Trademark Owner Wins at CAFC with Reversal of TTAB Refusal to Register KAHWA for Cafes

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today authored by Chief Judge Moore reversing the Trademark Trial and Appeal Board’s (TTAB’s) affirmance of a refusal to register the mark KAHWA for cafes and coffee shops.

A trademark examiner issued a non-final office action to Bayou Grande Coffee Roasting Company in February 2021, refusing registration for KAHWA, which the examiner claimed means coffee in Arabic,  based on genericness or descriptiveness of the mark. The examiner relied on the doctrine of foreign equivalents for refusal, as well as Bayou’s failure to submit an English translation with the mark to show that it means coffee. However, Bayou argued that KAHWA does not mean coffee, but a “specific type of traditional Kashmiri green tea from Central Asia.” The examiner ultimately upheld the denial based on both meanings, and the TTAB eventually affirmed.

On appeal to the CAFC, Bayou argued that the refusals based on KAHWA meaning Kashmiri green tea constituted new grounds of refusal and were unsupported by substantial evidence, as well as that the U.S. Patent and Trademark Office (USPTO) “should be precluded from relying on the doctrine of foreign equivalents.”

The CAFC rejected Bayou’s argument that the Kashmiri green tea rejections constituted new grounds of refusal because the examiner essentially withdrew them and the TTAB reinstated them. The opinion noted that Bayou responded to the examiner on these grounds and found that the examiner never withdrew them, so Bayou “had a fair opportunity to respond to the examiner’s refusals based on the Kashmiri green tea meaning.”

With respect to genericness, however, the CAFC found the Board’s holding that KAHWA is generic “because it refers to a key aspect of cafés and coffee shops,” specifically, “the generic description for a type of green tea beverage,” which cafés and coffee shops serve, was not supported by substantial evidence.

“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,” wrote the CAFC. “This is undisputed.”

Thus, the fact that customers may understand kahwa to mean a type of kashmiri green tea does not establish genericness of the mark for cafes and coffee shops selling coffee and a variety of teas, said the court.

And regarding mere descriptiveness, the CAFC said there was no substantial evidence provided that “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.”

Finally, as to Bayou’s argument that the doctrine of foreign equivalents should not apply here because “KAHWA has a well-established alternative English meaning” (Kashmiri green tea), the CAFC also agreed with Bayou. The USPTO Director argued the CAFC should not consider the doctrine of foreign equivalents argument because the TTAB had not addressed it, but the opinion explained:

“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…. 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.” [citations omitted]

The CAFC therefore reversed the Board’s refusal to register the mark.

Editor’s note: This article was updated to clarify that the trademark examiner claimed KAHWA means coffee in Arabic. 

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