Federal Circuit Reverses Trademark Board's Rejection of KAHWA

The Federal Circuit’s recent reversal of the Trademark Trial and Appeal Board’s refusal to register the mark KAHWA for cafés and coffee shops has reignited discussions about the complexities of trademark law, particularly the doctrine of foreign equivalents and the risk of consumer confusion. The case, involving Bayou Grande Coffee Roasting Company, underscores how businesses must navigate the delicate balance between linguistic nuance and brand protection.

In February 2021, Bayou applied for a federal trademark registration for KAHWA, arguing the term was neither generic nor descriptive. The Examining Attorney rejected the application, asserting that KAHWA translates to “coffee” in Arabic under the doctrine of foreign equivalents - a principle that allows trademark offices to consider non-English meanings when evaluating marks. Bayou countered that the term’s Latin script, multiple definitions, and limited Arabic-speaking population in the U.S. invalidated the claim.

The Examining Attorney maintained its stance, but the Board’s initial refusal hinged on an alternative interpretation: KAHWA was deemed descriptive of green tea, a product often sold in cafés. The Board argued that green tea’s presence in U.S. markets made the mark inherently descriptive.

The Federal Circuit overturned the Board’s decision, emphasizing that the evidence supporting KAHWA as a green-tea term was insufficient. The court ruled that even if some consumers associated the mark with green tea, the connection to café services required a “mental leap,” classifying KAHWA as suggestive rather than descriptive or generic.

The court also rejected the Board’s reliance on the foreign equivalents doctrine, noting that KA,WA had an established alternative meaning for green tea. This highlighted a critical flaw in the Board’s approach: failing to distinguish between a mark’s potential foreign meanings and its relevance to the goods or services it represents.

For businesses, the decision serves as a reminder that trademark law is not a one-size-fits-all framework. Success requires a nuanced understanding of language, consumer behavior, and the evolving legal landscape. Monitoring competitors and assessing linguistic nuances is essential to avoid marks that could confuse customers or dilute brand identity.

The case also intersects with a pending Supreme Court review of a similar dispute involving the mark VETEMENTS. There, the Federal Circuit’s rigid application of the foreign equivalents doctrine has drawn scrutiny. If the Supreme Court rules that established alternative meanings can override foreign equivalents, it could reshape how trademark offices evaluate global brands.

The ruling underscores the importance of strategic trademark management in an increasingly interconnected market. Businesses must remain vigilant in assessing potential conflicts and ensuring their marks align with both linguistic and commercial realities.