Technology Information Law Blog by Charles Gideon Korrell

Tag: genericness

  • In re Bayou Grande Coffee Roasting Co.: When a Beverage Name Is Neither Generic Nor Descriptive

    In re Bayou Grande Coffee Roasting Co.: When a Beverage Name Is Neither Generic Nor Descriptive

    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:

    1. Evidence matters. Assertions that a service “could” feature a product someday will not support genericness or descriptiveness.
    2. Service-mark analysis is contextual. Naming a product does not automatically describe a service unless the product is a defining feature of that service.
    3. Procedural rigor persists. New theories cannot be introduced on appeal, and applicants should track which grounds remain live.
    4. 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.

    By Charles Gideon Korrell

  • In re PT Medisafe Technologies: Federal Circuit Affirms Color Mark as Generic

    In re PT Medisafe Technologies: Federal Circuit Affirms Color Mark as Generic

    In In re PT Medisafe Technologies, No. 23-1573 (Fed. Cir. Apr. 29, 2025), the Federal Circuit affirmed the PTAB’s refusal to register a dark green color mark for medical examination gloves, concluding that the color was generic and not eligible for trademark protection.

    Background

    Medisafe, a manufacturer and distributor of medical gloves, sought to register the color dark green (Pantone 3285 c) as applied to the entire surface of chloroprene examination gloves. The USPTO examining attorney rejected the application, finding the mark generic and lacking acquired distinctiveness. The PTAB affirmed, applying a tailored version of the classic genericness test for color marks.

    Legal Standard

    The Federal Circuit confirmed that the appropriate framework for assessing the genericness of color marks is the two-step inquiry articulated in Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 WL 6522400 (T.T.A.B. Dec. 2, 2019), a slight variation on the test first set out in H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986):

    1. Identify the genus of goods or services at issue;
    2. Determine whether the relevant public primarily perceives the color as a type or category of trade dress for that genus.

    The Federal Circuit formally adopted the Milwaukee test, finding it consistent with Marvin Ginn and well-suited to evaluating color marks under trademark law principles.

    Application to Medisafe’s Mark

    The Board identified the genus as “chloroprene medical examination gloves” and rejected Medisafe’s attempt to limit the genus to sales through “authorized resellers.” Citing In re i.am.symbolic, LLC, 866 F.3d 1315 (Fed. Cir. 2017), the court affirmed that applicants cannot unilaterally redefine the genus to narrow the inquiry.

    At the second step, the Board concluded that the dark green color was so commonly used for chloroprene gloves across the industry that consumers would perceive it as a standard feature rather than an indicator of source. Supporting evidence included:

    • Screenshots showing numerous third-party sales of similarly colored gloves.
    • Customer declarations that were few, formulaic, and unpersuasive.
    • A customer survey administered by Medisafe’s counsel, deemed flawed due to leading questions, a small respondent pool (only three responses), and lack of expert oversight.

    The PTAB found the cumulative evidence sufficient to show that Medisafe’s color mark was generic.

    Statutory Interpretation: “Generic Name” and Trade Dress

    Medisafe argued that under 15 U.S.C. § 1064(3), only “generic names” could be deemed generic, and that a color mark was not a “name.” The Federal Circuit rejected this argument, relying on Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322 (Fed. Cir. 1999), which held that “generic name” should be interpreted broadly to encompass trade dress, including colors, that fails to function as a source identifier.

    Burden of Proof

    The court clarified that there is no “clear and convincing evidence” burden on the USPTO to show genericness during ex parte examination. Instead, the examining attorney must make a prima facie case, shifting the burden to the applicant to rebut it, consistent with In re Pacer Tech., 338 F.3d 1348 (Fed. Cir. 2003).

    Conclusion

    The Federal Circuit affirmed the Board’s decision, holding that substantial evidence supported the finding that Medisafe’s dark green color was generic for chloroprene medical examination gloves and therefore ineligible for registration on either the Principal or Supplemental Register. Because the mark was found to be generic, the court did not reach Medisafe’s arguments concerning acquired distinctiveness.

    Key Takeaway: For color marks, the Federal Circuit has now endorsed a tailored two-step genericness test that focuses on whether the color is perceived by consumers as a type or category of trade dress for a genus of goods. Applicants must be prepared to overcome a significant evidentiary hurdle to establish that a color functions as a source indicator, rather than as a generic feature of the product category.

    By Charles Gideon Korrell

  • Trademark Showdown: Bullshine Distillery v. Sazerac Brands and the FIREBALL Controversy

    Trademark Showdown: Bullshine Distillery v. Sazerac Brands and the FIREBALL Controversy

    On March 12, 2025, the Federal Circuit handed down its decision in Bullshine Distillery LLC v. Sazerac Brands, LLC, a case that highlights fundamental principles in trademark law, particularly the concepts of genericness and likelihood of confusion under the Lanham Act. The court affirmed the Trademark Trial and Appeal Board’s (TTAB) ruling that Sazerac’s FIREBALL trademark is not generic and that there is no likelihood of confusion between FIREBALL and Bullshine’s proposed BULLSHINE FIREBULL mark.

    Background of the Case

    The dispute arose when Bullshine Distillery applied to register the mark BULLSHINE FIREBULL for alcoholic beverages. Sazerac, the owner of the well-known FIREBALL mark for whiskey and liqueurs, opposed the registration, claiming that the mark would likely cause confusion among consumers. Bullshine responded with a counterclaim, arguing that “fireball” was a generic term for whiskey or liqueur-based drinks and, as such, should not have been registered as a trademark.

    Key Legal Issues and the Court’s Analysis

    1. Genericness – When Is a Trademark Too Common to Register?

    Bullshine’s primary argument on appeal was that “fireball” had been used generically before Sazerac registered its mark. Under trademark law, a generic term cannot function as a trademark because it refers to the general category of goods rather than a specific brand.

    However, the Federal Circuit rejected Bullshine’s argument, clarifying that the proper time to assess genericness is at the time of trademark registration, not based on historical usage.

    The Weiss Noodle Argument: “Once Generic, Always Generic”

    To support its case, Bullshine relied on the 1961 decision in Weiss Noodle Co. v. Golden Cracknell & Specialty Co., which had denied trademark registration for “haluska”, the Hungarian word for noodles. The court in Weiss Noodle held that a common name for a product can never gain trademark protection, no matter how strongly it becomes associated with a specific brand.

    Bullshine argued that if “fireball” had ever been used generically for an alcoholic drink, it should be forever barred from trademark protection under this principle.

    However, the Federal Circuit rejected this rigid approach, explaining that:

    • Genericness must be assessed at the time of registration, not based on historical use. Even if a word had once been generic, it could later acquire distinctiveness as a brand name.
    • Consumer perception controls – A term’s meaning can evolve, and what matters is how consumers understood the term when Sazerac registered it in 2001 and 2008.
    • The Lanham Act allows for cancellation of trademarks that later become generic (15 U.S.C. § 1064(3)), but it does not impose a “once generic, always generic” rule.

    Thus, because there was no strong evidence that “fireball” was understood as generic in 2001 or 2008, the court upheld Sazerac’s trademark rights. This aligns with recent Supreme Court precedent in Booking.com v. USPTO, which rejected rigid rules in favor of evaluating actual consumer perception.

    2. Likelihood of Confusion – Can FIREBALL and FIREBULL Coexist?

    Sazerac also cross-appealed, arguing that the TTAB erred in finding that BULLSHINE FIREBULL was not likely to cause confusion with FIREBALL.

    The likelihood of confusion analysis is based on the DuPont factors, which consider various elements such as the similarity of the marks, the strength of the senior mark, and the nature of the goods.

    The court found:

    • FIREBALL is commercially strong but conceptually weak – While FIREBALL is widely recognized, the term is suggestive of a product’s cinnamon flavor, making it less distinctive.
    • The marks are dissimilar in overall impression – The addition of “BULLSHINE” and the reversal of word order made BULLSHINE FIREBULL visually and phonetically distinct from FIREBALL.
    • No evidence of actual confusion – There was no significant evidence that consumers would confuse the two brands in the marketplace.

    Thus, the court affirmed the TTAB’s ruling that there was no likelihood of confusion.

    Key Takeaways from the Decision

    1. Genericness is assessed at the time of registration – A term’s prior usage does not automatically make it generic for all time.
    2. The “once generic, always generic” rule was rejected – The court refused to apply the rigid approach from Weiss Noodle and instead focused on consumer perception at the time of registration.
    3. Strength of a trademark depends on commercial and conceptual distinctiveness – Even a well-known mark like FIREBALL can be conceptually weak if it is descriptive of a product’s attributes.
    4. Trademark disputes require a careful likelihood of confusion analysis – Minor differences in a mark’s wording, order, and overall impression can be enough to distinguish it from an established brand.

    Final Thoughts

    This case serves as a reminder that trademark law is about consumer perception, not just historical technicalities. The decision ensures that while brand owners can enforce their rights, competitors still have room to create new branding without unnecessary restrictions. It also reinforces a modern, flexible approach to trademark law, ensuring that consumer understanding at the time of registration—not outdated historical use—controls the validity of a trademark.ictions.

    By Charles Gideon Korrell