IP Law Daily CHURRASCOS mark generic for restaurant services; refusal to register affirmed
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Friday, May 13, 2016

CHURRASCOS mark generic for restaurant services; refusal to register affirmed

By Mark Engstrom, J.D.

The Trademark Trial and Appeal Board did not err in refusing to register the stylized trademark CHURRASCOS for bar and restaurant services, the U.S. Court of Appeals for the Federal Circuit has ruled (In re Cordua Restaurants, Inc., May 13, 2016, Dyk, T.). Because the decision of the Board did not contain a harmful legal error, and because the Board’s finding that the mark was generic was supported by substantial evidence, the circuit court affirmed the Board’s finding that the mark was generic, as applied to restaurant services, and thus ineligible for federal trademark registration.

Trademark applicant Cordua Restaurants appealed from the final decision of the Trademark Trial and Appeal Board, which refused registration of a stylized form of Cordua’s registered mark CHURRASCOS. The Board affirmed the findings of the trademark examiner, who refused registration because “churrascos” was: (1) a generic term for a type of cooked meat and (2) a generic term for a restaurant that featured “churrasco” steaks.

In addition, the Board held that Cordua’s registration of the CHURRASCOS word mark had no bearing on whether the stylized form of CHURRASCOS was generic. The Board agreed with the trademark examiner that the stylized form of CHURRASCOS was ineligible for registration because it was merely descriptive of a restaurant that served barbecued steaks, and because Cordua had not provided sufficient evidence of acquired distinctiveness.

Prior registration of CHURRASCOS word mark. Cordua argued that the CHURRASCOS word mark had achieved incontestable status under 15 U.S.C. §1064 because the federal registration for that mark (Registration No. 3,439,231) was more than five years old at the time of the Board’s decision. In Cordua’s view, the Board’s failure to “fully consider the incontestable registration” was a reversible error.

Even if the earlier registration were incontestable, incontestability was irrelevant to the question of genericness, according to the Board. Significantly, 15 U.S.C. §1065(4) stated that “no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.” Moreover, Cordua had conceded that incontestability could not protect a mark against a challenge of genericness.

For those reasons, the court decided that the Board did not err in refusing to consider the alleged incontestability of the CHURRASCOS word mark when it evaluated the genericness of the stylized form of the mark.

The court acknowledged that the registration of a trademark on the Principal Register was prima facie evidence of the mark’s validity, even if the mark had not achieved incontestable status. It noted, however, that: (1) the current proceeding did not involve a challenge to the earlier registration of the CHURRASCOS word mark and (2) the presumption of validity of 15 U.S.C. §1057(b) did not “carry over” from a prior registration to a new application for a similar or nearly identical mark.

Genus of services. The court agreed with Cordua that a proper genericness inquiry focused on the description of the services that were identified in Cordua’s trademark application. The correct inquiry was not whether CHURRASCOS was generic as applied to Cordua’s restaurants, the court explained, but whether the term was understood by the restaurant-going public to refer to the wider genus of “restaurant services.” The Board’s suggestion that CHURRASCOS was generic as applied to Cordua’s restaurant services thus missed the point.

Nevertheless, the apparent error was harmless. In the first step of the Ginn genericness test, the Board properly determined the genus of the services at issue and concluded that the genus of those services was adequately defined by a portion of the recited services in Cordua’s application, namely “restaurant services.” Because that aspect of the Board’s decision reflected the correct approach, and because Cordua had agreed that “restaurant services” was the relevant genus, the Board’s suggestion—that CHURRASCOS was a generic term as applied to Cordua’s restaurant services—was harmless.

Genericness analysis. In it appellate brief, Cordua conceded that the word “churrasco” could be used as a noun that meant “grilled steak specially prepared in the churrasco style.” It argued, however, that the addition of an “S” at the end of CHURRASCOS made the term non-generic because “churrascos” was not the proper pluralization of the Spanish word “churrasco.” The court disagreed.

First, the trademark examiner and the TTAB both considered “churrasco” an English-language term based on English-language dictionaries that defined “churrasco” as grilled meat. Second, nothing in the record indicated that the addition of an “S” at the end of “churrasco” altered its English-language meaning. In fact, the Board had found that at least one English-language dictionary identified “churrascos” as the plural form of “churrasco.” In addition, Esquire Magazine had used that precise term—“churrascos”—to refer to “juicy, charred slabs” of tenderloin steak.

For those reasons, the court decided that substantial evidence supported the Board’s conclusion that “churrascos” was the generic term for a type of cooked meat.

Cordua also argued that “churrascos” referred to a style of grilling meat and not to restaurant services. The court noted, however, that a term could be generic for a genus of goods or services if the relevant public—in this case, the restaurant-going public—understood the term to refer to a key aspect of that genus (e.g., a key good that characterized a particular genus of retail services).

In fact, the Federal Circuit had previously held that the genericness test was not limited to a determination of whether the relevant public would use the term to describe the genus, but also whether the relevant public would understand the term to be generic. In the court’s view, any term that the relevant public understood as a reference to the relevant genus of services was “generic.”

Consequently, Cordua wrongly concluded that a specialty dish such as “churrascos” did not identify the genus of “restaurant services.” According to the court, if the relevant public understood a term denoting a specialty dish as a reference to a key aspect of restaurant services, that term would be generic for restaurant services.

In this case, the record contained substantial evidence that the word “churrascos” referred to a key aspect of a class of restaurants because restaurants that served churrasco were commonly referred to as “churrasco restaurants,” the court explained. The court thus found no error in that part of the Board’s genericness analysis.

Finally, Cordua argued that, even if the word “churrascos” was a generic term for “churrasco” restaurants (i.e., “churrascarias”), it was not a generic term for allrestaurant services. In the court’s view, however, a particular term was generic if the relevant public understood that term as a reference to part of the claimed genus of goods or services—even if the public did not understand the term to refer to the broad genus as a whole. The term “pizzeria,” for example, would be generic for restaurant services even though the public understood that term as a reference to a particular type of restaurant, rather than to all restaurants.

Because Cordua sought to register the stylized form of CHURRASCOS in connection with the genus of all restaurant services, and thus sought broad protection for its trademark, it forced the PTO to direct its genericness inquiry to the broad category of “restaurants” generally, not to the narrowed category of “churrascarias.”

Stylization of mark. The Board found that the display of the applicant’s mark, which primarily comprised stylized letters, did not make the applied-for matter registrable because the stylized display did not create a commercial impression that was separate and distinct from the impression that was made by the generic term.

On appeal, Cordua described its proposed mark as “highly stylized … using a unique and arbitrary font,” but it did not argue that the mark’s stylization created a separate impression. Nor did it argue that the “graphic quality” of the stylized form of CHURRASCOS had acquired distinctiveness. Cordua merely argued that the registered word mark had acquired distinctiveness. For those reasons, the court found that the stylized nature of the CHURRASCOS mark could not confer trademark eligibility.

The case is No. 2015-1432.

Attorneys: Elizabeth Wood King, Robert James McAughan Jr., and Albert Berton Deaver Jr. (Sutton McAughan Deaver PLLC) for Cordua Restaurants, Inc. Thomas L. Casagrande, Thomas W. Krause, Christina Hieber, and Mary Beth Walker, U.S. Patent and Trademark Office, for PTO Director Michelle K. Lee. Charles Saron Knobloch (Arnold, Knobloch & Saunders, LLP) for amicus curiae Houston Intellectual Property Law Association.

Companies: Cordua Restaurants, Inc.

MainStory: TopStory Trademark FedCirNews

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