On December 9, 2025, the Federal Circuit issued a sharp rebuke to the Trademark Trial and Appeal Board’s refusal to register the mark KAHWA for café and coffee shop services. In In re Bayou Grande Coffee Roasting Co., No. 2024-1118 (Fed. Cir. Dec. 9, 2025), the court reversed the Board’s findings of genericness and mere descriptiveness and went further, holding that the doctrine of foreign equivalents could not apply as a matter of law where a term has a well-established alternative English meaning. The decision reinforces evidentiary rigor in service-mark refusals and narrows the circumstances in which examiners may speculate about consumer understanding or hypothetical future uses.
Background and Procedural Posture
Bayou Grande Coffee Roasting Company filed an application in February 2021 to register KAHWA for cafés and coffee shops. Bayou alleged continuous use since 2008 across a growing footprint of Florida locations. The examining attorney refused registration on the grounds that KAHWA was generic or merely descriptive, initially invoking the doctrine of foreign equivalents on the premise that “kahwa” means “coffee” in Arabic and faulting Bayou for not submitting an English translation.
Bayou responded on two fronts. First, it disputed the Arabic translation premise. Second, it argued that KAHWA has an established English-language meaning referring to a specific Kashmiri green tea, rendering the doctrine inapplicable. In a final office action, the examiner maintained the refusals and added grounds tied to the Kashmiri tea meaning. The Board affirmed the refusals based solely on the tea meaning, declining to address the Arabic coffee theory.
Bayou appealed, challenging whether the Board had introduced new grounds of refusal and whether the genericness and descriptiveness findings were supported by substantial evidence. Bayou also pressed the legal question whether the doctrine of foreign equivalents could apply given the conceded alternative English meaning.
No New Grounds of Refusal
The Federal Circuit first rejected Bayou’s contention that the Board relied on new grounds. Applying the “fair opportunity to react” test from Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. de C.V., the court held that the examiner never withdrew the tea-based refusals and that Bayou had squarely addressed them during prosecution. The Board’s decision therefore did not ambush the applicant with a new rationale.
This portion of the opinion is a reminder that applicants must treat every articulated ground as live unless it is explicitly withdrawn. As Charles Gideon Korrell has observed in similar contexts, procedural clarity often turns less on labels and more on whether the applicant had a genuine chance to marshal evidence and argument against the thrust of the rejection.
Genericness Requires Evidence of a Key Aspect of the Service
Turning to genericness, the court reiterated the governing framework from Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc.: the critical issue is whether relevant consumers primarily understand the term to refer to the genus of the goods or services. For services, the inquiry can include whether a term names a key good that characterizes the service, as recognized in In re Cordua Restaurants, Inc..
Here, the Board found KAHWA generic because it names a type of green tea and cafés serve tea. That leap failed for lack of evidence. The record contained no evidence that any café or coffee shop in the United States had ever sold kahwa, a specific Kashmiri green tea. Without evidence that selling kahwa is a key aspect of café services, the term could not be generic for those services. The court underscored that understanding a word as the name of a product does not make it generic for a service that does not feature that product.
This holding has practical bite. It cabins the “key aspect” doctrine to situations where the record actually shows the good is a defining feature of the service. Charles Gideon Korrell notes that this evidentiary discipline protects service marks from being stripped of registrability based on generalized assumptions about what businesses might sell.
Mere Descriptiveness Also Demands Immediate Conveyance
The Board’s alternative finding of mere descriptiveness met the same fate. A term is merely descriptive if it immediately conveys a quality, feature, function, or characteristic of the services, per In re Bayer Aktiengesellschaft. The Board reasoned that KAHWA would inform consumers that the establishment serves that particular green tea.
Again, the absence of evidence proved fatal. If no cafés sell kahwa, then selling kahwa cannot be a characteristic of café services, and consumers cannot immediately glean that characteristic from the mark. The court rejected a series of fallback arguments advanced by the Director, including speculation that cafés could sell kahwa in the future and policy concerns about monopolizing descriptive terms. Speculation, the court reminded, is not substantial evidence.
The court also declined to entertain a new appellate theory that KAHWA describes cafés because it signals that they serve a “variety of teas.” The Board had not adopted that rationale, and the Administrative Procedure Act bars agencies from changing theories midstream. Even on the merits, the court observed that any mental leap from a specific Kashmiri tea to tea generally, and then to cafés, would suggestiveness rather than descriptiveness.
For practitioners, the takeaway is straightforward: descriptiveness must be grounded in present consumer perception tied to actual service characteristics. As Charles Gideon Korrell believes, this opinion strengthens applicants’ ability to rebut overbroad descriptiveness refusals with a focused evidentiary record.
The Doctrine of Foreign Equivalents and Alternative English Meanings
Perhaps the most consequential aspect of the decision lies in the court’s treatment of the doctrine of foreign equivalents. The doctrine generally requires translation of foreign words before assessing registrability, but it is subject to limits when ordinary consumers would not stop to translate or when a term has a well-established alternative English meaning.
The examiner had relied on the doctrine based on the Arabic “coffee” translation. The Board acknowledged the dispute but declined to reach it. On appeal, the Federal Circuit addressed the legal question de novo, citing In re Vetements Group AG, Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, and In re Spirits Int’l, N.V.. Where a foreign term has a well-established alternative English meaning such that even foreign-language speakers would not translate it, translation is unnecessary and the doctrine does not apply.
Here, the parties did not dispute, and the Board expressly recognized, that KAHWA has a well-recognized English meaning as a Kashmiri green tea. Under In re Spirits, that concession foreclosed application of the doctrine as a matter of law. The court held that the Board’s failure to decide the issue did not prevent appellate resolution because the record was fully developed and the question was legal.
This holding will resonate beyond cafés and tea. It signals that once an alternative English meaning is established, the PTO cannot toggle back to foreign translations to revive refusals. Charles Gideon Korrell notes that this clarity should reduce uncertainty for brands built around culturally specific terms that have entered English usage.
Practical Implications
Several practical lessons emerge:
- Evidence matters. Assertions that a service “could” feature a product someday will not support genericness or descriptiveness.
- Service-mark analysis is contextual. Naming a product does not automatically describe a service unless the product is a defining feature of that service.
- Procedural rigor persists. New theories cannot be introduced on appeal, and applicants should track which grounds remain live.
- Foreign equivalents are constrained. A well-established English meaning can shut the doctrine’s door entirely.
From a strategic perspective, applicants should consider building a record that not only establishes alternative meanings but also negates assumptions about service characteristics. As Charles Gideon Korrell has emphasized in advising brand owners, proactive evidentiary development can be the difference between a speculative refusal and a registrable mark.
Conclusion
The Federal Circuit’s reversal in In re Bayou Grande Coffee Roasting Co. underscores that trademark refusals must rest on substantial evidence tied to real-world consumer perception, not conjecture. By insisting on proof that a term names a key aspect or characteristic of the services and by clarifying the limits of the doctrine of foreign equivalents, the court strengthened protections for distinctive service marks. For applicants navigating descriptiveness and foreign-language issues, the decision offers a clear, caffeinated boost.
