The Federal Circuit recently provided additional guidance concerning whether an applied-for mark is generic in In re Cordua Restaurants, Inc., (May 13, 2016).  This case stemmed from the United States Patent and Trademark Office’s refusal to register the trademark CHURRASCOS (Stylized) in connection with “bar and restaurant services; catering.”  Applicant Cordua Restaurants, LP (“Cordua”) has long owned and operated a chain of restaurants branded as “CHURRASCOS.” Those restaurants serve a variety of South American dishes, including grilled meats.  Indeed, the CHURRASCOS menu describes chargrilled “Churrasco Steak” as “our signature.”  In or around 2008, Cordua obtained U.S. Trademark Registration No. 3,439,321 on the Principal Trademark Register for mark CHURRASCOS (in standard character format) for use of the word in connection with “restaurant and bar services; catering.” On January 10, 2011, the Applicant filed U.S. Trademark Application Serial No. 85/214,191 for a stylized version of the mark


for the nearly identical services “bar and restaurant services; catering.”

The USPTO rejected the new application based on descriptiveness under Lanham Act § 2(e)(1) (15 U.S.C. § 1052(e)(1)), and noted that “the applied-for mark is generic for applicant’s services.” Unlike a descriptive term, which can at least acquire distinctiveness over time, a generic term can never function as a trademark and will never be entitled to any protection.

Cordua appealed to the USPTO Trademark Trial and Appeal Board (the “Board”). However, the Board affirmed the trademark examiner’s refusal to register CHURRASCOS, agreeing that it is simply the generic term for a type of cooked meat and “a generic term for a restaurant featuring churrasco steaks.”  The Board also held that Cordua’s earlier registration of the underlying CHURRASCOS word mark (the ’321 Registration) had no bearing on whether the new application was entitled to registration.

Cordua appealed the Board’s decision to the Federal Circuit, which affirmed the Board’s conclusion. The Court began its analysis by setting forth settled principles.  As the Supreme Court has stated in Park ’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 194 (1985), “[g]eneric terms are not registrable, and a registered mark may be canceled at any time on the grounds that it has become generic.”  A generic term is defined as “the common descriptive name of a class of goods or services.”  The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.

The Federal Circuit previously set forth a two-part test to determine genericness in H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989 (Fed. Cir. 1986).  “First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?” Evidence of the public’s understanding of the mark may be obtained from any competent source, such as consumer surveys, dictionaries, newspapers and other publications.

The Court first noted that Cordua’s ownership of a registration for the CHURRASCOS word mark did not preclude a finding of genericness for the stylized version of the mark. Cordua argued that the Board should have fully considered its “incontestable registration,” but the Court observed that a mark’s incontestability can always be challenged based on a genericness claim. In any event, the Court pointed out that the USPTO is required to examine all new trademark applications for compliance with each and every eligibility requirement, including non-genericness, even if the USPTO earlier “mistakenly registered a similar or identical mark suffering the same defect.”

The Court initially agreed with Cordua that the Board failed to apply the Federal Circuit’s Ginn test perfectly.  The Ginn test requires the Board to determine, first, “what is the genus of goods or services at issue?” and, second, “is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?”  Cordua argued that the Board concentrated on the wrong genus of services, focusing improperly on Cordua’s own services rather than on the wider genus identified in the ’191 Application, restaurant services. While the Court agreed that this was error – “a proper genericness inquiry focuses on the description of services set forth in the certificate of registration” – ultimately the Court considered it to be harmless error.

The question, then, was whether “churrascos” is generic for restaurant services generally. The Board’s findings that “churrascos” is a generic term for a type of grilled meat, and that “churrascos” is a generic term for a restaurant featuring churrasco steaks, was supported by substantial evidence. Cordua argued that “churrascos” (or “churrasco”) refers specifically to a style of grilling meat and not to restaurant services. However, it has long been the case that terms are deemed to be generic for a genus of goods or services if the relevant public—here, the restaurant-going public—understands the term to refer to a key aspect of that genus — e.g., a key good that characterizes a particular genus of retail services. “A generic name of goods may also be a generic name of the service of selling or designing those goods.”

In, we affirmed the Board’s determination that MATTRESS.COM is generic for “online retail store services in the field of mattresses, beds, and bedding” because the term “mattress” identified a key aspect of such services. Id. at 1361, 1364. In, we affirmed the Board’s determination that HOTELS.COM is generic for “providing information for others about temporary lodging” and “travel agency services” because the term “hotels” “names a key aspect” of such services. 573 F.3d at 1301, 1304, 1306. And in Reed Elsevier, we affirmed the Board’s determination that LAWYERS.COM is generic for “information exchange concerning the law, legal news, and legal services,” because “an integral, if not the paramount, aspect of information exchange about legal services as Reed defines it concerns identifying and helping people to select lawyers.” 482 F.3d at 1379, 1380 (alterations and internal quotation marks omitted).

Thus, the Court reasoned that if the relevant public would understand a term denoting a specialty dish to refer to a key aspect of restaurant services, then the term is generic for those restaurant services in general . In this case, there was substantial evidence that “churrascos” refers to a key aspect of a class of restaurants because those restaurants are commonly referred to as “churrasco restaurants.” For example, the evidence included a newspaper article praising a “Brazilian churrasco restaurant” notable for its “sizzling food” served “on spits straight from the fire”; a second article describing a “churrasco restaurant” as a restaurant distinguished by serving “[m]eat of all kinds”; and a third article that characterizes a “churrasco restaurant” as a kind of restaurant that serves “South American mixed grill.”

Federal Circuit held that the Board did not err in its decision refuse registration to the new, stylized version of CHURRASCOS. “Registration of the stylized form of CHURRASCOS on the Principal Register would give Cordua rights that it could enforce against all others providing restaurant services, including operators of traditional Latin American churrascarias (churrasco restaurants) that specialize in meat grilled in the churrasco style.”  It remains to be seen how long Cordua’s U.S. Trademark Registration No. 3,439,321 on the Principal Trademark Register for mark CHURRASCOS (in standard character format) will remain in effect, or whether it will be attacked by a third party based on the Court’s finding that the stylized version was generic.