IP Law Daily, TRADEMARK—Fed. Cir.: Genericness and mere descriptiveness reversed in coffee shop service mark dispute, (Dec 9, 2025)

By Kevin M. Finson, J.D.

The mark KAHWA was not generic or descriptive when used with cafes or coffee shops for referring to a type of green tea because there was no evidence that peculiar type of tea had ever been sold in the United States at all, meaning it could not be a regular part of the services of cafes or coffee shops.

The TTAB erred in finding the mark KAHWA generic and merely descriptive for cafes and coffee shops, the U.S. Court of Appeals for the Federal Circuit has held. The mark referred to a variety of Kashmiri green tea not served in the United States, so its sale could not be a key aspect of or characteristic of cafes and coffee shops in this country ( In Re Bayou Grande Coffee Roasting Co. , No. 24-1118 (Fed. Cir. Dec. 9, 2025)).

Bayou Grande Coffee Roasting Co. (Bayou) sought registration on the Principal Register of the mark KAHWA for cafes and coffee shops. The examining attorney refused registration on the grounds that the mark was generic, merely descriptive, and under the doctrine of foreign equivalents because KAHWA allegedly means “coffee” in Arabic and Bayou failed to submit an English translation. Bayou instead argued that the word had an English meaning, specifically a variety of Kashmiri green tea. The examining attorney refused registration under the tea meaning as well. Bayou appealed, and the Trademark Trial and Appeal Board (TTAB) affirmed the refusals based on the tea meaning and declined to reach the Arabic coffee meaning. Bayou appealed to the Federal Circuit.

New grounds. Bayou argued that the refusals based on the tea meaning were new grounds of refusal to which it had not had a proper opportunity to respond. The court found that the examiner had maintained refusals on both the coffee and tea grounds since the beginning and that Bayou had a fair opportunity to respond to those refusals before the board.

Genericness. The board had found that KAHWA was a generic description for a type of green tea beverage, and that because cafes and coffee shops serve green tea beverages, the mark was generic for those services. The court found that these findings lacked substantial evidence because it was undisputed that there was no evidence whatsoever that kahwa tea had ever been served in so much as a single café or coffee shop in the United States. Without evidence that kahwa, as opposed to other green tea beverages, had ever been served in cafes or coffee shops that word could not be generic for cafes and coffee shops.

Mere descriptiveness. For similar reasons, the court found that the mark was not merely descriptive. The name of a tea which was not served in the United States at all was not descriptive for cafes and coffee shops because the serving of kahwa was not a characteristic of cafes and coffee shops.

Doctrine of foreign equivalents. While the parties disagreed about whether kahwa was the Arabic word for coffee, the court noted that the parties did not dispute that the word kahwa had a well-established alternative English meaning; specifically, the variety of Kashmiri green tea discussed above. Accordingly, the doctrine of foreign equivalents was inapplicable as a matter of law and Bayou was not required to provide a translation.

The court reversed the decision of the board.

The Case is No. 24-1118.

Judge: Moore, K.

Attorneys: Andriy Lytvyn (Hill Ward Henderson, PA) for Bayou Grande Coffee Roasting Co. Michael Chajon, U.S. Patent and Trademark Office, for John A. Squires.

Companies: Bayou Grande Coffee Roasting Co.

Cases: Trademark FedCirNews