The Federal Circuit Reverses Board’s Decision Denying Trademark Registration of KAHWA for Coffee Shops

By Gabriela Berigan

Bayou Grande Coffee Roasting Company (“Bayou”), operating a Florida-based coffee shop, appealed a Trademark Trial and Appeal Board’s (“Board”) refusal to register the mark KAHWA for cafés and coffee shops in International Class 043, and the Federal Circuit reversed the Board’s decision.

In February 2021, Bayou applied for a federal trademark registration for KAHWA. The Examining Attorney refused the registration claiming that KAHWA was generic, or in the alternative, descriptive because, under the doctrine of foreign equivalents, KAHWA has an Arabic translation to coffee, which was a central focus of Bayou’s applied‑for services. Bayou argued that an Arabic-speaking customer would not translate KAHWA into coffee because: (i) the mark used the Latin alphabet; (ii) multiple definitions were relevant; and (iii) only 0.3% of the U.S. population spoke Arabic, and Bayou further argued acquired distinctiveness. The Examining Attorney maintained its refusal.

Bayou appealed the Examining Attorney’s refusal, arguing that the Examining Attorney erred because KAHWA does not directly translate to coffee, is not the phonetic equivalent of direct Arabic translation, and has other meanings that the public would perceive. The Examining Attorney responded with evidence that KAHWA translates to coffee, asserting that Q and K are the phonetic equivalent, and further asserting a sufficient proportion of the U.S. population speaks Arabic. The Board affirmed but did not address whether the translation for KAHWA was coffee, and instead, found the evidence presented that KAHWA referred to green tea. Thus, the Board held that KAHWA was both generic and descriptive as green tea could be purchased throughout the U.S. and green tea is a key aspect of a café and coffee shop.

The Federal Circuit, focusing only on the KAHWA established alternative meaning of green tea, reversed the Board and held KAHWA registrable for cafes and coffee shops because: (i) the Board did not provide sufficient evidence showing KAHWA was generic or descriptive as to green tea; and (ii) even if a relevant customer interprets KAHWA as green tea, this still requires a mental leap that KAHWA provides cafes and coffee shop services, so KAHWA was suggestive. The Federal Circuit further held that the Board could not rely on the doctrine of foreign equivalents because the Board had previously admitted KAHWA had an established alternative meaning for green tea.

This decision comes shortly after Vetements Group AG (“Vetements”) petitioned the Supreme Court to review the Federal Circuit decision refusing registration for VETEMENTS for clothing under the doctrine of foreign equivalents. There, Vetements asserted that the Federal Circuit applies the doctrine of foreign equivalents in absolute manner (despite the unclear exceptions); however, in this case, the Federal Circuit asserted that the doctrine of foreign equivalents was inapplicable as KAHWA had an established alternative meaning for green tea. If the Supreme Court grants review, the Supreme Court may hold that one exception to the doctrine of foreign equivalents is evidence of an established alternative meaning. To read more about the Vetements petition, click here. Snell & Wilmer will continue to monitor the Vetements case as it develops.