CAFC Reverses TTAB: KAHWA not Generic for, or Descriptive of, Cafés and Coffee Shops - Substantial Evidence Lacking

In a precedential ruling, the CAFC reversed the TTAB's August 2023 decision [here] affirming a refusal to register the mark KAHWA for "Cafés; Coffee shops" on the ground of genericness, or alternatively, mere descriptiveness. The Board had based its findings on the English-language meaning of KAHWA as a traditional type of green tea from Central Asia. But the CAFC saw no evidence of any café or coffee shop in the United States ever selling khawa tea and so khawa tea could not be considered a "key aspect" of Applicant Bayou Grande's services. In re Bayou Grande Coffee Roasting Co., Appeal No. 2024-1118 (Fed. Cir. December 9, 2025) [precedential].

Genericness: In reaching its finding of genericness, the Board relied on the CAFC's decision in In re Cordua Rests., Inc., 823 F.3d 594, 603 (Fed. Cir. 2016) (CHURRASCOS, a type of grilled meat, found to be generic for restaurant services), which held that a term "can be generic ... if the relevant public ... understands the term to refer to a key aspect of [the] genus - e.g., a key good that characterizes a particular genus of retail services." Finding that cafés and coffee shops serve a variety of tea beverages, the Board deemed KAHWA to be generic for Bayou Grande's services because it refers to a key aspect thereof.

Bayou Grande argued that the Board's genericness finding was not supported by substantial evidence. The CAFC agreed.

There is no record evidence of any café or coffee shop in the United States ever selling kahwa, a specific type of Kashmiri green tea. This is undisputed. *** KAHWA therefore cannot be generic for cafés and coffee shops because there is no evidence selling kahwa is a key aspect of café and coffee shop services, let alone any aspect of these services. *** In other words, the fact that relevant customers understand KAHWA to refer to a specific type of Kashmiri green tea is insufficient to establish genericness for cafés and coffee shops selling coffee and other kinds of tea.

Mere Descriptiveness: Based on the evidence that KAHWA is a type of green tea, and the fact that cafés and coffee shops serve tea, the Board deemed KAHWA to be merely descriptive of the services because "KAHWA immediately informs prospective customers that the establishment serves this particular type of green tea drink" and "no imagination or thought is required by prospective customers to discern the nature of Applicant's services." Again, the CAFC saw a lack of substantial evidence in support of that finding.

As we already established, it is undisputed that there is no record evidence showing any café or coffee shop in the United States has ever sold kahwa. *** This necessarily means there is no evidence selling kahwa is a “characteristic of the goods or services” of cafés or coffee shops, let alone evidence showing relevant customers would immediately know selling kahwa is a characteristic of cafés and coffee shops. Bayer, 488 F.3d at 963.

Foreign Equivalents: The examining attorney had also refused registration via the doctrine of foreign equivalents on the ground that KAHWA means coffee in Arabic. On appeal, Bayou Grande argued that the doctrine did not apply because KAHWA has a well-established alternative English meaning as referring to Kashmiri green tea. The Board had declined to address that issue, but Bayou contended that the USPTO should be precluded from relying on that doctrine in any future proceeding since the Board's decision conceded that KAHWA has a well-established alternative meaning. The USPTO argued that the CAFC should not consider the issue because the Board did not do so. The CAFC again sided with Bayou Grande.

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. In re Spirits, 563 F.3d at 1352; see also Cont’l Nut Co. v. Le Cordon Bleu, 494 F.2d 1395, 1396–97 (C.C.P.A. 1974). Under these circumstances, the Board’s failure to address this issue, which was fully developed and briefed to the Board, does not preclude us from deciding a legal question. N. Am. Philips Corp. v. Am. Vending Sales, Inc., 35 F.3d 1576, 1579 (Fed. Cir. 1994) (“We thus address the legal question, which the district court did not reach ....”).

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TTABlogger comment: I guess you could say that the TTAB was roasted in this one.

Text Copyright John L. Welch 2025.