Thursday, March 27, 2014

Precedential No. 11: TTAB Affirms Genericness Refusal of CHURRASCOS (Stylized) for Restaurant Services

Despite the applicant's ownership of a registration for the mark CHURRASCOS, in standard character form, for "restaurant and bar services; catering," the Board affirmed a genericness refusal of CHURRASCOS in the stylized form shown below, for the same services. The Board also affirmed an alternative refusal based on Section 2(e)(1) mere descriptiveness and lack of acquired distinctiveness. In re Cordua Restaurants LP, 110 USPQ2d 1227 (TTAB 2014) [precedential].

Genericness: The Board found that Examining Attorney Asmat Khan had provided the requisite clear evidence to establish that the relevant consumers of restaurant services (the general public) understands that "churrascos" is generic for a type of restaurant, namely, a restaurant that serves "churrascos." Dictionary definitions established that "churrasco" is "meat cooked over an open fire." Media articles referred to "churrasco" restaurants, and applicant's own evidence supported a finding that "churrasco" is generic for a type or preparation of "steak." A term that is generic for a particular category of goods is likewise generic for service directed to or focused on those goods. Because "churrasco" is generic for restaurant services, registration must be refused even though additional services (in the same class) are recited in the application.

Applicant conceded that the specialty of its restaurants is the churrasco. A term that identifies the primary or central focus of an applicant's services is generic for those services. [E.g., TIRES TIRES TIRES for retail store services; LENS for online retail services featuring contact lenses].

The display of applicant's applied-for mark does not create a separate commercial impression such that the proposed mark would be registrable (with a disclaimer of "churrascos").

Prior Registration: Applicant's ownership of a registration for the standard character mark CHURRASCOS for the same services was of no help. "Trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence of record that exist at the time registration is sought." In short, the examining attorney and the Board are not bound by the decision of the examining attorney who examined the application for applicant's previously registered mark.

Descriptiveness and Acquired Distinctiveness: For the purpose of completeness, the Board considered applicant's argument that the applied-for mark had acquired distinctiveness under Section 2(f). Applicant pointed to its prior registration as proof of acquired distinctiveness of the subject mark under Rule 2.41(b), but the Board noted that although ownership of a prior registration may be accepted as prima facie evidence of acquired distinctiveness, that is not always the case; further evidence may be required.

Because the term CHURRASCOS, if not generic, is highly descriptive of the type of barbequed steaks that are the specialty of applicant's restaurants, the burden on applicant to show acquired distinctiveness was "especially high." Consequently, its prior registration alone was not enough to establish acquired distinctiveness.

Applicant also relied on a declaration of its Vice President, averring that applicant's average annual income exceeded $8 million and its annual advertising and promotional expenditures topped $79,000. However, there was no evidence as to how the money was spent and no evidence of the effectiveness of the advertising in educating customers to the source significance of "churrascos." As to the sales figures, those numbers alone do not prove secondary meaning. Again, there was no evidence of the extent to which the public perceives CHURRASCOS as indicating applicant as the source of the services.

And so the Board concluded that applicant had failed to prove acquired distinctiveness.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.


At 9:17 AM, Anonymous Anonymous said...

Shouldn't there be a mechanism in place that allows the Board to cancel the Applicant's other registration sua sponte? Isn't that the most efficient way to "clean house," rather than putting the burden on the public to petition for cancellation? Am I missing something?

At 10:14 AM, Anonymous Anonymous said...

No, you're not missing anything. And I personally agree with you; it would seem to make a lot of sense to have such a mechanism, like maybe a "show cause" order procedure.

At 11:22 AM, Anonymous Anonymous said...

10:14 here again. Interestingly, patent-side regs provide for a Director-initiated ex parte reexamination when a substantial new question of patentability has been discovered or is brought to the Director's attention. 37 CFR 1.520. I don't think there is a TM-side analog to this reg.

At 11:54 AM, Anonymous Anonymous said...

The applicant should have abandoned the application rather than risk this result. The marginal benefit of a second registration is slim in comparison. Lesson learned.

At 12:04 PM, Anonymous Anonymous said...

I too agree with the sua sponte cancellation of the earlier registration of CHURRASCOS because the inconsistency between the continued existence of the prior standard character registration with the refused application of virtually the same mark is highly unsettling both to the public and the applicant/registrant in this case. While Cordua's earlier registration was not canceled, it might as well have been because it is pretty much rendered worthless in this decision.

At 1:34 PM, Anonymous Anonymous said...

(1) The Board must wait for Applicant's appeal time to run and, if filed, any Court decision on an appeal. The Board could be reversed.

(2) Applicant's registration is not before the Board so the Board can take no action with regard to it.

At 9:19 AM, Anonymous Elizabeth King said...

Being a lawyer for a client in this situation certainly opens one's eyes to the power of social media to shape the opinions of other lawyers even when those lawyers lack knowledge of salient facts on legal matters which solely turn on fact questions. The comments above with the exception of the last one by Anonymous demonstrate an assumption without awareness that CHURRASCOS is generic for a full service, non-churrascaria restaurant. The mark, famous in the Houston area, and in use for 30 years, and registered by the USPTO three times, identifies a feature of the menu. It does not identify the primary focus of the restaurant. Genericness is NOT determined based on what one could possibly be doing at a later point in time. If it were, then Apple for computers would be refused as generic since they might later on sell fruit. It is determined based on the recitation of services as illuminated by the applicant's actual use. This is standard CAFC case law: Hotels, Reed Elsevier, SteelBuilding,, etc. all involved applications for stated services where the Court looked at the applicant's use to determine if the mark was being used in a generic or merely descriptive fashion. It is also why trademark rights are not static. They are always subject to challenge under a change in circumstances which include the owner's use. That does not make a descriptive mark generic for services.

Specifically to the questions above, (which frankly are irrelevant to the correctness of this ruling), perhaps the Director can sua sponte cancel a registration. But the only case on point The Last Best Beef, LLC v. Dudas, 506 F.3d 333, 335 (4th Cir. 2007) deals with a registration that issued after Congress enacted a law barring registration of a certain phrase “The Last Best Place” coined by the Montana writer William Kittredge. In this case a specific section of the federal law precluded the use of federal funds to register or issue trademarks on that phrase. The PTO clawed back the registration based on legal error. In this case, the legal error is in failing to analyze the relevants FACTS on a genericness question. Because had the Office done so, it would have ascertained that CHURRASCOS is not a churrascaria and would have analyzed the case under the correct lens.


Post a Comment

<< Home