In Re: Cordua Restaurants, Inc.
823 F.3d 594
| Fed. Cir. | 2016Background
- Cordua Restaurants operates a chain called “Churrascos” (first opened 1988) and owns a prior registration for CHURRASCOS in standard character form (Reg. No. 3,439,321).
- Cordua applied (Serial No. 85/214,191) to register a stylized CHURRASCOS for "Bar and restaurant services; Catering." The PTO examiner refused registration as generic and merely descriptive; final refusal followed.
- The Trademark Trial and Appeal Board affirmed, finding CHURRASCOS generic for a type of cooked meat and for restaurants that feature churrasco steaks; also held the stylization did not create a separate commercial impression and Cordua had not shown acquired distinctiveness for the stylization.
- Cordua appealed, arguing (inter alia) that the Board misapplied the Ginn two-step genericness test, improperly focused on Cordua’s own services, and that its existing registration/incontestability or the stylization should preclude refusal.
- The Federal Circuit reviewed the Board’s factual findings for substantial evidence and legal conclusions de novo, and affirmed the TTAB: the PTO proved genericness by clear and convincing evidence and the stylization did not rescue registrability.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether CHURRASCOS (stylized) is generic for "restaurant services" | Cordua: term not generic; Board focused on Cordua’s specific services; prior registration/incontestability and prima facie validity favor registration | PTO/TTAB: evidence shows public uses "churrasco(s)" to mean grilled meat and churrasco restaurants; stylization not separately distinctive | Held: Generic for restaurant services (or a sub-class centered on churrasco); PTO proved genericness by clear and convincing evidence; stylization does not create a separate commercial impression |
| Effect of Cordua’s earlier word registration/incontestability | Cordua: prior incontestable registration prevents refusal | PTO: incontestability does not shield a mark that is generic; prior registration’s presumption doesn’t transfer to a new, separate application | Held: Incontestability/presumption of validity does not prevent PTO from rejecting a later application; genericness can cancel/invalidate registration |
| Proper genus to evaluate under Ginn test | Cordua: Board incorrectly focused on applicant’s restaurants rather than the recited genus | PTO: application recites broad "restaurant services," which is the proper genus to assess; term can be generic for a key aspect of that genus | Held: Must use the genus in the application (restaurant services); evidence supports that churrascos denotes a class of restaurants focused on grilled meats |
| Whether stylization makes mark registrable | Cordua: stylized logo is highly distinctive and arbitrary | PTO: stylization is primarily stylized lettering and does not create a separate commercial impression or show acquired distinctiveness | Held: Stylization does not render the mark registrable absent separate inherent distinctiveness or proof of acquired distinctiveness |
Key Cases Cited
- Park ’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (generic terms are not registrable and registrations may be canceled if mark becomes generic)
- H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (two-step genericness test: genus then public understanding)
- In re Hotels.com, L.P., 573 F.3d 1300 (PTO bears burden to prove genericness by clear and convincing evidence)
- In re 1800Mattress.com IP, LLC, 586 F.3d 1359 (term can be generic for services if it names a key aspect of those services)
- Reed Elsevier Props., Inc. v. Muchnick, 482 F.3d 1376 (term generic if public understands it to refer to a central aspect of the claimed services)
- Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (foreign equivalents doctrine: translate common foreign words when assessing genericness)