In re Cordua Restaurants, Inc.

United States Court of Appeals for the Federal Circuit · 2016 · Property

PropertyTrademarkGenericnessRestaurant servicesgeneric termsLanham Acttrademark registrationrestaurant services

Facts

Cordua operates restaurants branded as Churrascos and already owned a prior Principal Register registration for the word mark CHURRASCOS for restaurant and bar services and catering. It later applied to register a stylized form of CHURRASCOS for “Bar and restaurant services; Catering.” The examiner refused registration as descriptive and generic, concluding that “churrascos” refers to beef or grilled meat and identifies a key characteristic of the restaurant services. The TTAB affirmed, finding the stylized mark generic for restaurant services, and Cordua appealed.

Issue

Whether the TTAB properly refused registration of the stylized form of CHURRASCOS because the mark is generic for restaurant services. The court also considered whether Cordua’s prior registration, alleged incontestability, and the mark’s stylization altered that result.

Rule

A mark is generic if, under the Ginn test, the genus of goods or services is identified and the relevant public primarily understands the term to refer to that genus. The inquiry must be based on the identification of goods or services in the application, not the applicant’s particular business. A term can be generic for services if the relevant public understands it to name a key aspect or subcategory of those services, and a generic word remains unregistrable in stylized form unless the design creates a separate commercial impression or the stylization itself has acquired distinctiveness.

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One of 10 multiple-choice questions for this case. Pick an answer to see why.

Lakefront Table LLC files an application to register SMOKEHOUSES in ordinary block lettering for “restaurant services” in Chicago, Illinois. In prosecution, the company argues the Patent and Trademark Office must evaluate the term only as used in its own upscale bistro, which serves many dishes besides smoked meat.

What is the strongest response under the governing rule?

Explanation. The genericness inquiry begins by identifying the genus of goods or services at issue, and that genus is determined from the identification in the application, not from the applicant’s actual business model, channels of trade, or particular offerings. Thus, where the application says “restaurant services,” the PTO evaluates genericness against restaurant services generally. The applicant cannot narrow the genus by pointing to its own specific restaurant concept.