In re Bayou Grande Coffee Roasting Co.

Authored by: Jeremy J. Gustrowsky

The Federal Circuit recently reversed a decision by the Trademark Trial and Appeal Board (TTAB) that had refused to register the mark “KAHWA” for cafés and coffee shops. The case revolved around whether “KAHWA” was too generic or merely descriptive to function as a trademark, given its meaning as a type of Kashmiri green tea and an alleged translation as “coffee” in Arabic.

Bayou Grande Coffee Roasting Company, which operates a chain of coffee shops in Florida under the name KAHWA, sought to register the mark for its café and coffee shop services. The Patent and Trademark Office (PTO) initially refused registration, arguing that “KAHWA” was either generic or merely descriptive because it referred to a type of tea and, according to the examiner, meant “coffee” in Arabic. The Board ultimately focused on the tea meaning, finding that since cafés and coffee shops serve tea, “KAHWA” was generic or descriptive for those services.

On appeal, the Federal Circuit disagreed with the Board’s findings. The court pointed out that there was no evidence in the record showing that any café or coffee shop in the United States actually sells kahwa, the specific Kashmiri green tea. Without such evidence, the court found that “KAHWA” could not be considered generic or merely descriptive for cafés and coffee shops, as there was no proof that selling kahwa was a characteristic or key aspect of those services.

The court also addressed the PTO’s reliance on the doctrine of foreign equivalents, which allows foreign words to be translated into English to determine their trademark significance. Here, the court found that “KAHWA” has a well-established alternative meaning in English (the Kashmiri tea), making translation unnecessary. As a result, the doctrine did not apply, and the PTO could not refuse registration on that basis.

In summary, the Federal Circuit’s decision clears the way for Bayou Grande Coffee Roasting Company to register “KAHWA” as a trademark for its cafés and coffee shops. The ruling highlights the importance of actual marketplace evidence when assessing whether a term is generic or descriptive for particular services.