In re Cordua Rests., Inc.

• Decision Date: 13 May 2016
• Docket Number: No. 2015–1432.,2015–1432.
• Citation: 118 U.S.P.Q.2d 1632,823 F.3d 594
• Parties: In re CORDUA RESTAURANTS, INC., Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

823 F.3d 594
118 U.S.P.Q.2d 1632

In re CORDUA RESTAURANTS, INC., Appellant.

No. 2015–1432.

United States Court of Appeals, Federal Circuit.

May 13, 2016.

823 F.3d 597

Elizabeth Wood King, Sutton McAughan Deaver PLLC, Houston, TX, argued for appellant. Also represented by Robert James McAughan, Jr., Albert Berton Deaver, Jr.

Thomas L. Casagrande, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Michelle K. Lee. Also represented by Thomas W. Krause, Christina Hieber, Mary Beth Walker.

Charles Saron Knobloch, Arnold, Knobloch & Saunders, L.L.P., Houston, TX, for amicus curiae Houston Intellectual Property Law Association.

Before PROST, Chief Judge, DYK, and STOLL, Circuit Judges.

DYK, Circuit Judge.

Cordua Restaurants, Inc. (“Cordua”) appeals from the final decision of the United

823 F.3d 598

States Patent and Trademark Office (“PTO”) Trademark Trial and Appeal Board (“TTAB” or “Board”) refusing registration of a stylized form of the mark CHURRASCOS.¹ In re Cordua Rests. LP, 110 U.S.P.Q.2d 1227, 2014 WL 1390504 (TTAB 2014) (“Cordua ”) (affirming refusal of registration of Serial No. 85/214,191). The Board's decision contains no harmful legal error, and the Board's finding that the mark is generic is supported by substantial evidence. We affirm.

Background

Appellant Cordua owns and operates a chain of five restaurants branded as “Churrascos,” the first of which opened in 1988. The Churrascos restaurants serve a variety of South American dishes, including grilled meats; the Churrascos menu describes chargrilled “Churrasco Steak” as “our signature.” J.A. 34. Cordua applied for registration of the service mark CHURRASCOS (in standard character format) and obtained U.S. Trademark Registration No. 3,439,321 on the Principal Register (“the '321 Registration”) on June 3, 2008, for use of the word in connection with “restaurant and bar services; catering.”

On January 10, 2011, Cordua filed U.S. Trademark Application Serial No. 85/214,191 (“the '191 Application”), the application at issue in this case, seeking protection of the stylized form of CHURRASCOS for use in connection with “Bar and restaurant services; Catering.” J.A. 27. The trademark examiner rejected the '191 Application as merely descriptive and on the basis that “the applied-for mark is generic for applicant's services,” barring registration under Lanham Act § 2(e)(1) (15 U.S.C. § 1052(e)(1) ). J.A. 70. On June 14, 2012, the examiner issued a final rejection, again refusing registration of the stylized form of CHURRASCOS on the basis of descriptiveness and genericness. With respect to genericness, the examiner concluded that the term “churrascos” “refer[s] to beef or grilled meat more generally” and that the term “identifies a key characteristic or feature of the restaurant services, namely, the type of restaurant.” J.A. 112–13.

Cordua appealed to the Board, which affirmed the examiner's refusal to register the mark for use in connection with restaurant services. The Board agreed with the examiner that “ ‘churrascos' is the generic term for a type of cooked meat” and “a generic term for a restaurant featuring churrasco steaks.” Cordua, 2014 WL 1390504, at *6. The Board held that Cordua's earlier registration of the underlying CHURRASCOS word mark (the '321 Registration) had no bearing on whether the stylized form of CHURRASCOS was generic. The Board also agreed with the examiner that the stylized form of CHURRASCOS was also ineligible for registration because it is merely descriptive of a restaurant serving barbecued steaks and because Cordua had not provided sufficient evidence of acquired distinctiveness. Cordua appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).

823 F.3d 599

Discussion

I

We consider whether the Board erred in refusing registration on the ground that the mark is generic. We review the Board's legal conclusions de novo and its factual findings for substantial evidence. Aycock Eng'g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1355 (Fed.Cir.2009). The standard of genericness is a question of law that we review de novo. See In re Save Venice N.Y., Inc., 259 F.3d 1346, 1351–52 (Fed.Cir.2001). The question of whether a particular mark is generic under the applicable standard is a question of fact, which we review for substantial evidence. In re Hotels.com, L.P., 573 F.3d 1300, 1301 (Fed.Cir.2009) ; In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1378 (Fed.Cir.2007).

As the Supreme Court has held, “[g]eneric terms are not registrable, and a registered mark may be canceled at any time on the grounds that it has become generic.” Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985) (citing 15 U.S.C. §§ 1052, 1064 ). This is so because “[g]eneric terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status.” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569 (Fed.Cir.1987) ; see also Princeton Vanguard, LLC v. Frito–Lay N. Am., Inc., 786 F.3d 960, 965 (Fed.Cir.2015).

“A generic term ‘is the common descriptive name of a class of goods or services.’ ” Princeton Vanguard, 786 F.3d at 965 (quoting H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 989 (Fed.Cir.1986) ). “The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.” Ginn, 782 F.2d at 989–90. Under Ginn a two-step test is applied to determine whether a given term is generic. Id. at 990. “First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?” Id.; see also Princeton Vanguard, 786 F.3d at 965 ; Reed Elsevier, 482 F.3d at 1378. “Evidence of the public's understanding of the mark may be obtained from ‘any competent source, such as consumer surveys, dictionaries, newspapers and other publications.’ ” Princeton Vanguard, 786 F.3d at 965 (quoting In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1559 (Fed.Cir.1985) ).

II

At the outset we note that Cordua's existing registration of the CHURRASCOS word mark (the '321 Registration) does not preclude a finding that the stylized form of the mark is generic. Cordua contends that the CHURRASCOS word mark had achieved incontestable status under 15 U.S.C. § 1064 (Lanham Act § 14) because the '321 Registration was more than five years old at the time of the TTAB's decision and argues that the Board's “failure to fully consider the incontestable registration is error.” Appellant's Br. at 55.

The PTO disputes Cordua's contention that the '321 Registration had achieved incontestable status at the time of appeal to the TTAB. We need not address this question, because even if the earlier registration were incontestable, incontestability is irrelevant to the question of genericness. Section 15(4) of the Lanham Act mandates that “no incontestable

823 F.3d 600

right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.” 15 U.S.C. § 1065(4). “[A] registered mark may be canceled at any time on the grounds that it has become generic.” Park 'N Fly, 469 U.S. at 194, 105 S.Ct. 658. “Under the cancellation provisions of § 14 [of the Lanham Act, 15 U.S.C. § 1064 ], a registered mark that has become generic may be cancelled at any time.... ‘[I]ncontestability is never a shield for a mark that is generic.’ ” 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:60 (4th ed. 2016) (“McCarthy”) (quoting Retail Servs., Inc. v. Freebies Publ'g, 364 F.3d 535, 548 (4th Cir.2004) ). Cordua conceded at argument that incontestability cannot protect a mark against a challenge of genericness. Thus, the Board did not err in declining to consider the alleged incontestability of the CHURRASCOS word mark in evaluating the genericness of the stylized form thereof.

Cordua also argues that under § 7(b) of the Lanham Act (15 U.S.C. § 1057(b) ), registration on the Principal Register is prima facie evidence of a mark's validity, even if the mark has not achieved incontestable status. Cordua is correct that “[registration] is ‘prima facie evidence of the validity of the registered mark....’ ” B & B Hardware, Inc. v. Hargis Indus., –––U.S. ––––, 135 S.Ct. 1293, 1300, 191 L.Ed.2d 222 (2015) (quoting 15 U.S.C. § 1057(b) ). The presumption of validity applies generally against any challenge that the mark is invalid, including an allegation that the mark is generic. See Coca–Cola Co. v. Overland, Inc., 692 F.2d 1250, 1254 (9th Cir.1982) ( “The general presumption of validity resulting from federal registration includes the specific presumption that the trademark is not generic.”); see also 2 McCarthy § 12:60 (“When the plaintiff asserts a federal registration in an infringement suit, it constitutes a strong presumption that the term is not generic and defendant bears the burden of overcoming the presumption.”).

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