United States: Federal Circuit Denies Registration Of Generic Mark

The Federal Circuit recently affirmed the TTAB's ruling in In re Cordua Restaurants LP, finding the term CHURRASCOS (stylized) to be generic for restaurant services.

What This Means to You

This case could impact applicants attempting to register a term that is a key aspect or characteristic of the class of goods or services identified in the trademark application.

Case Background

The issue on appeal in In re Cordua Restaurants LP was whether "churrascos" is generic for restaurant services generally. The question of whether a term is generic is a question of fact that must be determined by a showing of "substantial evidence." Here, the Federal Circuit pointed out that Cordua's ownership of a registration for the CHURRASCOS word mark for the same services ("restaurant and bar services; catering") did not preclude a finding of genericness for the stylized version of the mark, noting that each trademark application must be examined on its own merits. Though Cordua also tried to argue that the Board should have considered its "incontestable registration," the Federal Circuit found that incontestability (under Section 14) is not a shield against genericness.

Decision Analysis

The Federal Circuit determined that the Board did not err in its 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. Though Cordua tried to argue that "churrascos" refers to a style of grilling meat and not to restaurant services, the Federal Circuit found that the substantial evidence supported the TTAB's finding that "churrascos" refers to a "key aspect" of Cordua's restaurants. Thus, the Federal Circuit affirmed the TTAB decision, denying registration of the mark CHURRASCOS on the basis of genericness.

Takeaways

This decision should act as a warning to those inclined to push on issues of descriptiveness.  Moreover, it should caution applicants—particularly those with existing rights—to leave well enough alone.  Finally, this decision should serve as a reminder of the benefits of selecting strong, enforceable marks.

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