In Rare Win for an Applicant, Federal Circuit Reverses TTAB’s Determination That Mark Kahwa Was Not Registerable

Bayou Grande Coffee Roasting Company (“Bayou Grande”), a coffee company based out of St. Petersburg, Florida, faced a long and winding road to register its mark KAHWA in connection with café and coffee shop services in Class 43, ultimately having to appeal a decision of the Trademark Trial and Appeal Board (“TTAB”) to the Federal Circuit (see In re: Bayou Grande Coffee Roasting Co., Appeal No. 2024-1118 (Fed. Cir. December 9, 2025) [precedential]). In 2012, Bayou grande filed for a sylized version of its mark for coffee shop services in Class 43 and ultimately had to settle for a registration with a disclaimer of “KAHWA COFFEE ROASTING”—an acknowledgement that it did not own exclusive rights to the phrase KAHWA COFFEE ROASTING. In 2020, Bayou Grande tried to register KAHWA for café and coffee shop services in Class 43 and had to settle for a registration on the Supplemental Register —an admission that KAHWA was not inherently distinctive.

Undeterred, and really wanting a federal registration on the Principal Register,  Bayou Grande filed another use-based application in 2021 for the mark KAHWA in connection with café and coffee shop services in Class 43. Not surprisingly, the Examining Attorney for Bayou Grande’s latest application issued an Office Action refusing registration of the mark KAHWA alleging that it was generic and/or merely descriptive of the applied-for services (see here). The Examining Attorney reached this conclusion through use of the doctrine of foreign equivalents—because “kahwa” allegedly means “coffee” in Arabic, the foreign equivalent of this term also necessarily means coffee. Bayou Grande’s response (see here) argued that this doctrine should not apply because “kahwa” has a well-established alternative English meaning (a “Kashmiri green tea”). In its final Office Action (see here), the Examining Attorney maintained the original refusals issued and added a new ground for refusal based on the Kashmiri green tea definition. Bayou Grande’s Request for Reconsideration was denied by the Examining Attorney. And not surprisingly, the TTAB affirmed the Examining Attorney’s refusals on appeal (see TTAB’s decision here). The TTAB affirms an Examining Attorney’s descriptiveness refusal almost 90% of the time.  However, Bayou Grande was not going to take no for an answer.

Applicants who are dissatisfied with the TTAB’s decision have two avenues to appeal. First, they can appeal directly to the Federal Circuit, the TTAB’s primary reviewing court. Alternatively, applicants can appeal to a district court. This second avenue is generally used when applicants want to supplement the record before the TTAB. Bayou Grande chose to appeal to the Federal Circuit.

The Federal Circuit first addressed whether the TTAB issued a new grounds for refusal based on the green tea meaning that was added by the Examining Attorney later in the prosecution history (when Bayou Grande’s Request for Reconsideration was denied), which is a legal issue reviewed de novo. When a Request for Reconsideration is denied, applicants do not have a chance to respond other than in its appeal, which Bayou Grande thought was unfair. The Federal Circuit concluded that because Bayou Grande itself proffered the evidence that kahwa had a well-established alternative meaning, Bayou Grande had a fair opportunity to respond to this refusal, even if this topic was not the focal point of the parties’ briefs at the TTAB or in this appeal.

The Federal Circuit then addressed the genericness and descriptiveness refusals, which is a question of fact reviewed for substantial evidence. Specifically, the Federal Circuit analyzed the TTAB’s finding that the mark KAHWA is generic because the evidence of record showed that relevant customers regard kahwa as the generic description for a type of green tea, and that coffee shops sell tea beverages. I  The Federal Circuit cited to oral argument between the parties confirming that no record evidence existed showing any coffee shop in the United Stated ever selling kahwa (the Kashmiri green tea). The Federal Circuit concluded that the fact that relevant customers understand KAHWA to refer to a specific type of Kashmiri green tea is insufficient to establish genericness for cafés and coffee shops selling coffee and other kinds of tea. The Federal Circuit further concluded that this analysis similarly applies to the descriptiveness refusal.

Lastly, the Federal Circuit instructed that a limitation to the application of the doctrine of foreign equivalents exists “when ordinary customers would not stop and translate the mark, even if they are familiar with the foreign language,” including when a well-established alternative English meaning exists. The Federal Circuit concluded that because the parties do not dispute that such a well-established alternative meaning exists (Kashmiri green tea), the doctrine of foreign equivalents should not apply.  Accordingly, the Federal Circuit reversed the TTAB’s determination that the mark KAHWA was not registerable, which should secure a federal registration on the Principal Register for Bayou Grande.