also, don't go to the CAFC on a generic refusal for a stylized version of the mark you already have an incontestable reg. for in standard characters. Small Reward, meet Huge Risk. Good night, I'm off to BEERS. Oh, and one last thing, CHURRASCOS for a sushi restaurant would be 2a.

 
At 5:36 PM, Anonymous Anonymous said...

"Appellant asserted that the error was in failing to consider the fact record supporting registration for the standard character mark for the same services." Why should the PTO or the Board or the CAFC consider the "facts" in another application? Why weren't those "fact" submitted as evidence in the new application?

 
At 5:38 PM, Anonymous Elizabeth King said...

A. I love Becky with the Good Hair, and my only comment on her thoughts is this:"What SHE said."

B. John- Thank you for discussing the "churrasco restaurant" evidence. I think it is important to note that out of 200 articles only 10 were placed by the Office into the record to support the incorrect assertion that churrascarias are called "churrasco restaurants." If you search the term churrascos in google, you aren't going to find other restaurants. You will find pages and pages of Cordua's restaurant. In fact, of the 10 exceprts in the record the one that gives any information on the term actually says the opposite: The Flesh Trade Article located in the appendix at A112, 118 defines “churrasco” as the cooking style and goes on to point out that the restaurants are called "churrascarias." No where in that excerpt does it call any restaurant a "churrasco restaurant." The PTO even admitted churrasco is a cooking style in its brief on page 11. As for the remaining excerpts they identify churrascarias--which CHURRASCOS is not. As for the phone book, I would invite anyone to go to yellowpages.com and search "Italian" after which the category of "restaurants" will automatically pop up. Then search "churrasco" (which is not the mark) and I think you will find that actually there are not any phone book categories called "churrasco restaurant." Moreover, the mark is not "Churrasco Restaurant" it is CHURRASCOS. And further to that, there is no phone book evidence in this record. Of course the reason is that it does not exist, other than entries for CHURRASCOS in Houston. And finally I would ask, rhetorically using your example of FISH, SEAFOOD and the like, would we say "FISHES" is generic for restaurants? Is "SEAFOODS"? Is "CHICKENS"? Is "BEEFS"? What about FILETS? If THE PRIME RIB functions as a mark for a restaurant in the genre of restaurants that serve prime rib then it is a little odd (to say the least) to hold that the key difference is that there are three words in THE PRIME RIB and only one word in CHURRASCOS. That's sophistry and frankly ignores the fundamental reasoning in Marvin Ginn. And yet that proposition was put forth by the bench in oral argument when it was suggested that STEAK FRITES is more of a mark, despite identifying a specific dish that is known and understood by most people in America, than CHURRASCOS because STEAK FRITES combines an American word with a French word whereas CHURRASCOS is just a single word. Again, this isn't the way genericness analysis is supposed to work. The combination of elements is not material. It is the mark as a whole that matters and how that mark is understood by the public.

 
At 5:47 PM, Anonymous Elizabeth King said...

Anonymous: The facts contained in the prior registration were put into the record when the Appellant claimed ownership of the prior registration pursuant to Section 1057(b) of the Act, which is the presumption of validity. The facts supporting or negating an attack based on genericness are the sole determining factor as a matter of law, actually. Hopefully you are aware of that. No registration exists in a vacuum. The facts supporting registration of the standard character mark are highly relevant to the allegation of genericness of a stylized version of the same mark for the same services. It would not always be the case that the fact evidence is germane but in a genericness analysis it is critical b/c that is the sole basis on which the case turns when the marks are legal equivalents for the same services.

 
At 6:04 PM, Anonymous Anonymous said...

Your sarcasm is noted. How does claiming ownership ("pursuant to 1057(b)") of a prior registration put the file of that registration into evidence? Also those supposed "facts" pertained to the situation in 2008 (or earlier). Are they relevant to the public's perception five or six years later?

If the two marks are legally equivalent, why did Cordua file the second application?

 
At 6:11 PM, Anonymous Elizabeth King said...

I would imagine that BEERS considers you one of its finest customers.-Only a "lawyer" under the influence would write "If you get a genericness advisory, immediately refile." What would that accomplish, exactly, other than letting the Trademark Office you are shopping Examiners? Isn't that a rule violation? Or do you do that? I am starting to get why you posted anonymously. Also you might want to read some of the case law being discussed here before you Monday Morning quarterback on strategies used by a pretty good legal team. But then again, that would involve reading cases and doing something other than patting yourself on the back for being clever on the internet.

 
At 6:27 PM, Anonymous Elizabeth King said...

What do you believe a 1057b claim and the attendant presumption of validity means? B&B answers the question: "Registration is significant...prima facie evidence of the validity of the mark." Park-N-Fly: Any suggestion that registrations are issued "generally without inquiry into the merits of an application…unravels upon close examination.” Park ‘N Fly, 469 U.S. at 202. What facts exist in the present file that are different from those in the prior registration? What facts exist that show the mark CHURRASCOS has migrated from a mark to generic nomenclature? There is no new evidence. And the prior file is replete with evidence showing mark operation, the fact that CHURRASCOS is not a churrascaria, AND it also takes apart the ridiculous "barbecue" translation piece by piece. If your fall back position is that maybe issuing the previous three registrations was a mistake, then isn't it incumbent to examine the basis of at least the LIVE 5 year old registration before making that assertion? The FACT basis, to be exact? I am not trying to be sarcastic, but there seems to be some disconnect in your arguments between the legal matter of law that genericness solely turns on FACTS and unwillingness to acknowledge that all the facts were not considered. But thank you for your thoughts. You have helped illustrate in a meaningful way why law should not be practiced in the comments section of the internet.

 
At 6:37 PM, Anonymous Anonymous said...

A presumption means just that. It's a presumption. You seem to miss the evidentiary issue that you have to submit the evidence into the file. Just saying you own a prior registration does not, in an evidentiary sense, put the file history of that registration into the record.

I'm not saying anything about whether the prior registration should or should not have issued. I'm looking at the current application. It was incumbent upon application to get into the record the evidence it wanted to rely on. Apparently from your comments, it did not do so.

You can make all the nasty remarks you want about the commenters, but it seems to me that Cordua screwed it up. If there were evidence in the prior file, Cordua should have put it into evidence in this file. Or better yet, it should never have filed this application at all.

 
At 7:05 PM, Anonymous Elizabeth King said...

And once again you show you have not read the file. It was actually the PTO that suggested making the prior registration the underlying basis supporting the application. So the Appellant claimed the registration under 1057b and the PTO reinforced its materiality under 2f b/c again it was the PTO that suggested that registration as *the basis for registration* under section 2f. You are operating in an abstract vacuum of what these things mean. Claiming ownership of a registration, or using that registration as the basis to support a new application under 2f is not some abstract exercise. It is contingent upon the registration's validity. If the challenge to a mark, a WORD'S validity, is based on an allegation of genericness there can be no fulsome determination of that issue without reviewing all facts including the facts supporting registration of the same word for the same services, particularly when two different portions of the statute have been triggered making the underlying basis of that word's registration so crucial. B&B Hardware has forcefully moved the trademark world away from viewing registrations as abstract things apart from rights in commerce. Yet you insist that they are not connected. Of course they are, just as the prior registration is connected to the application. You also might want to read a 2011(?) TTAB decision In Re Thomas Nelson.

 
At 7:20 PM, Anonymous Anonymous said...

I have no plan to read the entire file. What's important is the CAFC's opinion and what it says. If Cordua thinks the CAFC got it wrong, it can seek reconsideration or file a petition for writ of certiorari.

As I said, if Cordua wanted the PTO, the Board, or the CAFC to look at the file of the prior registration, it should have put that evidence into the file. Your comments about B&B Hardware are just hot air. The question is what was the evidence in the record? Even if the new mark was entitled to some "presumption of validity" from the prior registration which I doubt (and which the CAFC rejected), a presumption can be overcome by evidence.

Personally, I think the CAFC got it right. A "churrasco restaurant" is a type of restaurant. Maybe in 2008, this type of restaurant was not so well known, and so Cordua got by the first examining attorney under Section 2(f). Lately, I think it's a different story.

I don't think I've ever met an attorney who lost at the CAFC or the TTAB, who didn't say "We wuz robbed!"


 
At 7:34 PM, Anonymous Elizabeth King said...

One last thing I want to address this aspect of your comment and that is what you wrote here: "If there were evidence in the prior file, Cordua should have put it into evidence in this file. Or better yet, it should never have filed this application at all." You honestly believe that an AMERICAN company should not seek to register it's logo for a 30 year old mark at the UNITED STATES Patent and Trademark Office b/c they should be afraid of what might happen? It's the company's fault for seeking to register its lawful logo mark when they already had a standard character registration, and in fact when that mark had been registered three times with the same understanding as to what "churrasco" means? What if they like the logo? In my opinion yours is a very cynical way to look at the outcome here; blame the appellant for not predicting this ahead of time. Interesting way to dissect a case, I will give you that.

 
At 7:44 PM, Anonymous Elizabeth King said...

"The question is what was the evidence in the record?" And you were answered. Several times actually. The evidence in the record which includes of course the fact evidence in the prior registration file demonstrates that CHURRASCOS is a really well known mark. That the issue is too complex for you to take the time digest before logging on to offer your views does not change it from one of substance to "hot air."

 
At 8:00 PM, Anonymous Anonymous said...

CAFC are a bunch of clowns and any experienced IP practitioner knows that. But Anonymous is right about being "butthurt" and flaming them on the TTABlog. Miss-Genericness be a cruel mistress. Either way, you would have a tough time enforcing this registration outside of Houston so it is not that big a deal. Many a mark slid by a sleeping examiner but later caught on a refile.

 
At 8:39 PM, Anonymous Anonymous said...

You say " The evidence in the record which includes of course the fact evidence in the prior registration file ...." Did Cordua put the file into evidence in the second case, or not. I don't mean just citing the registration, but actually putting in the prior file?

I agree that hindsight is often twenty-twenty, and I can see how Cordua thought it could register the logo form of the mark, meager though it is. So I take back that comment.

 
At 8:44 PM, Anonymous Anonymous said...

I agree with anonymous that appealing to the CAFC is a crapshoot. The court regularly displays a less than sophisticated understanding of tm law.

 

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