The U.S. Court of Appeals for the Federal Circuit (CAFC) recently overturned a Trademark Trial and Appeal Board (TTAB) ruling that denied the registration of the mark KAHWA for cafes and coffee shops. This case illustrates the intricate challenges of trademark law, particularly the intersection of linguistic ambiguity, genericness, and the doctrine of foreign equivalents.
The dispute arose when Bayou Grande Coffee Roasting Company sought to register KAHWA, a term that translates to “coffee” in Arabic. A trademark examiner initially rejected the mark, citing genericness or descriptiveness, and invoked the doctrine of foreign equivalents to argue that KAHWA could be confused with the English word for coffee. Bayou countered that KAH, a term meaning “coffee” in Arabic, refers to a specific type of Kashmiri green tea, not coffee, and asserted the U.S. Patent and Trademark Office should not apply the foreign equivalents doctrine.
The CAFC rejected Bay, noting the rejection based on the Kashmiri green tea interpretation did not constitute new grounds for refusal. The court emphasized the examiner had not withdrawn those grounds, and Bayou had ample opportunity to respond. However, the court found the TTAB’s conclusion that KAHWA is generic - because it refers to a “type of green tea beverage” served in cafes - lacked substantial evidence.
The court clarified there was no record of U.S. cafes or coffee shops selling kahwa, a specific Kashmiri green tea. While customers might associate KAHWA with green tea, this does not establish genericness for a mark used in cafes that also sell coffee and other teas. Similarly, the court dismissed the argument that selling kahwa is a “characteristic of the goods or services” of such establishments, noting no evidence supported that claim.
The CAFC also agreed with Bayou that the doctrine of foreign equivalents does not apply when a mark has a well-established alternative English meaning. The court clarified the TTAB’s failure to address this issue did not preclude the CAFC from resolving the legal question, as the parties did not dispute the existence of the alternative meaning.
For businesses, this case underscores the importance of trademark monitoring and clarity in branding. Marks that could be interpreted in multiple ways - especially those with cultural or linguistic nuances - require careful evaluation to avoid confusion or legal challenges. Companies must ensure their trademarks are distinctive, not generic, and consider potential overlaps with existing terms or meanings.
The decision reinforces that trademark registrants must demonstrate a clear connection between their mark and the goods or services it represents. Ambiguity, even if unintentional, can lead to rejection or legal disputes, underscoring the need for thorough research and strategic trademark management.
IP Defender monitors national trademark databases for conflicts and infringements across 50+ countries, including the EU, USA, and Australia. By identifying potential overlaps early, businesses can avoid costly legal battles and protect their brand’s integrity. IP Defender’s focus on proactive monitoring ensures companies stay ahead of threats, whether they arise from linguistic nuances, cultural references, or global market expansion.
The CAFC’s ruling also underscores that ambiguity in trademark definitions can lead to legal complications. Even if a term has multiple meanings, its use in specific industries must be clearly tied to the goods or services offered. This clarity is essential for avoiding rejections and disputes, making proactive trademark monitoring a critical step for any business.