New York Trademark Attorney Blog
On first glance, this decision appears to be an unexpected result especially in light of the prior registration owned by the Appellant for the word mark CHURRASCOS for the same restaurant services. However, when viewing general principles of trademark law, maybe the outcome is not so unexpected. Regardless of your opinion, perhaps the easiest way to understand this ruling is to conclude that the mark has become generic over time. The Appellant in this matter, Cordua Restaurants, Inc. (“Cordua”) owns five restaurants marketed under CHURRASCOS. The restaurants feature South American dishes, including chargrilled Churrasco Steak. Years earlier, Cordua applied to the United States Patent & Trademark Office (“USPTO”) for the mark CHURRASCOS in standard character format for restaurant and bar services and catering. CHURRASCOS, the word mark registered on the Principal Register on June 3, 2008 under Section 2(f) after showing the mark acquired distinctiveness.
A few years later, Cordua attempted to register CHURRASCOS for the same restaurant services, but in a stylized format and it was refused. Cordua appealed to the Trademark Trial and Appeal Board (the “Board”) and it affirmed the Examiner’s refusal on the grounds that the mark was generic for restaurant services. See In re Cordua Restaurants LP, 110 USPQ2d 1227 (TTAB 2014) [precedential]. Cordua argued that its prior registration should be prima facie evidence of the mark acquiring distinctiveness. However, the Board responded by stating that if the mark is highly descriptive, additional evidence is required to prove distinctiveness. Cordua appealed to the U.S. Court of Appeals for the Federal Circuit (“CAFC”). See In re Cordua Restaurants, Inc., 118 USPQ2d 1632 (Fed. Cir. 2016).
The CAFC affirmed the finding of the Board, holding there was substantial evidence to find the mark CHURRASCOS was generic for restaurant services. A generic term is a common descriptive name for a class of goods or services. The critical issue is whether the relevant consumer base primarily understands the subject term to refer to the class of goods or services in question. Proof of the public’s understanding of the subject term should be submitted into evidence from reliable sources such as dictionaries, online sites, publications, and newspapers. The USPTO bears the burden of proving that the mark is generic by clear and convincing evidence.