“CHURRASCOS” determined generic for restaurant services – earlier registration have no bearing on the USPTO’s genericness analysis

Kumiko Ide | May 19, 2016

In re: Cordua Restaurants, Inc.

May 13, 2016

Before Prost, Dyk, Stoll.  Opinion by Dyk.

Summary

Appellant Cordua Restaurants, Inc. (Cordua) applied to register a stylized word “CHURRASCOS” for “Bar and restaurant services; Catering.”  Although Cordua had prior registration for the standard character mark “CHURRASCOS” for the same services, that the mark was registered in the Principal Register had no bearing on the USPTO’s determination of whether the stylized form of “CHURRASCOS” was generic.  In addition, even if the public does not understand the term to refer to the broad genus of restaurant services as a whole, the term is still generic, as the relevant public understands the term to refer to a type of restaurant within the broad genus of restaurant services.  The U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Trademark Trial and Appeal Board (TTAB), finding the mark to be generic, and ineligible for registration.

Cordua Restaurants, Inc.(以下、「Cordua社」)のCHURRASCOSデザイン文字商標出願は、CHURRASCOSという言葉が、レストランサービスについて使用された場合、一般用語であるため、登録はできないとして拒絶された。Cordua社は、先登録として、標準文字のCHURRASOCOS商標登録を有しており、この先登録が存在するため、デザイン文字出願の方も登録されるべきと主張したものの、CAFCはこれを受け付けなかった。また、CHURRASCOSという言葉が、レストランサービス全体において一般用語として認識されていない場合でも、当該者はその言葉を、レストランサービスという大きな括り中のレストランの一種類であると理解しているため、CHURRASCOSは一般用語である。

Discussion

Cordua applied for registration of the service mark “CHURRASCOS” (standard character mark), and obtained U.S. Trademark Registration No. 3,439,321 on the Principal Register in 2008 for use in connection with “restaurant and bar services; catering.”  In 2011, Cordua applied to register the stylized form of “CHURRASCOS” (below) (U.S. Trademark Application Serial No. 85/214,191) for use in connection with “Bar and restaurant services; Catering.”

 

 

 

 

The examining attorney rejected the Application for the stylized for of “CHURRASCOS” as merely descriptive and on the basis that “the applied-for mark is generic for applicant’s services,” barring registration under Lanham Act § 2(e)(1) (15 U.S.C. § 1052(e)(1)), and subsequently issued a final rejection on the basis of descriptiveness and genericness.

Cordua appealed to the Board, and the Board affirmed the examining attorney’s refusal that “‘churrascos’ is a generic term for a type of cooked meat” and “a generic term for a restaurant featuring churrasco steaks.”  The Board also held that the earlier registration of the standard character mark “CHURRASCOS” had no bearing on the USPTO’s determination of whether the stylized form of “CHURRASCOS” was generic.  Finally, the Board agreed with the examining attorney that “CHURRASCOS” was not registrable because the mark is merely descriptive of a restaurant serving barbecued steaks, and because Cordua had not provided any evidence of acquired distinctiveness.  Cordua appealed to the CAFC.

A generic term is incapable of indicating source, and thus can never attain trademark status.  In determining whether a term is generic, a two-step test as utilized in H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986) is used, which inquires: (1) what is the genus of goods or services at issue; and (2) 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 TTAB failed to fully consider the fact that the word mark “CHURRASCOS” had achieved incontestable status under Lanham Act § 14 (15 U.S.C. § 1064) at the time of appeal to the TTAB.  The CAFC rejected this argument, stating that incontestability is irrelevant to the question of genericness, and that “incontestability cannot protect a mark against a challenge of genericness.”

Cordua also argued that under Lanham Act § 7 (15 U.S.C. § 1057(b)), registration on the Principal Register is prima facie evidence of a mark’s validity.  The CAFC also rejected this argument, stating that this proceeding does not involve a challenge to the “CHURRASCOS” word mark registration, and the presumption of validity “does not carry over from registration of the older mark to a new application for registration of another mark that happens to be similar (or even nearly identical).”

Further, Cordua argued that the Board failed to apply the Ginn test correctly by focusing improperly on Cordua’s own services, when it should have been focusing on the wider genus of restaurant services identified in the application.  The CAFC agreed that the Board erred by focusing on whether “churrascos” is generic as applied to Cordua’s own services.  However, the CAFC found this error to be harmless, as the Board properly identified the genus of the services at issue to be “restaurant services.”

As to the question of whether the term “churrascos” is generic for restaurant services generally, Cordua conceded that the term “churrasco” is a word in Spanish and Portuguese referring to barbecue, but contended that the addition of the “S” at the end of “CHURRASCOS”  makes the term non-generic, because “churrascos” is not the proper pluralization of “churrasco” in Spanish.  However, the examining attorney and the Board found “churrasco” used in the English language to refer to grilled meat, with evidence provided in the form of three English-language dictionaries defining the term “churrasco” as grilled meat.  As the term “churrasco” is an English-language term, the CAFC found that addition of “S” at the end of “churrasco” does not alter the meaning of the term beyond making the word plural.

Cordua then argued that “churrascos” does not refer to restaurant services, but to a style of grilling meat, and therefore, the term is not generic.  The CAFC held “[i]f 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 restaurant services.”  Further, CAFC found that there was substantial evidence in the record in form of articles that referred to “churrasco restaurant” as a type of restaurant.  The CAFC therefore found no error in the Board’s genericness analysis.

Cordua argued that even if “churrascos” is generic as to “churrasco restaurants,” it is not generic as to all restaurant services.  The CAFC stated that even if the public does not understand the term to refer to the broad genus as a whole, the term is still generic “if the relevant public understands the term to refer to part of the claimed genus of goods or services.”  CAFC cautioned that this is not to suggest that the term “churrascos” is necessarily generic as to any and all restaurant services.  For example, if an applicant was seeking registration of the mark “CHURRASCOS” in connection with a narrower sub-genre of restaurant like vegetarian or sushi restaurants, then the result could have been different.  But here, Cordua sought registration of the stylized form of “CHURRASCOS” for the broad category of restaurants generally, and thus the USPTO was obliged to direct its genericness inquiry to this broad category.

Finally, the CAFC ruled that the stylization of the mark “CHURRASCOS” cannot render the mark eligible for registration.

The CAFC therefore affirmed the Board’s decision that the mark is generic.

Takeaway

  • A previously registered similar or identical mark is not evidence to support registrability of a new application, as the USPTO examines each application for compliance individually.
  • If the relevant public would understand a term to refer to a part of the claimed genus of goods or services, the term is generic, even if the term does not refer to the broad genus as a whole.

Full Opinion

 

 

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