The U.S. Court of Appeals for the Federal Circuit recently reversed a Trademark Trial & Appeal Board ruling that had denied a trademark application for the mark KAHWA, which Bayou Grande Coffee Roasting Co. sought to register for cafés and coffee shops. The court determined that the doctrine of foreign equivalents - used to evaluate whether a foreign mark is generic or descriptive in English - did not apply because KAHWA possesses a distinct and well-established meaning in English.
Bayou submitted a trademark application for KAHWA in 2021, asserting use since 2008. The U.S. Patent and Trademark Office (USPTO) rejected the mark, arguing it was generic or descriptive under the doctrine of foreign equivalents. The agency cited KAH,WA’s meaning as “coffee” in Arabic. Bayou contended that the term refers to a specific type of Kashmiri green tea, a product not typically sold in U.S. cafés or coffee shops.
The USPTO initially upheld the rejection, and the Trademark Board of Appeal affirmed the decision, emphasizing the Kashmiri green tea interpretation. However, the Federal Circuit overturned this ruling, concluding that the Board lacked sufficient evidence to support its findings.
The court highlighted that the Board’s reliance on the Kashmiri green tea meaning was flawed. It noted that no U.S. café or coffee shop sells kahwa, rendering the claim of genericness unsupported. The court also rejected the Board’s assertion that KAHWA was merely descriptive, arguing that the term does not inherently describe a product or feature of café services.
A central issue was the application of the doctrine of foreign equivalents. Under this doctrine, a foreign mark may be assessed for genericness or descriptiveness by translating it into English. However, the court ruled that translation was unnecessary here because KAHWA already has a well-established English meaning - Kashmiri green tea. This meaning rendered the Arabic translation irrelevant, invalidating the foreign equivalents argument.
The case underscores the importance of trademark vigilance and understanding a mark’s alternative meanings. For businesses, this ruling highlights that a mark’s descriptiveness or genericness depends on its actual use and perception in the market, not solely on foreign language equivalents.
Companies seeking trademark protection must ensure their marks are neither generic nor descriptive in the target market. This includes verifying that the mark does not inadvertently describe a product, service, or characteristic commonly associated with the industry.
The decision reinforces the need for clear evidence in trademark disputes. Courts will scrutinize whether a mark’s meaning is widely recognized or merely speculative. Businesses should document how their marks are used and perceived to strengthen their cases.
Trademark confusability remains a central concern for businesses. While the KAHWA case focused on descriptiveness, similar principles apply to likelihood of confusion. Marks that resemble existing trademarks or convey misleading associations may face rejection.
To mitigate risks, companies should conduct thorough trademark searches and consider registering marks in relevant classes. Proactive monitoring of potential conflicts can prevent costly legal battles and protect brand integrity.
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This case serves as a reminder that trademark law is nuanced, requiring a balance between protecting intellectual property and ensuring fair competition. For businesses, clarity, evidence, and strategic planning are essential in navigating these complexities.